Filed: November 28, 2022
`
`Filed on behalf of Amazon.com, Inc.
`By: Colin B. Heideman
`Joseph R. Re
`Daniel P. Hughes
`Logan P. Young
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`925 4th Avenue, Suite 2500
`Seattle, WA 98104
`Telephone: 206-405-2000
`Facsimile: 206-405-2001
`Email: BoxSEAZN2L1925P11@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`
`IPR2023-00285
`U.S. Patent No. 8,326,611
`
`MOTION FOR JOINDER TO AND CONSOLIDATION WITH
`RELATED INTER PARTES REVIEW IPR2022-01495
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`Filed on behalf of Amazon.com, Inc.
`By: Colin B. Heideman
`Joseph R. Re
`Daniel P. Hughes
`Logan P. Young
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`925 4th Avenue, Suite 2500
`Seattle, WA 98104
`Telephone: 206-405-2000
`Facsimile: 206-405-2001
`Email: BoxSEAZN2L1925P11@knobbe.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`
`IPR2023-00285
`U.S. Patent No. 8,326,611
`
`MOTION FOR JOINDER TO AND CONSOLIDATION WITH
`RELATED INTER PARTES REVIEW IPR2022-01495
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`I.
`
`II.
`
`Table of Contents
`
`INTRODUCTION ............................................................................................ 1
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED ......................... 2
`
`A.
`
`B.
`
`C.
`
`Legal Standard ........................................................................................ 2
`
`Petitioner’s Motion for Joinder is Timely .............................................. 3
`
`Each Factor Weighs in Favor of Joinder ................................................ 4
`
`1.
`
`2.
`
`3.
`
`Joinder is Appropriate .................................................................. 4
`
`Petitioners Propose No New Grounds of Unpatentability ........... 5
`
`Joinder Will Not Unduly Burden or Negatively Impact the Apple
`
`IPR Trial Schedule ....................................................................... 5
`
`4.
`
`Procedures to Simplify Briefing and Discovery .......................... 5
`
`III. GENERAL PLASTIC IS INAPPLICABLE ...................................................... 6
`
`IV. CONCLUSION ................................................................................................. 9
`
`-
`
`-
`-i-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`
`I.
`
`INTRODUCTION
`
`Amazon.com, Inc. (“Petitioner”) respectfully submits this Motion for Join-
`
`der, together with a Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
`
`8,326,611 (“the ’611 Patent”) filed contemporaneously herewith. Pursuant to 35
`
`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner requests institution of this
`
`IPR, and joinder and consolidation with IPR2022-01495 (“the Apple IPR”). That
`
`IPR challenges the same claims and has not yet been instituted.
`
`Joinder here would be consistent with the overarching policy of securing
`
`“the just, speedy, and inexpensive resolution” of every IPR proceeding. 37 C.F.R.
`
`§ 42.1(b). Petitioners’ Petition and the Apple Petition are substantively identical—
`
`they contain the same grounds, based on the same prior art combinations against
`
`the same claims. Thus, joinder would neither unduly complicate the Apple IPR
`
`nor delay its schedule.
`
`To streamline discovery and briefing, Petitioner agrees to take an “under-
`
`study” role, actively participating substantively in the Apple IPR only if Apple
`
`terminates its involvement after joinder. (If Apple were to terminate its involve-
`
`ment prior to this Motion being granted, then Petitioner would withdraw this Mo-
`
`tion so that Petitioner’s timely-filed Petition could be considered on its merits.)
`
`Because joinder would promote judicial efficiency in determining patenta-
`
`bility without prejudicing Patent Owner, the Board should grant this Motion.
`
`
`
`-1-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`
`II.
`
`STATEMENT OF FACTS
`
`Patent Owner filed suit against Samsung on May 27, 2021, asserting seven
`
`patents. (Case No. 2:21-cv-00186, E.D. Tex.) Patent Owner filed suits against
`
`Apple and Google on September 23, 2021, and has asserted nine patents against
`
`each of them, including the seven patents also asserted against Samsung. (Case
`
`Nos. 6:21-cv-00985 and 6:21-cv-00984, W.D. Tex.) Patent Owner filed suit
`
`against Petitioner on Nov. 29, 2021, and has asserted the same nine patents. (Case
`
`No. 2:21-cv-00435, E.D. Tex., transferred to Case No. 5:22-cv-06727, N.D. Cal.)
`
`Samsung, Apple, and Google have filed IPR Petitions against each of the patents
`
`asserted against them.
`
`For some of the patents asserted against it, Petitioner has filed independent
`
`petitions. For other asserted patents, including the ’611 patent, Petitioner is filing
`
`substantively identical petitions to those previously filed and is seeking joinder.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A.
`
`Legal Standard
`
`The Board has the authority to join Petitioner as a party to the Apple IPR 35
`
`U.S.C. § 315(c); see also 35 U.S.C. § 315(d) (Board also has the authority to con-
`
`solidate proceedings). Whether a request for joinder should be granted is discre-
`
`tionary. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB,
`
`April 24, 2013).
`
`
`
`-2-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`
`B.
`
`Petitioner’s Motion for Joinder is Timely.
`
`A petitioner may request joinder “no later than one month after the institu-
`
`tion date” of the original IPR. 37 C.F.R. § 42.122(b). This is the “only timing re-
`
`quirement for a motion for joinder.” Central Security Group — Nationwide, Inc. v.
`
`Ubiquitous Connectivity, LP, IPR2019-01609, Paper 11, at 8-9 (PTAB Feb. 26,
`
`2020). Motions for joinder that are filed before institution of the related IPR com-
`
`ply with this rule. Id. at 8; see also, e.g., ZyXEL Communications Corp. v. Unm
`
`Rainforest Innovations, IPR2021-00739, Paper 17 at 15 (PTAB Oct. 1, 2021) (mo-
`
`tion for joinder not premature when filed before institution decision); Dell Inc. v.
`
`Neodron Ltd., IPR2020-00731, Paper 9 at 5 (PTAB July 31, 2020); Pfizer, Inc. v.
`
`Genentech, Inc., IPR2017-02063, Paper 25 at 3-4 (PTAB Feb. 21, 2018).
`
`This Motion for Joinder is timely. Apple’s Petition was filed September 2,
`
`2022, and has not been instituted as of this Motion’s filing. Thus, Petitioner is fil-
`
`ing its joinder motion within the time limit enumerated in 37 C.F.R. § 42.122(b).
`
`Petitioner requests that action on this Motion be held in abeyance until, and
`
`granted only if, the Board institutes the Apple IPR. Central Security Group,
`
`IPR2019-01609, Paper 11, at 9. If Apple terminates its involvement prior to insti-
`
`tution, Petitioner requests that this Motion be withdrawn as moot and that Petition-
`
`er’s Petition be considered on the merits under Petitioner’s full control, as Petition-
`
`er is not estopped from requesting IPR of the ’611 patent at the time of this filing.
`
`
`
`-3-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`
`C.
`
`The Board Should Permit Joinder
`
`In deciding whether to exercise its discretion and permit joinder, the Board
`
`considers: (1) why joinder is appropriate; (2) whether the new petition presents any
`
`new grounds of unpatentability; (3) any impact joinder would have on the trial
`
`schedule for the existing review; and (4) how briefing and discovery may be sim-
`
`plified. Kyocera Corp., IPR 2013- 00004, Paper 15 at 4 (April 24, 2013). Here,
`
`each of the four factors weighs in favor of joinder.
`
`1.
`
`Joinder is Appropriate for Several Reasons.
`
`Joinder is appropriate here because the concurrently filed Petition involves
`
`the same patent, challenges the same claims, relies on the same exhibits, and is
`
`based on the same grounds and combinations of prior art submitted in the Apple
`
`IPR. The concurrently filed Petition is substantively identical to the Apple Peti-
`
`tion, containing only minor differences relating to (a) the procedural formalities of
`
`having a different Petitioner file the Petition, and (b) changes to arguments regard-
`
`ing discretionary denial under § 314(a) that result from a different co-pending liti-
`
`gation. There are no changes to the facts, citations, evidence, or arguments pre-
`
`sented in the grounds for unpatentability set forth in the Apple Petition. Because
`
`the proceedings are substantively identical, good cause exists for joining Petitioner
`
`as a party to the Apple IPR and consolidating the proceedings, so that the Board
`
`can efficiently resolve identical challenges in a single proceeding. Central Securi-
`
`
`
`-4-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`ty Group, IPR2019-01609, Paper 11 at 8; ZyXEL, IPR2021-00739, Paper 17 at 20.
`
`This efficiency gain extends to the litigation. In the Petition, Petitioner stip-
`
`ulates that, if Petitioner’s Petition is instituted, then Petitioner will not pursue the
`
`grounds identified in its Petition in the district court. Thus, joinder will ensure that
`
`the grounds presented in the Apple IPR are not inefficiently and unnecessarily ad-
`
`judicated in another forum (e.g., the district court litigation involving Petitioner).
`
`Because joinder will increase efficiency and reduce duplicative proceedings
`
`involving the same patentability challenges, this factor favors joinder.
`
`2.
`
`Petitioner Proposes No New Grounds of Unpatentability
`
`The concurrently filed Petition presents the same grounds of unpatentability
`
`as the Apple Petition and challenges the same claims. Therefore, Petitioners do not
`
`propose any new grounds of unpatentability and this factor also favors joinder.
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Apple IPR Trial Schedule.
`Because Petitioner’s Petition is substantively identical to the Apple Peti-
`
`tion—presenting the same grounds and challenging the same claims using the same
`
`evidence—there are no new issues for Patent Owner to address. Further, joinder
`
`with the Apple IPR will not unduly burden or negatively impact the schedule in
`
`that proceeding in any way. Thus, this factor also favors joinder. Sony Corp. v.
`
`Memory Integrity, LLC, IPR2015-01353 Paper 11 at 6 (granting motion where
`
`
`
`-5-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`joinder does “not necessitate any additional briefing or discovery from Patent
`
`Owner beyond that already required [by the original IPR]”).
`
`4.
`
`How Briefing and Discovery May Be Simplified
`
`The concurrently filed Petition and the Apple Petition present substantively
`
`identical grounds of unpatentability, including the same combinations of art against
`
`the same claims. Additionally, if this motion for joinder is granted, Petitioners
`
`agree to take an “understudy” role, adhering to the following restrictions, as de-
`
`scribed by the Board:
`
`“(a) all filings by [Petitioner] in the joined proceeding be consoli-
`
`dated with [Apple’s], unless a filing solely concerns issues that do
`
`not involve [Apple]; (b) [Petitioner] 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 intro-
`
`duced by [Apple]; (c) [Petitioner] shall be bound by any agree-
`
`ment between [Patent Owner] and [Apple] concerning discovery
`
`and/or depositions; and (d) [Petitioner] at deposition shall not re-
`
`ceive any direct, cross-examination or redirect time beyond that
`
`permitted for [Apple alone under either 37 C.F.R. § 42.53 or any
`
`agreement between [Patent Owner] and [Apple].”
`
`Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268, Paper 17 at 5 (PTAB April
`
`
`
`-6-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`10, 2015) (emphasis in original); Sony, IPR2015-01353, Paper 11 at 6 (granting
`
`joinder where petitioners requested an “understudy” role). Petitioner will assume
`
`the primary role only if Apple ceases to participate in the Apple IPR.
`
`By joining Petitioner in the Apple IPR and allowing Petitioner to take on an
`
`understudy role, both briefing and discovery will be simplified because Patent
`
`Owner can maintain its current trial schedule and avoid duplicative efforts. The
`
`understudy role will minimize any potential complications or delay that potentially
`
`could result by joinder, including duplicative discovery and filings. Sony,
`
`IPR2015-01353, Paper 11 at 6-7 (“joinder would increase efficiency by eliminating
`
`duplicative filings and discovery, and would reduce costs and burdens on the par-
`
`ties as well as the board” where petitioners sought an “understudy” role). Thus,
`
`this factor also favors joinder.
`
`For these foregoing reasons, each of the factors that the Board considers in
`
`evaluating potential joinder weighs in favor of granting this Motion.
`
`D. General Plastic Is Inapplicable
`
`The General Plastic analysis is inapplicable to this joinder motion concur-
`
`rently filed Petition. In General Plastic, the Board set forth factors for analyzing
`
`follow-on petitions. Generally, these factors are intended to help conserve the
`
`Board’s resources and to prevent a subsequent petitioner from gaining a strategic
`
`advantage from filing a later petition. General Plastic Indus. Co. v. Canon Ka-
`
`
`
`-7-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`bushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017).
`
`Here, Petitioner is not filing a follow-on petition. Rather, Petitioner seeks to
`
`join the Apple IPR as an understudy and does not present any new grounds. This
`
`is not the type of serial petition necessitating a General Plastic analysis. Indeed,
`
`the Board has found that the General Plastic factors are “not particularly relevant”
`
`in this situation, i.e., where a different petitioner files a “me-too” or “copycat” peti-
`
`tion with a timely motion for joinder. Central Security Group, IPR2019-01609,
`
`Paper 11 at 8; Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 9-11
`
`(PTAB Oct. 30, 2018).
`
`Even if the Board were to consider the General Plastic factors, they would
`
`weigh in favor of institution. Petitioner has not previously filed a petition against
`
`the ’611 patent. Petitioner and the prior petitioners are not the same party and have
`
`no significant relationship. They are not co-defendants. They are competitors ac-
`
`cused of infringement—in different actions pending in different courts—based on
`
`sales of different products. This weighs against denial. NetNut Ltd. v. Bright Data
`
`Ltd., IPR2021-00465, Paper 11, at 9 (PTAB Aug. 12, 2021) (declining to extend
`
`General Plastic and Valve to different petitioner with no relationship to previous
`
`petitioners); Mercedes-Benz USA, LLC v. Carucel Invs. L.P., IPR2019-01404, Pa-
`
`per 12, at 11-12 (PTAB Jan. 22, 2020); Toshiba Am. Info. Sys., Inc. v. Walletex
`
`Microelecs. Ltd., IPR2018-01538, Paper 11, at 20 (PTAB Mar. 5, 2019).
`
`
`
`-8-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`
`The second through fifth factors relate to timing issues that are largely irrel-
`
`evant. When Petitioner learned of the prior art, whether Petitioner received Patent
`
`Owner’s preliminary response or an institution decision, and the length of time be-
`
`tween the filing of the petitions, are all irrelevant. Petitioner did not previously file
`
`any IPR petition, has substantively duplicated the Apple IPR, alleging the same
`
`facts, grounds, and prior art, and has agreed to take an understudy role. As a result,
`
`this IPR cannot be considered an attempt to harass Patent Owner or otherwise en-
`
`gage in serial, tactical filings. Indeed, the exact opposite is true. Petitioner seeks
`
`to simplify and minimize the number of distinct proceedings by joining the Apple
`
`IPR rather than pursuing a separate IPR based on different grounds.
`
`The sixth factor considers the Board’s resources and the seventh factor re-
`
`lates to the Board’s ability to meet the one-year statutory deadline. Allowing join-
`
`der here would not impact the Board’s resources (beyond those dedicated to decid-
`
`ing this Motion), and would not impact the Board’s ability to meet the one-year
`
`statutory deadline.
`
`For the foregoing reasons, the General Plastic factors do not weigh against
`
`institution and joinder of Petitioner to Apple’s IPR.
`
`
`
`
`
`
`
`-9-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`
`IV. CONCLUSION
`
`Petitioner respectfully requests that the Board institute Petitioner’s concur-
`
`rently filed IPR Petition, and then join Petitioner as a party to the Apple IPR.
`
`
`
`
`
`
`
`
`
`Dated: November 28, 2022
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`/Colin B. Heideman/
`Colin B. Heideman (Reg. No. 61,513)
`Joseph R. Re (Reg. No. 31,291)
`Nathan D. Reeves (Reg. No. 77,806)
`Logan P. Young (Reg. No. 79,294)
`
`Counsel for Petitioner,
`AMAZON.COM, INC.
`
`
`
`
`
`
`
`
`
`-10-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copies of the foregoing MOTION FOR
`
`JOINDER TO AND CONSOLIDATION WITH RELATED INTER PARTES
`
`REVIEW IPR2022-01495 PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R.
`
`§ 42.122(b) is being served on November 28, 2022, via FedEx Priority Overnight
`
`on counsel of record for U.S. Pat. 8,326,611 patent owner Jawbone Innovations,
`
`LLC at the address below:
`
`Mark Leonardo
`Nutter McClennen & Fish LLP
`Seaport West
`155 Seaport Blvd.
`Boston, MA 02210-2604
`
` courtesy copy is also being served on counsel for the patent holder in the pend-
`
` A
`
`ing litigation Jawbone Innovations, LLC v. Amazon.com, Inc. and Amazon.com
`
`Services, Inc., 5:22-cv-06727-TLT (N.D. Cal. filed November 29, 2021):
`
`
`Alfred R. Fabricant
`Peter Lambrianakos
`Vincent J. Rubino, III
`Richard M. Cowell
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`Email: ffabricant@fabricantllp.com
`Email: plambrianakos@fabricantllp.com
`
`Samuel F. Baxter
`Jennifer L. Truelove
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`Email: sbaxter@mckoolsmith.com
`Email: jtruelove@mckoolsmith.com
`
`
`
`-11-
`
`
`
`Amazon.com, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 8,326,611
`
`Email: vrubino@fabricantllp.com
`Email: jawbone@fabricantip.com
`Email: rcowell@fabricantllp.com
`Email: jawbone@fabricantllp.com
`
`
`
`November 28, 2022
`
`
`
`
`56696785
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Colin B. Heideman/
`Counsel for Petitioner,
`AMAZON.COM, INC.
`
`
`
`
`
`
`-12-
`
`
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