UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
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`Petitioners
`v.
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`JAWBONE INNOVATIONS, LLC,
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`Patent Owner
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`Case IPR2022-01321
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`U.S. Patent No. 11,122,357
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`PETITIONERS’ REPLY IN SUPPORT OF
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`MOTION FOR JOINDER TO IPR2022-01124
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
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`Petitioners
`v.
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`JAWBONE INNOVATIONS, LLC,
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`Patent Owner
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`Case IPR2022-01321
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`U.S. Patent No. 11,122,357
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`PETITIONERS’ REPLY IN SUPPORT OF
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`MOTION FOR JOINDER TO IPR2022-01124
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`I.
`II.
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`Table of Contents
`INTRODUCTION ............................................................................................ 1
`ARGUMENT .................................................................................................... 1
`A.
`Petitioners’ Motion Is Not Premature .................................................... 1
`B.
`Joinder Will Not Complicate the Proceedings ....................................... 2
`C.
`The General Plastic Factors Are Inapplicable ....................................... 2
`D.
`The General Plastic Factors Weigh Against Exercising Discretion ..... 3
`III. CONCLUSION ................................................................................................. 5
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`i
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`U.S. Patent No. 11,122,357
`IPR2022-01321
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`I.
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`INTRODUCTION
`Joinder of this proceeding to IPR2022-01124 is appropriate because joinder will
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`not unduly burden or prejudice the parties to the Google IPR, while efficiently
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`resolving the validity of the ’357 patent’s challenged claims in a single proceeding.
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`The motion for joinder is timely because it was filed within the time limit for joinder
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`under 37 C.F.R. § 42.122(b). Petitioners have agreed to take an understudy role, and so
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`joinder will not complicate the proceedings. Further, because this is Petitioners’ first
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`petition against the ’357 patent and because the petition is substantively identical to
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`that in IPR2022-01124, the General Plastic factors are inapplicable. To the extent that the
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`Board does consider the General Plastic factors, all weigh against discretionary denial.
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`II. ARGUMENT
`A.
`Petitioners’ Motion Is Not Premature
`The motion for joinder is not premature. Under 37 C.F.R. § 42.122(b), a motion
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`for joinder must be filed “no later than one month after the institution date of any inter partes
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`review to which joinder is requested.” Here, Petitioners’ motion for joinder was filed before
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`the institution date of IPR2022-01124, and so is timely. The Board has consistently found
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`joinder motions timely when filed before institution of the IPR to which they seek joinder.
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`See, e.g., Zyxel Comms. Corp. v. UNM Rainforest Innovations, IPR2021-00739, Paper
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`17 at 15 (Oct. 1, 2021); Dell Inc. v. Neodron Ltd., IPR2020-00731, Paper 9 at 5 (Jul.
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`31, 2020); Pfizer, Inc. v. Genentech, Inc., IPR 2017-02063, Paper 25 (Feb. 21, 2018).
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`1
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`U.S. Patent No. 11,122,357
`IPR2022-01321
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`B.
`Joinder Will Not Complicate the Proceedings
`PO does not contest that the grounds and expert testimony in this case are substantively
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`identical to those in IPR2022-01124, to which Petitioners seek joinder. PO, however, takes
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`issue with Petitioners’ articulation of their proposed understudy role. Response to Motion
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`for Joinder, Paper No. 10 (“Response”) at 4. Petitioners’ articulation is identical to that
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`which the Board approved in Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268, Paper 17
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`at 5 (Apr.10, 2015) and other proceedings. See, e.g., Hyundai Motor Am. v. Stratosaudio,
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`Inc., IPR2022-00224, Paper No. 6 at 8-9, Paper No. 11 at 8; LG Elecs., Inc. v. Parker Vision,
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`Inc., IPR2022-00245, Paper No. 9 at 7 (Apr. 12, 2022); Samsung Elecs. Co., Ltd. v Yanbin
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`Yu, IPR2020-00492, Paper No. 6 at 7 (Aug. 12, 2020).
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`Because Petitioners have agreed to take on an understudy role, joinder to IPR2022-
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`01124 will not complicate the proceedings. Joinder under these circumstances will instead
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`result in a gain of efficiency because the issues will be resolved in a single proceeding without
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`impacting the briefing or discovery schedules. Accordingly, joinder is appropriate.
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`C.
`The General Plastic Factors Are Inapplicable
`The Board should not apply the General Plastic factors here because Petitioners
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`have not previously filed a petition challenging the ’357 patent. See Apple Inc. v.
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`Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020) (precedential)
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`(determining application of the General Plastic factors warranted where petitioner
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`filed a second petition challenging the same patent after institution was denied for its
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`2
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`U.S. Patent No. 11,122,357
`IPR2022-01321
`first petition); see also LG Elecs., Inc. et al v. Gesture Tech. Partners, LLC, IPR2022-
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`00092, Paper No. 8 at (May 9, 2022) (declining to apply General Plastic factors to a
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`“standard ‘me too’ petition with a motion for joinder” because “none of the unique
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`facts in Apple v. Uniloc [were] present”).
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`D.
`The General Plastic Factors Weigh Against Exercising Discretion
`To the extent that the Board applies the General Plastic factors, the factors
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`weigh strongly against discretionary denial. Because Petitioners have not previously
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`filed a petition requesting inter partes review of the ’357 patent, the General Plastic
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`inquiry should end there. Apple, Inc. v. Solas OLED, Ltd., IPR2020-01275, Paper No.
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`7 at 4 (Dec. 21, 2020) (granting joinder of a “me too” petition and noting that “[w]e
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`need not determine the applicability of the General Plastic factors, however, because
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`Petitioner has confirmed that it has not previously filed a petition requesting inter
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`partes review of the [challenged patent]”).
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`Further consideration of General Plastic factor 1 shows PO’s arguments with
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`regard to this factor are inapposite. Response at 5. The “intent in formulating the
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`[General Plastic] factors was to take undue inequities and prejudices to the Patent
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`Owner into account.” General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
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`IPR2016-01357, Paper 19 at 17 (Sept. 6, 2017). The Board has extended its analysis of factor
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`1 to consider cooperation between earlier and later petitioners with regard to “direction or
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`control over the selection of prior art, the drafting of [the subsequent] petition and supporting
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`3
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`U.S. Patent No. 11,122,357
`IPR2022-01321
`materials, or review of the [subsequent] petition and supporting materials prior to filing.”
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`Toshiba Am. Information Sys., Inc. v. Walletex Microelectronics Ltd., IPR2018-01538, Paper
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`No. 11 at 20 (Mar. 5, 2019).
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`Here, no such cooperation exists. Google filed its own IPR petition, and Petitioners
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`here independently determined to file a copycat petition and seek joinder to Google’s IPR
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`petition. Patent Owner suffers no inequity or prejudice because Petitioners have not
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`previously filed a petition challenging the ’357 patent, the instant Petition is substantively
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`identical to that in IPR2022-01124, and there is no cooperation between Petitioners and
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`Google with respect to the instant Petition. Factor 1 weighs against discretionary denial.
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`In addition, Factor 3 also weighs against discretionary denial because Petitioners had
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`not received the benefit of considering the POPR or institution decision in IPR2022-01124
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`prior to filing this Petition (i.e., there are no concerns of road mapping), and Petitioners
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`merely seek to take an understudy role in that proceeding.
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`General Plastic factors 2, 4, and 5 do not favor discretionary denial because
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`Petitioners raise the same grounds as IPR2022-01124. Specifically, “[t]he second, fourth,
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`and fifth General Plastic factors are ‘to assess and weigh whether a petitioner should have or
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`could have raised the new challenges earlier’” and thus do not weigh in favor of discretionary
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`denial because Petitioners are “not raising new challenges but merely present[ing] the same
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`challenges [as IPR2022-01124], and Petitioner[s] acted within the time frame set forth under
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`[the] Rules.” Google LLC v. Express Mobile, Inc., IPR2022-00597, Paper No. 17 at 8-9 (Aug.
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`4
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`U.S. Patent No. 11,122,357
`IPR2022-01321
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`19, 2022) (quoting General Plastic, IPR2016-01357, Paper 19 at 18.
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`General Plastic factors 6 and 7 do not favor discretionary denial because
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`Petitioners would take an understudy role. Patent Owner’s arguments as to these
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`factors rest on the alleged “complexity” that would result from joinder, Response at 6,
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`but as explained above, Petitioners’ understudy role is one the Board has repeatedly
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`found would simplify proceedings and increase overall efficiency.
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`Thus, to the extent that the Board considers the General Plastic factors, all of
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`those factors weigh against discretionary denial.
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`III. CONCLUSION
`Based on the factors discussed above, Petitioners respectfully request that the
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`Board institute review based on the concurrently filed Petition, and then grant joinder
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`with Google’s IPR2022-01124 proceeding.
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`Dated: September 29, 2022
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`Respectfully submitted,
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`/Ali R. Sharifahmadian/
`Ali R. Sharifahmadian (Reg. No. 48,202)
`Counsel for Petitioners
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`5
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`U.S. Patent No. 11,122,357
`IPR2022-01321
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`CERTIFICATE OF SERVICE
`The undersigned certifies that on September 29, 2022, in accordance with 37
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`C.F.R. §§ 42.6(e) and 42.105, I caused the foregoing Petitioners’ Reply in Support of
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`Motion for Joinder to IPR2022-01124 to be served on the Patent Owner vie electronic
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`mail to Patent Owner’s counsel of record below:
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`Peter Lambrianakos (plambrianakos@fabricantllp.com)
`Vincent J. Rubino, III (vrubino@fabricantllp.com)
`Alfred R. Fabricant (ffabricant@fabricantllp.com)
`Enrique W. Iturralde (eiturralde@fabricantllp.com)
`Richard Cowell (rcowell@fabricantllp.com)
`ptab@fabricantllp.com
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`/Ali R. Sharifahmadian/
`Ali R. Sharifahmadian
`Reg. No. 48,202
`Lead Counsel
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