UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL TECHNOLOGIES INC. AND DELL INC.,
`Petitioners,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case: IPR2022-01398
`U.S. Patent No. 10,715,235
`____________
`
`MOTION FOR JOINDER TO
`INTER PARTES REVIEW IPR2022-00367
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL TECHNOLOGIES INC. AND DELL INC.,
`Petitioners,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case: IPR2022-01398
`U.S. Patent No. 10,715,235
`____________
`
`MOTION FOR JOINDER TO
`INTER PARTES REVIEW IPR2022-00367
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`A.
`B.
`
`I.
`II.
`III.
`
`TABLE OF CONTENTS
`STATEMENT OF PRECISE RELIEF REQUESTED ............................. 1
`STATEMENT OF MATERIAL FACTS .................................................... 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED .................. 4
`Joinder is Timely. ...................................................................................... 4
`Joinder is Appropriate. .............................................................................. 4
`1.
`Legal Standard ........................................................................... 4
`2.
`Joinder Is Appropriate Because Petitioner Proposes No New
`Grounds of Unpatentability. ...................................................... 4
`Joinder Will Not Impact Any Trial Schedule. ........................... 5
`3.
`Joinder Would Simplify Briefing and Discovery. ..................... 6
`4.
`IV. CONCLUSION .............................................................................................. 7
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. INVT SPE LLC,
`IPR2019-00958, Paper 9 (PTAB May 30, 2019) ................................................. 6
`Apple Inc. v. Uniloc 2017, LLC,
`IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) .................................................. 5
`Dell Inc. v. Alacritech, Inc.,
`IPR2018-01307, Paper No. 8 (PTAB Jan. 11, 2019) ........................................... 5
`Dell Inc. v Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper No. 17 (PTAB July 29, 2013) ......................................... 4
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ................................................. 5
`Motorola Mobility LLC v. SoftView LLC,
`IPR2013-00256, Paper 10 (PTAB June 20, 2013) ............................................... 6
`Statutes
`35 U.S.C. § 315(c) ..................................................................................................... 4
`Other Authorities
`37 C.F.R. § 42.122(b) ............................................................................................ 3, 4
`
`ii
`
`
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioners Dell Technologies Inc. and Dell Inc. (“Petitioners” or “Dell”)
`
`hereby move for joinder of Dell’s contemporaneously-filed petition for Inter Partes
`
`Review (“IPR”) of claims 8-14 of U.S. Patent No. 10,715,235 (the “’235 Patent”)
`
`with a pending IPR filed by Apple Inc. and HP Inc. against XR Communications
`
`LLC, IPR2022-00367 (“Apple & HP IPR”).
`
`The Apple & HP IPR was filed on January 7, 2022, on the same patent and
`
`the same claims as this Petition. This Petition and supporting declaration are
`
`substantively identical to the petition and declaration submitted in the Apple & HP
`
`IPR. More specifically, Petitioners here assert that the same claims are obvious over
`
`the same prior art based on the same arguments presented by the same expert as in
`
`the Apple & HP IPR.
`
`Apple Inc. and HP Inc. have informed Petitioners that they do not oppose
`
`joinder. Petitioners here have agreed to take an “understudy” role if joined. Joinder
`
`will not cause any delay in the resolution of the Apple & HP IPR. Joinder is
`
`therefore appropriate because it will promote the efficient and consistent resolution
`
`of the same patentability issues of the same patent. It will not delay any schedule in
`
`the Apple & HP IPR trial schedule, and the parties in the Apple & HP IPR will not
`
`be prejudiced.
`
`1
`
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`XR Communications LLC (“Patent Owner”) purportedly owns the ’235
`
`Patent.
`
`2.
`
`The following litigation or inter partes reviews related to the ’235
`
`Patent are pending:
`
` Apple Inc. et al v. XR Communications, LLC, IPR2022-01155 (PTAB);
`
` Apple Inc. et al v. XR Communications, LLC, IPR2022-00367 (PTAB);
`
` Amazon.com, Inc. et al v. XR Communications LLC, IPR2022-01353
`(PTAB);
`
` Samsung Electronics Co., Ltd. et al v. XR Communications LLC,
`IPR2022-01362 (PTAB);
`
` XR Communications, LLC, dba Vivato Technologies v. HP Inc., Case
`No. 6:21-cv-00694-ADA (WDTX);
`
` XR Communications, LLC, dba Vivato Technologies v. Microsoft
`Corporation, Case No. 6:21-cv-00695-ADA (WDTX);
`
` XR Communications, LLC, dba Vivato Technologies v. Dell
`Technologies Inc. et al, Case No. 6:21-cv-00646-ADA (WDTX);
`
` XR Communications, LLC, dba Vivato Technologies v. Amazon.com,
`Inc. et al, Case No. 6:21-cv-00619-ADA (WDTX);
`
` XR Communications, LLC, dba Vivato Technologies v. Apple, Inc.,
`Case No. 6:21-cv-00620-ADA (WDTX);
`
` XR Communications, LLC, dba Vivato Technologies v. ASUSTeK
`Computer Inc., Case No. 6:21-cv-00622ADA (WDTX);
`
`2
`
`
`
` XR Communications, LLC, dba Vivato Technologies v. Google LLC,
`Case No. 6:21-cv-00625ADA (WDTX); and
`
` XR Communications, LLC, dba Vivato Technologies v. Samsung
`Electronics Co., Ltd. et al, Case No. 6:21-cv-00626ADA (WDTX).
`On January 7, 2022, Apple Inc. and HP Inc. filed a petition challenging
`
`3.
`
`claims 8-14 of the ’235 Patent in Apple Inc. and HP Inc. v. XR Communications
`
`LLC, IPR2022-00367.
`
`4.
`
`Along with
`
`this Motion for Joinder, Petitioners here have
`
`simultaneously filed a Petition for inter partes review, which argues, inter alia, that
`
`exactly the same claims of the ’235 Patent are obvious over exactly the same grounds
`
`and reasons set out in the Apple & HP IPR. The Petition is also supported by the
`
`expert declaration of Dr. Robert Akl, the same expert who submitted an identical
`
`declaration in support of the Apple & HP IPR.
`
`5.
`
`The grounds proposed in the present Petition are therefore the same
`
`grounds of unpatentability. The Petition does not contain any additional arguments
`
`or evidence in support of the invalidity of claims 8-14 of the ’235 Patent.
`
`6.
`
`The ’235 Patent is asserted against both the petitioners in the Apple &
`
`HP IPR and Petitioners here in XR Communications, LLC, dba Vivato Technologies
`
`v. Dell Technologies Inc. et al, Case No. 6:21-cv-00646-ADA (WDTX).
`
`3
`
`
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A.
`
`Joinder is Timely.
`
`The motion for joinder is timely because it is submitted within one month after
`
`the institution date of the Apple & HP IPR. See 37 C.F.R. § 42.122(b).
`
`B.
`
`Joinder is Appropriate.
`
`The Board has discretion to, and should, join this IPR with the Apple & HP
`
`IPR. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
`
`1.
`
`Legal Standard
`
`In considering a motion for joinder, the Board considers the following factors:
`
`(1) the reasons why joinder is appropriate; (2) new grounds of unpatentability
`
`asserted in the petition; (3) the impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) how briefing and discovery may be
`
`simplified. See Dell Inc. v Network-1 Security Solutions, Inc., IPR2013-00385,
`
`Paper No. 17 at 4 (PTAB July 29, 2013). All of these factors weigh in favor of
`
`joinder.
`
`2.
`
`Joinder Is Appropriate Because Petitioner Proposes No New
`Grounds of Unpatentability.
`
`Joinder is appropriate here because the Petition asserts the same grounds and
`
`relies on the same evidence for unpatentability presented in the Apple & HP IPR.
`
`Specifically, the Petition relies on the same combinations of prior art references.
`
`4
`
`
`
`Moreover, the same expert, Dr. Akl, has submitted an identical supporting
`
`declaration in both IPRs. Thus, the arguments in both petitions are identical; there
`
`are no new grounds of unpatentability asserted in this Petition. Accordingly, the
`
`Petition will not add any additional dimension to the substantive issues in the Apple
`
`& HP IPR.
`
`As the same issues will be at issue in both proceedings, joinder is the most
`
`efficient and economical manner to proceed. See, e.g., Dell Inc. v. Alacritech, Inc.,
`
`IPR2018-01307, Paper No. 8 (PTAB Jan. 11, 2019) (granting motion for joinder
`
`where the petition challenged the same claims on the same grounds.)
`
`Finally, this is Petitioners’ first challenge of the ’235 Patent. Accordingly, in
`
`the instant case there is no “potential for abuse of the review process by repeated
`
`attacks on patents.” 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.
`
`3.
`
`Joinder Will Not Impact Any Trial Schedule.
`
`The Petition does not include any new grounds of unpatentability. As such,
`
`Joinder will not introduce any new prior art, experts, or grounds for unpatentability
`
`5
`
`
`
`into the Apple & HP IPR. Petitioners consent to the current schedule in the Apple
`
`& HP IPR and will not request any alterations to any schedule that may issue in the
`
`Apple & HP IPR based on the requested joinder. Further, Petitioners agrees to take
`
`an “understudy” role in the joined proceeding, so long as Apple or HP remains an
`
`active party in the joined proceeding. Accordingly, joinder will not impact any
`
`schedule that may issue or otherwise prejudice the Patent Owner.
`
`4.
`
`Joinder Would Simplify Briefing and Discovery.
`
`As the prior art and bases for unpatentability in the petitions in both this IPR
`
`and the Apple & HP IPR are the same, the same arguments will be made in both
`
`proceedings. Both Petitioners and the Apple & HP IPR petitioners rely on the same
`
`expert to support identical arguments.
`
`Petitioners and the Apple & HP IPR petitioners have also agreed that
`
`Petitioners will maintain an “understudy” role in the proceeding, if joined. See, e.g.,
`
`Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9 at 5–8 (PTAB May 30, 2019)
`
`(granting IPR where petitioners requested an “understudy” role). Petitioners will
`
`assume a primary role only if the Apple & HP IPR petitioners cease to participate in
`
`the IPR.
`
`This agreement removes any potential “complication or delay” caused by
`
`joinder, while providing the parties an opportunity to address all issues that may
`
`6
`
`
`
`arise and avoiding any undue burden on Patent Owner, the Apple & HP IPR
`
`petitioners, and the Board. See, e.g., Motorola Mobility LLC v. SoftView LLC,
`
`IPR2013-00256, Paper 10 at 8–10 (PTAB June 20, 2013). Therefore, briefing and
`
`discovery would be significantly simplified if joinder were granted.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioners Dell Technologies Inc. and Dell Inc.
`
`respectfully request that the Board institute its Petition for Inter Partes Review of
`
`U.S. Patent No. 10,715,235 and join this proceeding with Apple Inc. and HP Inc. v.
`
`XR Communications LLC, IPR2022-00367.
`
`7
`
`
`
`Dated: August 12, 2022
`
`Respectfully submitted,
`
`By: /Christopher TL Douglas/
`Christopher TL Douglas
`(Reg. No. 56,950)
`ALSTON & BIRD LLP
`101 S. Tryon Street
`Charlotte, NC 28280
`Phone: (704) 444-1119
`
`Attorney for Petitioner
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies pursuant to 37 C.F.R. §42.6(e) and §42.105 that on
`
`August 12, 2022, a true and correct copy of the Motion for Joinder and Petition
`
`for Inter Partes Review of U.S. Patent No. 10,715,235 challenging claims 8-14
`
`was served via electronic service pursuant to a written agreement by the Patent
`
`Owner to receive service electronically, at the below email addresses:
`
`Glenn Nuttall
`Klein, O’Neill & Singh, LLP
`GlenNuttall@koslaw.com
`info@koslaw.com
`
`Reza Mirzaie (Reg. No. 69,138)
`Russ, August & Kabat
`rmirzaie@raklaw.com
`rak_vivato@raklaw.com
`
`Philip Wang (Reg. No. 74,621)
`Russ, August & Kabat
`pwang@raklaw.com
`rak_vivato@raklaw.com
`
`August 12, 2022
`Date
`
`
`By /Christopher TL Douglas/
`Christopher TL Douglas (Reg. No. 56,950)
`
`9
`
`
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