UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`AMAZON.COM, INC. AND AMAZON.COM SERVICES LLC
`Petitioner,
`
`v.
`
`XR COMMUNICATIONS LLC,
`Patent Owner.
`
`_________________
`
`IPR2022-01353
`Patent 10,715,235
`_________________
`
`
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`AMAZON.COM, INC. AND AMAZON.COM SERVICES LLC
`Petitioner,
`
`v.
`
`XR COMMUNICATIONS LLC,
`Patent Owner.
`
`_________________
`
`IPR2022-01353
`Patent 10,715,235
`_________________
`
`
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page(s)
`STATEMENT OF PRECISE RELIEF REQUESTED ------------------------- 1
`I.
`BACKGROUND AND RELATED PROCEEDINGS ------------------------- 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ----------------- 3
`A.
`Petitioners’ Motion For Joinder Is Timely -------------------------------- 4
`B.
`The Kyocera Factors Favor Joinder --------------------------------------- 4
`1.
`Factor 1: Joinder Is Appropriate ------------------------------------ 5
`2.
`Factor 2: The Amazon Petition Proposes
`No New Grounds Of Unpatentability ------------------------------ 7
`Factor 3: Joinder Will Not Unduly Burden Or
`Negatively Impact The Apple IPR Trial Schedule --------------- 7
`Factor 4: Amazon’s “Understudy”
`Role Will Simplify Briefing And Discovery --------------------- 9
`IV. CONCLUSION --------------------------------------------------------------------- 10
`
`
`
`3.
`
`4.
`
`
`
`
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Other Authorities
`Apple Inc. v. INVT SPE LLC,
`IPR2019-00958, Paper 9 (PTAB May 30, 2019) .............................................8, 10
`Apple Inc. v. Uniloc 2017, LLC,
`IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) .................................................... 7
`BlackBerry Corp. v. Uniloc 2017 LLC,
`IPR2019-01283, Paper 10 (PTAB Nov. 5, 2019) .................................................. 7
`Ericsson Inc. v. Uniloc 2017 LLC,
`IPR2020-00315 (PTAB Apr. 7, 2020) ................................................................... 4
`Ericsson Inc. v. Uniloc 2017 LLC,
`IPR2020-00315, Paper 10 (PTAB Apr. 7, 2020) ........................................ 4, 9, 10
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) .................................................. 7
`Intel Corp. v. Alacritech, Inc.,
`IPR2018-01352, Paper 11 (PTAB Jan. 8, 2019) ..............................................8, 10
`Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ................................................. 4
`Samsung Electronics Co., Ltd., v. Raytheon Co.,
`IPR2016-00962, Paper 12 (PTAB Aug. 24, 2016)) ............................................... 7
`Sony Corp. v. Memory Integrity, LLC,
`IPR2015-01353, Paper 11 at 6 (PTAB Oct. 15, 2015) .....................................7, 10
`Cases
`Lear, Inc. v. Adkins,
`395 U.S. 653 (1969) ............................................................................................... 6
`Statutes
`35 U.S.C. § 315 ......................................................................................................1, 4
`35 U.S.C. § 316 .......................................................................................................... 8
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page ii
`
`
`
`Rules
`37 C.F.R. § 42.100 ..................................................................................................... 8
`37 C.F.R. § 42.122 .................................................................................................1, 4
`37 C.F.R. § 42.53 ....................................................................................................... 9
`
`
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page iii
`
`
`
`IPR2022-01353
`Patent 10,715,235
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioners Amazon.com, Inc. and Amazon.com Services LLC (collectively
`
`“Petitioners” or “Amazon”) respectfully submit this Motion for Joinder together
`
`with a Petition (the “Amazon Petition”) for Inter Partes Review of U.S. Patent No.
`
`10,715,235 (the “’235 patent”), filed contemporaneously herewith. The Board
`
`instituted inter partes review of claims 8–14 of the ’235 patent in Apple Inc. v. XR
`
`Communications LLC, Case No. IPR2022-00367 (the “Apple IPR”), on July 14,
`
`2022. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Amazon requests
`
`institution of inter partes review of claims 8–14 of the ’235 patent and requests
`
`joinder with IPR2022-00367.
`
`Amazon timely files this motion within one month of institution of the Apple
`
`IPR. The Amazon Petition is substantively identical to Apple’s petition (the “Apple
`
`Petition”) in the Apple IPR, and Amazon seeks institution on the same claims, prior
`
`art, and grounds for unpatentability that were instituted in the Apple IPR. Therefore,
`
`the present petition warrants institution for at least the same reasons that the Board
`
`instituted the Apple IPR. In addition, Amazon proposes to streamline discovery and
`
`briefing by taking an “understudy” role and not actively participating unless the
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 1
`
`
`
`IPR2022-01353
`Patent 10,715,235
`
`current petitioners1 cease to actively participate in the Apple IPR. In the event the
`
`Apple IPR is terminated with respect to the Apple petitioners, only then does
`
`Amazon intend to materially participate in the joined proceedings. Accordingly, the
`
`proposed joinder will neither unduly complicate the Apple IPR nor delay its schedule
`
`but will promote judicial efficiency in determining the patentability of the ’235
`
`patent without prejudice to Patent Owner. Moreover, joinder furthers the interests of
`
`justice because—in the event that Apple and HP cease participating in the Apple
`
`IPR—Petitioners would be able to continue this proceeding and thus avoid the
`
`district court having to resolve the same unpatentability issues that the Board has
`
`already begun analyzing.
`
`Petitioners in the Apple IPR do not oppose Amazon’s instant motion. The
`
`undersigned counsel also reached out to counsel for Patent Owner XR but did not
`
`hear back on whether XR would oppose or support this motion.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`In June and July 2021, XR Communications LLC d/b/a Vivato Technologies
`
`(“XR” or “Patent Owner”) filed eight separate complaints in the Western District of
`
`Texas alleging infringement of the ’235 patent by, among others, Amazon and each
`
`
`1 The named petitioners in the Apple IPR are Apple Inc. and HP Inc. Unless
`
`otherwise stated, reference to Apple is a reference to all petitioners in the Apple IPR.
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 2
`
`
`
`IPR2022-01353
`Patent 10,715,235
`
`of the petitioners in the Apple IPR: XR Communications LLC, d/b/a Vivato
`
`Technologies v. HP Inc., Case No. 6:21-cv-00694 (W.D. Tex.), filed July 1, 2021;
`
`XR Communications LLC v. Microsoft Corporation, Case No. 6:21-cv-00695 (W.D.
`
`Tex.), filed July 1, 2021; XR Communications LLC, d/b/a Vivato Technologies v.
`
`Dell Technologies Inc., et. al., Case No. 6:21-cv-00646 (W.D. Tex.), filed June 22,
`
`2021; XR Communications LLC, d/b/a Vivato Technologies v. Amazon.com, Inc., et.
`
`al., Case No. 6:21-cv-00619 (W.D. Tex.), filed June 16, 2021; XR Communications
`
`LLC v. Apple, Inc., Case No. 6:21-cv-00620 (W.D. Tex.), filed June 16, 2021; XR
`
`Communications LLC v. ASUSTek Computer Inc., Case No. 6:21-00622 (W.D. Tex.)
`
`filed June 16, 2021; XR Communications LLC v. Google LLC, Case No. 6:21-cv-
`
`00625 (W.D. Tex.), filed June 16, 2021; XR Communications, LLC, d/b/a Vivato
`
`Technologies v. Samsung Electronics Co., Ltd., et al., Case No. 6:21-cv-00626
`
`(W.D. Tex.), filed June 16, 2021.
`
`The Apple IPR petition was filed January 7, 2022. In addition to the Apple
`
`IPR, the ’235 patent is also the subject of IPR2022-01155, filed by Apple on June
`
`16, 2022, which is pending and awaiting an institution decision.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`As explained in detail below, Amazon’s motion for joinder should be granted
`
`because the motion is timely, and the Kyocera factors favor joinder.
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 3
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`
`
`IPR2022-01353
`Patent 10,715,235
`
`A.
`
`Petitioners’ Motion For Joinder Is Timely
`
`The Board may join as a party to an instituted inter partes review a person
`
`who has properly filed a petition for inter partes review that warrants institution. 35
`
`U.S.C. § 315(c). Any request for joinder must be filed “no later than one month after
`
`the institution date of any inter partes review for which joinder is requested.” 37
`
`C.F.R. § 42.122(b). A petition for inter partes review is not subject to the one-year
`
`statutory time bar if the petition is accompanied by a request for joinder. 35 U.S.C.
`
`§ 315(b); 37 C.F.R. § 42.122(b).
`
`Amazon’s Motion for Joinder is timely because it is made within one month
`
`of the July 14, 2022 institution of the Apple IPR. See 37 C.F.R. § 42.122(b).
`
`B.
`
`The Kyocera Factors Favor Joinder
`
`“A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing review;
`
`and (4) address specifically how briefing and discovery may be simplified.” Ericsson
`
`Inc. v. Uniloc 2017 LLC, IPR2020-00315, Paper 10 at 5 (PTAB Apr. 7, 2020) (citing
`
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24,
`
`2013)).
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 4
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`
`
`IPR2022-01353
`Patent 10,715,235
`
`1.
`
`Factor 1: Joinder Is Appropriate
`
`Joinder with the Apple IPR is appropriate because the Amazon Petition
`
`involves the same patent, challenges the same claims, and is based on the same
`
`grounds and same testimony and other evidence relied upon in the Apple Petition.
`
`Additionally, as noted below, the Amazon Petition raises only the grounds from the
`
`Apple IPR. In short, the Amazon Petition is substantively identical to the Apple
`
`Petition. The Amazon Petition copies verbatim the challenges set forth in the Apple
`
`Petition and relies on an identical expert declaration. The only differences between
`
`the Amazon Petition and the Apple Petition relate to formalities of a different party
`
`filing the petition; there are no other changes to the facts, citations, evidence, or
`
`invalidity arguments introduced in the Apple Petition. The primary difference
`
`between the petitions is with respect to analysis of the Fintiv factors, for which
`
`Amazon identifies facts particular to itself. But for the same reasons as the Apple
`
`petition—including the early stage of the litigation, a pending transfer motion, and
`
`a distant trial date—the Amazon petition should not be discretionarily denied. On
`
`the merits, the Amazon Petition should therefore be instituted for at least the same
`
`reasons that the Board instituted the Apple IPR. Further, good cause exists to allow
`
`joinder, given that the Amazon Petition is substantively identical to the Apple
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 5
`
`
`
`IPR2022-01353
`Patent 10,715,235
`
`Petition, and joinder would allow the Board to effectively resolve the identical
`
`challenges raised by both parties in a single proceeding.
`
`Additionally, Amazon is currently involved in litigation based on Patent
`
`Owner’s allegation that Amazon’s products infringe the ’235 patent. See XR
`
`Communications LLC, d/b/a Vivato Technologies v. Amazon.com, Inc., et. al., Case
`
`No. 6:21-cv-00619 (W.D. Tex.), filed June 16, 2021. Amazon therefore has a
`
`particular interest in the substantial questions of invalidity surrounding the ’235
`
`patent.
`
`Joinder is also appropriate for the additional reason that the invalidity grounds
`
`as to the challenged claims can be resolved through Amazon’s continued
`
`participation in the IPR process, even if the original petitioners in the Apple IPR
`
`were to reach a settlement with Patent Owner, or otherwise cease participation in
`
`that proceeding. The “important public interest in permitting full and free
`
`competition in the use of ideas which are in reality a part of the public domain,”
`
`Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969), favors allowing joinder in this case,
`
`as joinder would allow Amazon to continue participating in the IPR process if Apple
`
`ceases participation.
`
`Finally, joinder is appropriate because the concurrently filed Amazon Petition
`
`is Amazon’s first challenge to the ’235 patent. Accordingly, in the instant case there
`
`is no “potential for abuse of the review process by repeated attacks on patents.”
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 6
`
`
`
`IPR2022-01353
`Patent 10,715,235
`
`Apple Inc. v. Uniloc 2017, LLC, IPR2020-00854, Paper 9 at 5 (PTAB Oct. 28, 2020)
`
`(precedential) (quoting General Plastic Industrial Co., Ltd. v. Canon Kabushiki
`
`Kaisha, IPR2016-01357, Paper 19 at 16–17 (PTAB Sept. 6, 2017) (precedential)).
`
`Instead, allowing joinder would enable an efficient and appropriate use of the review
`
`process.
`
`2.
`
`Factor 2: The Amazon Petition
`Proposes No New Grounds Of Unpatentability
`The Amazon Petition does not present any new grounds or arguments
`
`regarding unpatentability, and is substantively identical to the Apple Petition. The
`
`Board “routinely grants motions for joinder where the party seeking joinder
`
`introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01283, Paper 10 at 8
`
`(PTAB Nov. 5, 2019) (quoting Samsung Electronics Co., Ltd., v. Raytheon Co.,
`
`IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016)) (emphasis added). This factor
`
`therefore favors joinder.
`
`3.
`
`Factor 3: Joinder Will Not Unduly Burden
`Or Negatively Impact The Apple IPR Trial Schedule
`Joinder will not unduly burden Patent Owner. There are no new issues for
`
`Patent Owner to address because the Amazon Petition presents the same grounds
`
`and arguments as the Apple Petition. See Sony Corp. v. Memory Integrity, LLC,
`
`IPR2015-01353, Paper 11 at 6 (PTAB Oct. 15, 2015) (granting motion for joinder
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 7
`
`
`
`IPR2022-01353
`Patent 10,715,235
`
`and instituting IPR where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR]”).
`
`Indeed, the Patent Owner’s Preliminary Response in the Apple IPR is sufficient to
`
`address the Amazon Petition because the issues presented are substantively identical.
`
`See Patent Owner’s Preliminary Response, IPR2022-00367 (Paper 7).
`
`Likewise, joinder will not negatively impact the Apple IPR trial schedule.
`
`Amazon expressly consents to the existing trial schedule. Further, as described
`
`below, Amazon agrees to take an “understudy” role in the joined proceeding, so long
`
`as Apple remains an active party in the joined proceeding. See, e.g., Apple Inc. v.
`
`INVT SPE LLC, IPR2019-00958, Paper 9 at 6–8 (PTAB May 30, 2019) (granting
`
`motion for joinder where the movant presented a substantively identical petition and
`
`agreed to take an “understudy” role in the joined proceeding); Intel Corp. v.
`
`Alacritech, Inc., IPR2018-01352, Paper 11 at 3–5 (PTAB Jan. 8, 2019) (same).
`
`Finally, the Amazon Petition relies on the same technical expert declaration.
`
`Assuming the Apple Petitioners do not terminate their IPR before their expert is
`
`deposed, Amazon agrees to rely entirely on, and be bound by, the expert
`
`declaration(s) and deposition(s) in the Apple IPR. Therefore, joinder will not
`
`increase the complexity of the proceeding and will not affect the Board’s ability to
`
`complete its review and final decision within the statutory time limits under
`
`35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 8
`
`
`
`IPR2022-01353
`Patent 10,715,235
`
`4.
`
`Factor 4: Amazon’s “Understudy”
`Role Will Simplify Briefing And Discovery
`Amazon agrees to take an “understudy” role in the joined proceeding, absent
`
`termination of the original petitioners as a party. Specifically, Amazon agrees to the
`
`following conditions regarding the joined proceeding, so long as Apple remains an
`
`active party in the joined proceeding:
`
`• All filings by Amazon in the joined proceeding shall be consolidated
`
`with the filings of Apple unless a filing solely concerns issues that do
`
`not involve Apple;
`
`• Amazon shall not be permitted to raise any new grounds not already
`
`instituted by the Board in the Apple IPR, or introduce any argument or
`
`discovery not already introduced by Apple;
`
`• Amazon shall be bound by any agreement between Patent Owner and
`
`Apple concerning discovery and/or depositions; and
`
`• At deposition, Amazon shall not receive any direct examination, cross
`
`examination, or redirect time beyond that permitted in this proceeding
`
`for Apple alone under either 37 C.F.R. § 42.53 or any agreement
`
`between Patent Owner and Apple.
`
`See Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00315, Paper 10 at 5 (PTAB Apr.
`
`7, 2020) (granting a motion for joinder where the movant proposed the above
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 9
`
`
`
`IPR2022-01353
`Patent 10,715,235
`
`limitations on its role as understudy); Apple Inc. v. INVT SPE LLC, IPR2019-00958,
`
`Paper 9 at 7–8 (PTAB May 30, 2019) (same).
`
`Amazon would assume a primary role only if Apple ceased participation in
`
`the proceeding. Otherwise, Amazon would remain in its “understudy” role
`
`throughout the proceeding. The Board has consistently found that the acceptance of
`
`an “understudy” role removes any undue complications or delay that might allegedly
`
`result from joinder. See, e.g., Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00315,
`
`Paper 10 at 5–6 (granting motion for joinder where the movant agreed to assume
`
`“understudy” role and limit participation absent termination of the original petitioner
`
`from the joined proceeding); Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9
`
`at 6–8 (granting motion for joinder where the movant filed a substantively identical
`
`petition and agreed to take an “understudy” role in the joined proceeding); Intel
`
`Corp., IPR2018-01352, Paper 11 at 3–5 (same); Sony Corp., IPR2015-01353, Paper
`
`11 at 6–8 (same). As such, this factor also favors joinder.
`
`IV. CONCLUSION
`
`For the reasons provided above, Amazon respectfully requests that the Board
`
`(1) institute Amazon’s concurrently filed Petition for Inter Partes Review of U.S.
`
`Patent No. 10,715,235; and (2) grant joinder of the present proceeding with Apple
`
`Inc. v. XR Communications, LLC, Case No. IPR2022-00367.
`
`
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 10
`
`
`
`Dated: August 4, 2022
`
`IPR2022-01353
`Patent 10,715,235
`
`
`
`Respectfully submitted,
`
`By: /Andrew M. Mason/
`Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`PETITIONERS’ MOTION FOR JOINDER
`
`Page 11
`
`
`
`IPR2019-00744
`Patent 7,167,487
`
`CERTIFICATE OF SERVICE
`IN COMPLIANCE WITH 37 C.F.R. § 42.6(e)(4)
`The undersigned certifies that on August 4, 2022, a complete copy of
`
`PETITIONER’S MOTION FOR JOINDER was served via Express Mail on
`
`the Patent Owner at the following address of record as listed with the USPTO
`
`Patent Center:
`
`Klein, O’Neill & Singh, LLP
`30 Corporate Park, Suite 211
`Irvine, CA 92606
`
`
`
`By: /Andrew M. Mason/
`Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`
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