IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`__________________
`
`
`Case No. IPR2023-00307
`U.S. Patent No. 9,769,314
`
`__________________
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
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`
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`
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`

`

`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
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`
`
`TABLE OF CONTENTS
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`I. STATEMENT OF PRECISE RELIEF REQUESTED ....................................... 3
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`II. BACKGROUND AND RELATED PROCEEDINGS ....................................... 3
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ............................ 4
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`a.
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`b.
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`Legal Standard ........................................................................................ 5
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`Petitioner’s Motion for Joinder is Timely .............................................. 6
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`c.
`314(a)
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`The Petition Should Not Be Discretionarily Denied under 35 U.S.C. §
`6
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`1. Whether the petition is directed to the same claims of the same patent. ............ 6
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`2. Whether at the time of filing of the first petition the petitioner knew of the
`prior art asserted in the second petition. .................................................................... 6
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`3. Patent owner’s preliminary response and the Board’s institution decision of the
`first petition. ............................................................................................................... 8
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`4. Time elapsed between the first and second petitions. ......................................... 9
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`5. Petitioner’s explanation for the time elapsed between the filings of multiple
`petitions. ..................................................................................................................... 9
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`6. The finite resources of the Board. ....................................................................... 9
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`7. The totality of factors favor institution. .............................................................10
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`d.
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`The Kyocera Factors Favor Joinder .....................................................10
`
`i.
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`Factor 1: Joinder is appropriate .............................................................10
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`ii. Factor 2: Apple’s Petition proposes no new grounds of unpatentability
` ..............................................................................................................12
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`iii. Factor 3: Joinder will not unduly burden or negatively impact the
`Google IPR ...........................................................................................12
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`iv. Factor 4: Procedures to simplify briefing and discovery .......................13
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`IV. CONCLUSION .................................................................................................16
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`CERTIFICATE OF SERVICE ................................................................................17
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`2
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`

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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
`
`I. STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner Apple Inc. (“Apple”) respectfully submits this Motion for Joinder
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`together with a Petition for Inter Partes Review of U.S. Patent No. 9,769,314
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`(“Apple’s Petition”). On April 4, 2022, Google LLC (“Google”) filed Google LLC
`
`v. Parus Holdings, Inc., IPR2022-00805 (“the Google IPR”) that also challenges
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`U.S. Patent No. 9,769,314. The Google IPR was instituted November 7, 2022.
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`Apple requests inter partes review and joinder with the Google IPR pursuant to 35
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`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b). Joinder is appropriate because Apple’s
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`Petition is substantively identical to the petition in the Google IPR—challenging
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`the same claims of the ’314 patent on the same grounds while relying on the same
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`prior art, arguments, and evidence (i.e., Apple’s Petition is a “copycat” petition).
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`Apple’s request for joinder is timely because it is filed within thirty (30)
`
`days of institution of the Google IPR. If Apple is joined, Apple proposes to
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`streamline discovery and briefing by taking an “understudy role.” Accordingly,
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`joinder will not unduly burden or prejudice the parties to the Google IPR and will
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`provide for a just, speedy, and inexpensive determination of related proceedings.
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`Counsel for Apple has conferred with counsel for Google, and Google does
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`not oppose joinder.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`1.
`
`On September 17, 2021, Parus Holdings Inc. (“Parus”)—the
`
`3
`
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`

`

`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
`
`purported Patent Owner—filed a complaint asserting various patents against Apple
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`in the U.S. District Court for the Western District of Texas (Case No. 6:21-cv-
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`00968). On November 12, 2021, Patent Owner filed an amended complaint that
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`added the ’314 patent to the lawsuit.
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`2.
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`Parus has also asserted the ’314 patent against Google in 6:21-cv-
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`00571 (W.D. Tex.) in an amended complaint filed October 4, 2021.
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`3.
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`On April 4, 2022, Google filed a Petition for Inter Partes Review
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`challenging claims 1-26 of the ’314 patent (“Google’s Petition”). See Google LLC
`
`v. Parus Holdings, Inc., IPR2022-00805, (PTAB April 4, 2022). The Board
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`instituted on November 7, 2022. See Google LLC v. Parus Holdings, Inc., Paper 7,
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`IPR2022-00805, (PTAB Nov. 7, 2022).
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`4.
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`On May 5, 2022, Apple filed a Petition for Inter Partes Review
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`challenging claims 1-26 of the ’314 patent. See Apple Inc. v. Parus Holdings, Inc.,
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`IPR2022-00948, (PTAB May 5, 2022). On November 28, 2022, the PTAB issued
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`a Decision Denying Institution. See Apple Inc. v. Parus Holdings, Inc., IPR2022-
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`00949, Paper 7 (PTAB Nov. 28, 2022).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`As explained in detail below, Apple’s motion for joinder should be granted
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`because the motion is timely, the Kyocera factors favor joinder and the petition
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`should not be discretionarily denied under General Plastic.
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`4
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`

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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
`
`a. Legal Standard
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`The Board may join as a party to an instituted inter partes review a person
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`who has properly filed a petition for inter partes review that warrants institution.
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`35 U.S.C. § 315(c). Seeking to join an IPR “first consider[s] whether to exercise
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`discretion under § 314(a).” Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, paper
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`9, pg. 4-5 (PTAB Oct. 28, 2020) (precedential) (“Uniloc”). Where a party’s first
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`petition is denied, a second copycat petition accompanied by a motion to join may
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`be instituted, even when applying the General Plastic factors under § 314(a). See
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`Google LLC v. Express Mobile Inc. IPR2022-00791, Paper 15 (PTAB October 7,
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`2022) (“Express Mobile”) (granting institution of a second, copycat petition after
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`denial of a first petition on the same claims).
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`Any request for joinder must be filed “no later than one month after the
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`institution date of any inter partes review for which joinder is requested.” 37
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`C.F.R. § 42.122(b). A petition for inter partes review is not subject to the one-
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`year statutory time bar if the petition is accompanied by a request for joinder. 35
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`U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
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`“A motion for joinder should (1) set forth reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`5
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`

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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
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`may be simplified.” Samsung Elecs., Co. v. Raytheon Co., IPR2016-00962, Paper
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`12 at 5 (PTAB Aug. 24, 2016) (citing Kyocera Corp. v. Softview LLC, IPR2013-
`
`00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).
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`b. Petitioner’s Motion for Joinder is Timely
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`Apple’s Motion for Joinder is timely because it is being filed within one
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`month after the institution decision in the Google IPR. See 37 C.F.R. § 42.122(b).
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`c. The Petition Should Not Be Discretionarily Denied under 35
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`U.S.C. § 314(a)
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`The Board should consider this motion for joinder and not discretionarily
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`deny the copycat petition under § 314(a), because application of the General
`
`Plastic framework weighs in favor of institution, particularly considering that the
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`facts here are distinguishable from Uniloc.
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`1. Whether the petition is directed to the same claims of the
`same patent.
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`This copycat petition challenges claims 1-26 of the ’314 patent like
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`Apple’s first petition. However, regardless of whether this factor weighs against
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`institution, the totality of factors as outlined below weigh in favor of institution.
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`Google LLC v. Express Mobile Inc. IPR2022-00791, Paper 15 (PTAB October
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`7, 2022) (“Express Mobile”) (granting institution of a second, copycat petition
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`after denial of a first petition on the same claims).
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`2. Whether at the time of filing of the first petition the
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`6
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`

`

`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
`
`petitioner knew of the prior art asserted in the second
`petition.
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`The General Plastic framework addresses the situation where a petitioner
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`files serial petitions in “an attempt to cure the deficiencies that the Board
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`identified in its first-filed petitions.” General Plastic Indus. Co., Ltd. v. Canon
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`Kabushiki Kaisha, IPR2016-01357, Paper 19 at 11 (PTAB Sept. 6, 2017)
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`(precedential) (“General Plastic”). “The filing of sequential attacks against the
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`same claims, with the opportunity to morph positions along the way, imposes
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`inequities on [Patent Owner].” Id.
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`In contrast, Apple is not curing deficiencies or morphing positions from
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`its first IPR. Rather, Apple is seeking to join a petition that was filed before its
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`own petition was filed, which Apple had no part in preparing, and which has
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`been instituted. See Express Mobile, 9 (“This ‘me-too’ Petition is not a new
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`‘serial attack,’ but rather an attempt to join a proceeding that has already been
`
`instituted”). The Board noted in Express Mobile that an “explanation of the
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`facts relevant to the second General Plastic factor” distinguishes Uniloc. See
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`Express Mobile, 8. Here, like in Express Mobile, Petitioner provides an
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`explanation of the facts as follows.
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`This copycat petition uses the same prior art as Google’s IPR, which was
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`filed only one month before Apple filed its first petition. Apple worked
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`7
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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
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`diligently to prepare its first petition since the Patent Owner added the ’314
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`patent to an ongoing lawsuit on November 12, 2021. When Google filed its
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`IPR, making Apple aware of the prior art combinations therein as relevant to the
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`’314 patent, Apple was nearing completion of its own IPR. At that time,
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`Apple’s district court litigation had a scheduled trial date of October 12, 2023,
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`and the expected date of any Final Written Decision (“FWD”) from a petition
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`filed in May, 2021 was November, 2023. Accordingly, Apple could not have
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`been reasonably expected to rework its petition with the entirely different art
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`combinations from Google’s IPR because any delays in filing would have
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`increased the likelihood of discretionary denial under the Board’s Fintiv
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`framework by continuing to move the expected FWD date further after the
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`scheduled trial.1
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`Thus, because Apple is not curing deficiencies from its first IPR—and
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`because Petitioner has provided a detailed explanation of the facts surrounding
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`when it became aware of the prior art from the second petition—this factor
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`weighs in favor of institution.
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`3.
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`Patent owner’s preliminary response and the Board’s
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`1 Director Vidal had not yet issued the Memorandum of June 22, 2022 that
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`updated the Fintiv framework to consider median time-to-trial statistics.
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`8
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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
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`institution decision of the first petition.
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`Petitioner gains no benefit from the patent owner preliminary response or
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`Board’s decision in its first IPR. This second, copycat petition is identical in
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`substance to Google’s IPR that was filed before Apple’s first IPR. See Express
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`Mobile, 9 (“there is no reason to conclude that Petitioner used the filings or
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`decision [of its first IPR] to obtain an unfair advantage in this Petition, which
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`was essentially prepared by someone else”). Therefore, this factor weighs in
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`favor of institution.
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`4.
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`Time elapsed between the first and second petitions.
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`When assessing this factor, it is not reasonable to expect petitioner to file
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`a second, copycat petition while its first petition is still pending. See Express
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`Mobile, 12. Here, Apple files this petition shortly after its first IPR was
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`terminated. This factor weighs against discretionary denial.
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`5.
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`Petitioner’s explanation for the time elapsed between the
`filings of multiple petitions.
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`As noted in factors 3 and 4, Petitioner is acting reasonably by filing this
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`second, copycat petition within the time allotted by the rules. Accordingly, this
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`factor also weighs against discretionary denial.
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`6.
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`The finite resources of the Board.
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`This petition does not require any more resources from the Board other
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`than what the Board already allocated for Google’s IPR when they granted
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`9
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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
`
`institution. See Express Mobile, 12 (“we find that Board resources are not a
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`concern here because this panel has the capacity to see the Facebook IPR to its
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`conclusion regardless of the constitution of the petitioner”). This factor weighs
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`against discretionary denial.
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`7.
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`The totality of factors favor institution.
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`Factors 2-6 weigh in favor of institution. Accordingly, petitioner
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`respectfully requests that the Board institute this petition.
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`d. The Kyocera Factors Favor Joinder
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`i. Factor 1: Joinder is appropriate
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`Joinder with the Google IPR would be appropriate because Apple’s Petition
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`involves the same patent, challenges the same claims, and is based on the same
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`grounds and same technical expert declaration testimony relied upon in Google’s
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`Petition. In short, Apple’s Petition is substantively identical to the Google IPR
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`with respect to the prior art challenges. The only changes to the Google IPR were
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`to (i) properly identify the filing party, (ii) provide a stipulation for the Fintiv
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`analysis, (iii) address the General Plastic factors under 35 U.S.C. § 314(a), and
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`(iv) for word count purposes, portions of the summary of the ’402 patent were
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`removed.
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`As such, Apple’s Petition does “not present issues that might complicate or
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`delay” the existing Google IPR. See Enzymotec Ltd. v. Neptune Techs &
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`10
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`

`

`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
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`Bioresources, Inc., IPR2014-00556, Paper 19 at 6 (July 9, 2014) (“we are mindful
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`of a policy preference for joining a party that does not present new issues that
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`might complicate or delay an existing proceeding”). Joinder would have little, if
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`any, impact on the Google IPR because no new grounds would be added, the
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`schedule would not be affected, no additional briefing or discovery would be
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`required, and no additional burdens would be placed on Patent Owner, as detailed
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`below.
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`Additionally, Apple is currently involved in litigation based on Patent
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`Owner’s allegation that Apple’s products infringe the ʼ402 patent. Apple therefore
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`has a particular interest in the substantial questions of unpatentability surrounding
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`the ʼ402 patent. Joinder would be appropriate for the additional reason that the
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`invalidity grounds as to the challenged claims can be resolved through Apple’s
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`continued participation in the IPR process, even if the original petitioner in
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`IPR2022-00804 were to reach a settlement with Patent Owner, or otherwise cease
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`active participation in that instituted proceeding. The public interest in “permitting
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`full and free competition in the use of ideas which are in reality a part of the public
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`domain,” Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969), favors allowing joinder in
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`this case, as joinder would allow Apple to continue participating in the IPR process
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`if Google ceases active participation. In that regard, Apple is filing this petition and
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`joinder motion so that regardless of whether Google terminates or ceases
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`11
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`

`

`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
`
`participation in its IPR proceeding, inter partes review of the ’314 patent may
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`proceed in due course.
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`Accordingly, joinder is appropriate because it eliminates the possibility of
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`duplicate efforts and ensures a just, speedy, and inexpensive resolution of these
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`proceedings.
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`ii. Factor 2: Apple’s Petition proposes no new grounds of
`unpatentability
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`Apple’s Petition does not present any new grounds or arguments regarding
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`unpatentability. It is substantively identical to Google’s Petition in that regard. The
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`Board “routinely grants motions for joinder where the party seeking joinder
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`introduces identical arguments and the same grounds raised in the existing
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`proceeding.” BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01283, Paper 10 at 8
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`(PTAB Nov. 5, 2019) (quoting Samsung, IPR2016-00962, Paper 12 at 9)
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`(emphasis added). This factor therefore favors joinder.
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`iii. Factor 3: Joinder will not unduly burden or negatively
`impact the Google IPR
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`Joinder will not unduly burden Patent Owner. Because Apple’s Petition
`
`presents the same grounds and arguments as Google’s Petition, there would be no
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`new issues for Patent Owner to address post institution. See Sony Corp. v. Memory
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`Integrity, LLC, IPR2015-01353, Paper 11 at 6 (PTAB Oct. 15, 2015) (granting
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`motion for joinder and instituting IPR where “joinder should not necessitate any
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`12
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`

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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
`
`additional briefing or discovery from Patent Owner beyond that already required in
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`[the original IPR]”).
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`Likewise, joinder will not negatively impact the trial schedule of the Google
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`IPR. If joinder of Apple is granted, Apple expressly consents to the trial schedule
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`issued in the Google IPR. Further, as described below, Apple agrees to take an
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`“understudy” role in the joined proceeding, so long as Google remains an active
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`party in the joined proceeding.
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`Finally, Apple’s Petition relies on the same technical expert and identical
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`declaration. See EX1003 (Decl. of Paul Jacobs, Ph.D).
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`iv. Factor 4: Procedures to simplify briefing and discovery
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`In the event Apple is joined, Apple agrees to take an “understudy” role in the
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`joined proceeding, so long as Google remains a party and active participant in the
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`proceeding. See, e.g., Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9 at 6-8
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`(PTAB May 30, 2019) (granting motion for joinder where the movant presented a
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`substantively identical petition and agreed to take an “understudy” role in the
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`joined proceeding); Intel Corp. v. Alacritech, Inc., IPR2018-01352, Paper 11 at 3–
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`5 (PTAB Jan. 8, 2019) (same). To be clear, Apple only contemplates assuming the
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`role of primary petitioner in the instituted Google IPR if (i) Google is terminated as
`
`a party to the proceeding, or (ii) Google ceases participating in the proceeding such
`
`that the proceeding is no longer “meaningfully adversarial,” contrary to the public
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`13
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`

`

`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
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`interest. See ZTE (USA), Inc., et al. v. CyWee Group Ltd., IPR2019-00143, Paper
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`50 at 7-9 (PTAB July 17, 2020) (allowing a joinder petitioner to assume the role of
`
`primary petitioner with respect to a motion to amend because the “trial no longer
`
`appears to be meaningfully adversarial” given the primary petitioner’s decision not
`
`to oppose revised amended claims).
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`As an understudy in the Google IPR, Apple agrees to the following
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`conditions regarding the joined proceeding, so long as Google remains an active
`
`party in the joined proceeding:
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`• All filings by Apple in the joined proceeding shall be consolidated with the
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`filings of Google unless a filing solely concerns issues that do not involve
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`Google2;
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`• Apple shall not be permitted to raise any new grounds not already instituted
`
`by the Board in the Google IPR, or introduce any argument or discovery not
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`already introduced by Google;
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`• Apple shall be bound by any agreement between Patent Owner and Google
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`2 Any consolidated filings jointly submitted by petitioners will not exceed the
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`
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`normal page limits for a single party set forth in the rules. Circumstances may
`
`require Apple to request and file separate papers with respect to Apple’s individual
`
`status as petitioner in the proceeding—e.g., a motion to terminate.
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`14
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`

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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
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`concerning discovery and/or depositions; and
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`• At deposition, Apple shall not receive any direct examination, cross-
`
`examination, or redirect time beyond that permitted in this proceeding for
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`Google alone under either 37 C.F.R. § 42.53 or any agreement between
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`Patent Owner and Google.
`
`See Apple, IPR2019-00958, Paper 9 at 7–8 (granting a motion for joinder where
`
`the movant proposed the above limitations on its role as understudy); see also Intel
`
`Corp., IPR2018-01352, Paper 11 at 4–5 (granting a motion for joinder with such
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`limitations on the understudy).
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`Additionally, with respect to any oral hearing, Google will be responsible for
`
`the presentation before the Board. Apple, when in the understudy role, will not
`
`request any additional time to independently argue before the Board or attempt to
`
`submit its own demonstratives.3
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`Accordingly, if joinder is granted, briefing and discovery in the joined
`
`proceeding will be no more complex than if Apple had never been joined.
`
`Consolidated briefing and discovery will ensure a simplified and efficient joined
`
`proceeding. As such, this factor also favors joinder.
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`3 While Apple will not materially participate in calls with the Board, depositions,
`
`
`
`and any oral hearing, Apple anticipates that its counsel will attend such events.
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`15
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`

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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
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`IV. CONCLUSION
`
`For the reasons above, Apple respectfully requests that the Board institute
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`Apple’s concurrently filed Petition for Inter Partes Review of U.S. Patent No.
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`9,769,314 and grant joinder.
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`
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`
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`Dated: December 7, 2022
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
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`Customer No. 27683
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`Respectfully submitted,
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`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Registration No. 50,271
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`16
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`Motion for Joinder
`Case No. IPR2023-00307 (U.S. Patent No. 9,769,314)
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and
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`37 C.F.R. § 42.105, service was made on Patent Owner as detailed below.
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`Date of service December 7, 2022
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`Manner of service FEDERAL EXPRESS
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`Documents served PETITIONER’S MOTION FOR JOINDER UNDER 35
`U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b).
`
`Persons served
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`
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`Counsel for Patent Owner
`Patent Law Works, LLP
`310 East 4500 South, Suite 400
`Salt Lake City, UT
`
`McKool Smith, P.C.
`303 Colorado Street, Suite 2100
`Austin, Texas 78701
`ATTN: John B. Campbell
`
`
`Counsel for Google
`O’MELVENY & MYERS LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`ATTN: Benjamin M. Haber
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`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Registration No. 50,271
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`17
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