`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`T-MOBILE USA, INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner.
`
`
`
`Case Nos. IPR2023-00640 & IPR2023-00641
`U.S. Patent No. 10,880,721
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`
`
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`
`BACKGROUND AND RELATED PROCEEDINGS ................................... 3
`
`STATEMENT OF REASONS FOR THE REQUESTED RELIEF ............... 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`Legal Standards and Applicable Rules ................................................. 5
`
`Joinder with the Instituted Meta Proceedings Is Appropriate ............... 6
`
`No New Grounds of Unpatentability Are Asserted in the Petitions ..... 7
`
`Joinder Will Have No Impact on the Meta Proceedings Trial
`Schedules ............................................................................................... 7
`
`E.
`
`Agreed Procedures to Simplify Briefing and Discovery ...................... 8
`
`IV. GENERAL PLASTIC DOES NOT APPLY ..................................................... 9
`
`V. DISCRETIONARY DENIAL IS NOT APPROPRIATE UNDER
`FINTIV EITHER ............................................................................................ 13
`
`
`VI. CONCLUSION .............................................................................................. 15
`
`
`
`-i-
`
`
`
`
`
`I.
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner T-
`
`Mobile USA, Inc. moves for joinder with the Inter Partes Reviews instituted in
`
`Meta Platforms, Inc. v. VoIP-Pal, Inc., IPR2022-01234 and IPR2022-01235, insti-
`
`tuted on January 31, 2023 (“the Meta proceedings”), for U.S. Patent No.
`
`10,880,721 (“the ’721 patent”). This motion is timely because it is filed “no later
`
`than one month after the institution date of any inter partes review for which join-
`
`der is requested.” 37 C.F.R. § 42.122(b). Petitioner has consulted with counsel for
`
`Meta Platforms, Inc. (“Meta”), and Meta does not oppose Petitioner’s request.
`
`Petitioner requests institution of the Petitions for Inter Partes Review filed
`
`concurrently herewith (the “Petitions”). The Petitions are substantively identical to
`
`the petitions filed in Meta proceedings (“Meta’s petitions”). The Petitions and
`
`Meta’s petitions challenge the same claims, on the same grounds, and rely on the
`
`same prior art and evidence, including the same declaration from the same expert.
`
`Petitioner agrees to proceed solely on the grounds, evidence, and arguments
`
`advanced, or that will be advanced, in the instituted Meta proceedings. The
`
`Petitions should therefore be instituted under 35 U.S.C. § 314 for the same reasons
`
`as the instituted Meta proceedings, and Petitioner’s joinder to the instituted Meta
`
`proceedings is appropriate under 35 U.S.C. § 315(c).
`
`Petitioner further confirms that it will act as an “understudy” in the Meta
`
`
`
`1
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`proceedings. Meta will maintain the lead role in the proceedings so long as it is a
`
`party, and Petitioner will not assume an active role unless Meta ends its participa-
`
`tion. Petitioner’s understudy role will avoid lengthy and duplicative briefing, and
`
`Petitioner will not seek additional depositions or deposition time either. Petitioner
`
`further agrees to the foregoing conditions even if additional petitioners are joined.
`
`Accordingly, the proposed joinder will neither unduly complicate the Meta pro-
`
`ceedings nor delay their schedule. To the contrary, joinder will help efficiently re-
`
`solve invalidity disputes among the impacted parties so that a single Board deci-
`
`sion may dispose of the invalidity issues raised for all interested parties. See 35
`
`U.S.C. § 315(e)(2).
`
`Finally, the Board should use its discretion to institute the Petitions and
`
`grant joinder. The General Plastic factors for discretionary denial do not apply to
`
`a “me-too” petition coupled with a timely motion to join. See, e.g., Celltrion, Inc.
`
`v. Genentech, Inc., IPR2018-01019, Paper 11, at 9-11 (PTAB Oct. 30, 2018). But
`
`even if the factors did apply, the factors favor joinder here. As an initial matter,
`
`Petitioner could not have joined the Meta proceedings previously because those pe-
`
`titions were filed after Petitioner’s one-year statutory bar under 35 U.S.C. § 315(b).
`
`While Petitioner previously filed “me-too” petitions seeking to join petitions filed
`
`by Google LLC in IPR2022-01074 and IPR2022-01075 (the “Google petitions”),
`
`those petitions were conditioned upon institution of the Google proceedings, which
`
`
`
`2
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`was denied. See Paper 5, at 1, IPR2022-01180, IPR2022-01181. The Board ac-
`
`cordingly denied Petitioner’s conditional petitions and joinder requests based on
`
`denial of the Google petitions. Paper 11, at 2-3, IPR2022-01180, IPR2022-01181.
`
`Petitioner has therefore never received an individual merits consideration before
`
`the Board on the ’721 patent. There are also no “road-mapping” concerns here be-
`
`cause the Meta petitions Petitioner seeks to join were filed only weeks after the
`
`Google petitions and could not have benefitted from the subsequent briefing and
`
`institution decision. Moreover, Petitioner has stipulated before and stipulates again
`
`under Sotera that Petitioner will not pursue any grounds raised, or that reasonably
`
`could have been raised, in these proceedings in the district court action if the Peti-
`
`tions are instituted. Institution and joinder of the Petitions is therefore appropriate.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`VoIP-Pal.com, Inc. (“Patent Owner”) purportedly owns and asserts the ’721
`
`patent in the following district court actions:
`
`Case No.
`VoIP-Pal.com, Inc. v. T-
`Mobile USA, Inc., Case No.
`6:21-cv-00674
`VoIP-Pal.com, Inc. v. Meta
`Platforms, Inc., et al., Case
`No. 3:22-cv-03202
`VoIP-Pal.com, Inc. v. Google,
`LLC f/k/a Google Inc., Case
`No. 3:22-cv-03199
`
`
`
`Jurisdiction
`Western District
`of Texas
`
`Status
`Litigation is pending.
`
`Litigation is pending.
`Transferred from Case No.
`6:21-cv-00665 (W.D. Texas).
`Litigation is pending.
`Transferred from Case No.
`6:21-cv-00667 (W.D. Texas).
`
`Northern
`District of
`California
`Northern
`District of
`California
`
`3
`
`
`
`
`
`Case No.
`VoIP-Pal.com, Inc. v.
`Amazon.com, Inc., et al., Case
`No. 6:21-cv-00668
`VoIP-Pal.com, Inc. v. Apple
`Inc., Case No. 6:21-cv-00670
`VoIP-Pal.com, Inc. v. AT&T
`Corp., et al., Case No. 6:21-
`cv-00671
`VoIP-Pal.com, Inc. v. Verizon
`Communications Inc., et al.,
`Case No. 6:21-cv-00672
`VoIP-Pal.com, Inc. v.
`Samsung Electronics Co.,
`Ltd., et al., Case No. 6:21-cv-
`01246
`VoIP-Pal.com, Inc. v. Huawei
`Technologies Co. Ltd. et al.,
`Case No. 3:23-cv-00151
`AT&T Corp., et al. v. VoIP-
`Pal.com, Inc., Case No. 3:21-
`cv-05078
`Apple Inc. v. VoIP-Pal.com,
`Inc., Case No. 3:21-cv-05110
`
`Cellco Partnership d/b/a
`Verizon Wireless Inc., et al. v.
`VoIP-Pal.com, Inc., Case No.
`3:21-cv-05275
`Twitter, Inc. v. VoIP-Pal.com,
`Inc., Case No. 3:21-cv-09773
`
`Jurisdiction
`Western District
`of Texas
`
`Western District
`of Texas
`Western District
`of Texas
`
`Western District
`of Texas
`
`Western District
`of Texas
`
`Northern
`District of
`Texas
`Northern
`District of
`California
`Northern
`District of
`California
`Northern
`District of
`California
`
`Northern
`District of
`California
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`Status
`Litigation is pending.
`
`Litigation was terminated.
`
`Litigation was terminated.
`
`Litigation is pending.
`
`Litigation is pending.
`Transferred from Austin
`division, formerly Case No.
`1:21-cv-01084.
`Litigation is pending.
`Transferred from Case No.
`6:21-cv-01085 (W.D. Tex.).
`Litigation was terminated.
`
`Litigation was terminated.
`
`Litigation was terminated.
`
`Litigation is pending.
`
`
`The following petitions for inter partes review have been filed to date:
`
`
`
`4
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`Petitioner
`Meta Platforms, Inc.
`f/k/a Facebook, Inc.
`
`Case Nos.
`IPR2022-01178
`IPR2022-01179
`
`Samsung Electronics
`Co., Ltd.
`
`IPR2022-01390
`IPR2022-01391
`
`Google LLC f/k/a
`Google Inc.
`
`IPR2022-01072
`IPR2022-01073
`
`Status
`Petitions filed on June 30, 2022.
`Institution granted on January 31,
`2023. Review is pending.
`Petitions and motions for joinder
`filed on August 23, 2022, and are
`pending.
`Petitions filed on June 3, 2022.
`Institution denied on December 19,
`2022.
`Petitions and joints for joinder filed
`on June 27, 2022. Institution denied
`on December 22, 2022.
`
`IPR2022-01178
`IPR2022-01179
`
`Amazon.com Inc. et
`al. (including
`Petitioner)
`
`The below timeline shows the above sequence of petitions and decisions:
`
`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A.
`
`Legal Standards and Applicable Rules
`
`The Board has discretion to join a properly filed IPR petition to an IPR pro-
`
`ceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v. Network-
`
`
`
`
`
`5
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`1 Sec. Solutions, Inc., IPR2013-00385, Paper 17, at 4-6 (PTAB July 29, 2013).
`
`“The Board will determine whether to grant joinder on a case-by-case basis, taking
`
`into account the particular facts of each case, substantive and procedural issues,
`
`and other considerations.” Dell, IPR2013-00385, Paper 17, at 3. The movant has
`
`the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R.
`
`§§ 42.20(c), 42.122(b). A motion for joinder should:
`
`(1) set forth the 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 discov-
`ery may be simplified.
`
`Dell, IPR2013-00385, Paper 17, at 4.
`
`B.
`
`Joinder with the Instituted Meta Proceedings Is Appropriate
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
`
`12, at 9 (PTAB Aug. 24, 2016) (internal quotations and citations omitted). Here,
`
`joinder with the Meta proceedings is appropriate because the present Petitions in-
`
`troduce identical arguments and the same grounds raised in the Meta proceedings
`
`(i.e., they contain the same grounds, based on the same prior art combinations and
`
`supporting evidence, against the same claims) and the motion is timely filed. Be-
`
`
`
`6
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`cause the Petitions present identical arguments and the same grounds, good cause
`
`exists for joining these proceedings with the Meta proceedings so that the Board,
`
`consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and
`
`inexpensive resolution” of the issues raised.
`
`C. No New Grounds of Unpatentability Are Asserted in the Petitions
`
`Petitioner copied the substance of Meta’s petitions and relies on the same
`
`accompanying declaration. There are therefore no new grounds of unpatentability.
`
`Petitioner seeks only to join the proceeding as instituted and does not seek to
`
`broaden or otherwise alter the scope of the Meta proceedings.
`
`D.
`
`Joinder Will Have No Impact on the Meta Proceedings Trial Schedules
`
`Because the Petitions are substantively identical to Meta’s petitions and rely
`
`on the same declaration, Patent Owner should not require any discovery from Peti-
`
`tioner. There are no new issues for the Board to address, and Patent Owner will
`
`not be required to present any additional responses or arguments. Petitioner further
`
`agrees to the trial schedule already entered in the Meta proceedings. See Paper 11,
`
`IPR2022-01234, IPR2022-01235. The next scheduled due date (DUE DATE 1) is
`
`Patent Owner’s Response to the Petition, and that deadline will not be delayed or
`
`otherwise negatively impacted because the issues presented, even if the Petitions
`
`are instituted and joined after one or more due dates.
`
`Joinder will not therefore unduly burden other otherwise have any impact on
`
`
`
`7
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`the trial schedule for the Meta proceedings. See LG, IPR2015-01353, Paper 11, at
`
`6 (granting joinder where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR]”).
`
`E. Agreed Procedures to Simplify Briefing and Discovery
`
`Petitioner agrees to assume an “understudy” role, which will simplify brief-
`
`ing and discovery. Specifically, Petitioner agrees, upon joining the Meta proceed-
`
`ings, that the following conditions, as previously approved by the Board in similar
`
`circumstances, shall apply so long as Meta remains an active party:
`
`1) all filings by Petitioner in the joined proceedings will be consolidated
`with Meta’s filings, unless a filing concerns issues solely involving
`Petitioner (none of which are currently anticipated after joinder);
`2) Petitioner shall not be permitted to raise any new grounds not already
`instituted by the Board in the Meta proceedings, or introduce any
`argument or discovery not already introduced by Meta;
`3) Petitioner shall be bound by any agreement between Patent Owner and
`Meta concerning discovery and depositions; and
`4) Petitioner shall not receive any direct, cross examination, or redirect time
`at deposition beyond that permitted under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and Meta.
`
`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper 38, at 5
`
`(PTAB Apr. 10, 2015). In short, Petitioner will not assume an active role.
`
`Because Petitioner would adopt an “understudy” role, the parties can comply
`
`with the ordered trial schedules without requiring any duplicative efforts by the
`
`
`
`8
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`Board or the Patent Owner. These steps minimize the possibility of any
`
`complication or delay from joinder. See LG, IPR2015-01353, Paper 11, at 6-7.
`
`Petitioner is further willing to agree to any other reasonable conditions the Board
`
`deems necessary.
`
`IV. GENERAL PLASTIC DOES NOT APPLY
`
`The discretionary denial factors outlined by General Plastic are not relevant
`
`“where a different petitioner files a ‘me-too’ or ‘copycat’ petition in conjunction
`
`with a timely motion to join.” See, e.g., Celltrion, IPR2018-01019, Paper 11, at 9-
`
`11. Petitioner has not made any changes to the substantive positions advanced in
`
`the Meta proceedings. Rather, Petitioner merely seeks to ensure that the Meta
`
`proceedings are not prematurely terminated based on opportunistic settlement by
`
`Patent Owner with fewer than all parties against which it has asserted the ’721
`
`patent. As such, Petitioner respectfully submits that General Plastic does not
`
`apply here. See also id. at 10-11 (finding petitioner’s “copycat” petition and
`
`motion to join an instituted IPR “effectively obviate[] any concerns of serial
`
`harassment and unnecessary expenditure of resources” even though petitioner
`
`“previously filed two petitions directed to the same claims of the same patent”).
`
`But if the Board does analyze the General Plastic factors, those factors
`
`weigh in favor of instituting the present petitions and granting this motion. See
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
`
`
`
`9
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`Paper 19, at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).
`
`The first factor is whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent. Petitioner previously filed two “me
`
`too” petitions directed to an overlapping but not identical set of claims (the
`
`challenged claims spanned two petitions, which was necessary in view of the
`
`number of claims asserted in the district court action then and now). See Paper 1,
`
`IPR2022-01180; Paper 1, IPR2022-01181. The present “me too” Petitions
`
`challenge a similar but non-identical set of claims, however, Petitioner stipulated
`
`before and stipulates again that if the Petitions are instituted, Petitioner will not
`
`pursue the grounds raised, or that reasonably could have been raised, in these
`
`proceedings. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at
`
`18-19 (PTAB Dec. 1, 2020) (precedential). Moreover, Petitioner did not request
`
`nor receive any individual consideration of or decision on the merits of its prior
`
`petitions, which were conditioned on institution of the Google petitions. See
`
`Code200, UAB et al. v. Bright Data Ltd., IPR2022-00861, -00862, Paper 18, at 4-5
`
`(PTAB Aug. 23, 2022) (highlighting the importance of “allowing [a petitioner] the
`
`opportunity to pursue a decision on the merits”) (initiating sua sponte Director
`
`review to clarify the application of General Plastic). This factor favors institution.
`
`The second factor is whether at the time of filing the first petition the
`
`petitioner knew or should have known of the prior art asserted in the second
`
`
`
`10
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`petition. This factor does not apply here. Petitioner’s petitions were all “copycat”
`
`petitions; Petitioner had no involvement in selecting the prior art presented in
`
`either the Google petitions or the Meta petitions or opportunity to join those
`
`petitions. Moreover, the Meta petitions were filed shortly after Petitioner’s one-
`
`year statutory bar for filing a petition under 35 U.S.C. § 315(b), so Petitioner could
`
`not have sought to join those petitions at any time prior to institution. In addition,
`
`the Meta petitions were filed long before the Board’s institution decision on the
`
`Google petitions, and Petitioner has not sought to substantively add to or change
`
`any of the grounds for review in the Meta proceedings, so none of the potential
`
`“road-mapping” concerns this factor is intended to address apply here either. See
`
`Code200, IPR2022-00861, -00862, Paper 18, at 5 (“[R]oad-mapping’ concerns are
`
`minimized when, as in this case, a petitioner files a later petition that raises
`
`unpatentability challenges substantially overlapping with those in the previously-
`
`filed petition and the later petition is not refined based on lessons learned from
`
`later developments.”). The Petitions could not be and were not “refined based on
`
`lessons learned from later developments” in the Google proceedings. This factor is
`
`therefore neutral, if not inapplicable.
`
`The third factor is whether at the time of filing the subsequent petition, the
`
`petitioner already received the patent owner’s preliminary response to the first
`
`petition or the Board’s decision on whether to institute review in the first petition.
`
`
`
`11
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`The sequence of events (timeline above) demonstrates that Petitioner now moves
`
`to join identical Meta petitions that were filed long before Patent Owner filed its
`
`preliminary response to the Google petitions and even longer before the Board’s
`
`institution decision. In addition, because the present Petitions are essentially
`
`copies of the Meta petitions and submitted with a motion for joinder stating that
`
`Petitioner will serve an understudy role, the Petitions cannot be an attempt to
`
`harass the Patent Owner or otherwise engage in the type of serial, tactical filings
`
`this factor is intended to address. Thus, this factor weighs in favor of joinder.
`
`The fourth and fifth factors are the length of time elapsed between the time
`
`the petitioner learned of the prior art and filed the second petition and whether the
`
`petitioner provides adequate explanation for the time elapsed between the petitions.
`
`Petitioner filed the Petitions and joinder motion within one month of institution of
`
`the Meta proceedings—within the time period specifically allowed under 35
`
`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b). Petitioner was unable to file the
`
`Petitions and move to join the Meta proceedings until institution because it was
`
`time-barred under 35 U.S.C. § 315(b). Petitioner has also agreed that it will adhere
`
`to the trial schedules in the Meta proceedings, so joinder will not delay the
`
`proceedings. Where, as here, Petitioner will be taking an understudy role, the
`
`fourth and fifth factors are of limited relevance, but to the extent they are relevant,
`
`they favor joinder. See Code200, IPR2022-00861, -00862, Paper 18, at 6.
`
`
`
`12
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`The sixth factor is the finite resources of the Board. Allowing Petitioner’s
`
`joinder in an understudy role will not impact the Board’s resources beyond those
`
`resources the Board dedicates to the instant joinder motion. Id. at 6 (“[T]he
`
`Board’s mission to improve patent quality and restore confidence in the
`
`presumption of validity that comes with issued patents outweighs the impact on
`
`Board resources needed to evaluate the merits of a petition.”) (internal quotation
`
`omitted). This factor favors institution.
`
`The seventh factor is the Board’s requirement under 35 U.S.C. § 316(a)(11)
`
`to issue a final determination not later than one year after the date on which the
`
`Director notices institution of review. As explained above, joinder will not impact
`
`the trial schedules so the Petitions will not delay the proceedings. Accordingly,
`
`this factor also weighs in favor of institution.
`
`Thus, none of the General Plastic factors weighs against joinder.
`
`V. DISCRETIONARY DENIAL IS NOT APPROPRIATE UNDER
`FINTIV EITHER
`
`Institution is also appropriate under the six-factor test set forth in Apple Inc.
`
`v. Fintiv, Inc., IPR2020-00019, Paper 11, at 3 (PTAB Mar. 20, 2020), as further
`
`clarified by Director Vidal’s June 21, 2022 interim procedure for discretionary
`
`denials
`
`(the
`
`“Memorandum”)
`
`(available
`
`at
`
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_d
`
`enials_aia_parallel_district_court_litigation_memo_20220621_.pdf).
`13
`
`
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`Turning to the fourth and dispositive factor here (overlap between issues),
`
`Petitioner stipulates that, if the IPRs are instituted, Petitioner will not pursue the
`
`grounds raised, or that reasonably could have been raised, in these proceedings.
`
`Sotera, IPR2020-01019, Paper 12, at 18-19. There is therefore no overlap with
`
`arguments made in the district court proceedings. This stipulation “mitigates
`
`concerns of potentially conflicting decisions and duplicative efforts between the
`
`district court and the PTAB,” and the Director has clarified that the PTAB will not
`
`discretionarily deny institution where, as here, Petitioner has made a Sotera
`
`stipulation. Memorandum, 7-8.
`
`Discretionary denial under the Fintiv factors is therefore not appropriate.
`
`However, turning briefly to the additional factors for the sake of completeness, for
`
`the first factor (stay), Petitioner is requesting institution on all asserted claims in
`
`the related action and timely sought leave to join the Meta proceedings within one
`
`month of institution. The relevant facts therefore favor a stay. See Fintiv,
`
`IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative); HP v.
`
`Neodron, IPR2020-00459, Paper 17 at 35-36 (PTAB Sept. 14, 2020).
`
`The second (proximity of trial dates) and third (investment in parallel
`
`proceedings) factors are at least neutral. While the Texas court set a tentative trial
`
`date of July 17, 2023 for the Amazon trial, no date has been set for Petitioner’s
`
`trial. Indeed, the court has indicated that it will hold trials in order of case number,
`
`
`
`14
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`meaning that both the Amazon and Verizon trials will need to occur before it will
`
`be Petitioner’s turn. Petitioner has also committed that it will not raise any
`
`invalidity arguments that could have been raised in these proceedings, such that the
`
`district court action will have no impact on the grounds under review here.
`
`While the fifth factor (parties) may weigh slightly in favor of denial because
`
`the parties are the same as one of the pending district court actions, under the
`
`“holistic view” of whether integrity of the system and efficiency are best served,
`
`the factors here indicate that institution is proper. Samsung Elecs. Co. v.
`
`Dynamics, IPR2020-00505, Paper 11 at 15 (PTAB Aug. 12, 2020).
`
`The sixth factor (other circumstances) also weighs in favor of institution
`
`because of the strength of the petition, which has already been confirmed through
`
`institution of the Meta proceedings: “[T]he PTAB will not rely on the Fintiv
`
`factors to discretionarily deny institution … where a petition presents compelling
`
`evidence of unpatentability.” Memorandum, 2; see also Thryv, Inc. v. Click-To-
`
`Call Techs., 140 S. Ct. 1367, 1374 (2020).
`
`VI. CONCLUSION
`
`Joinder will not affect the substance, procedure, or scheduling of the Meta
`
`proceedings but will simplify the issues and promote efficiency, justice, and speed.
`
`For the foregoing reasons, Petitioner respectfully requests inter partes review of
`
`U.S. Patent No. 10,880,721 and joinder with IPR2022-01234 and IPR2022-01235.
`
`
`
`15
`
`
`
`
`
`
`
`
`
`Dated: February 28, 2023
`
`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, Colorado 80202
`Phone: 303-291-2300
`Fax: 303-291-2400
`
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`
`
`Respectfully submitted,
`
`/Kourtney Mueller Merrill/
`Lead Counsel
`Kourtney Mueller Merrill, Reg. No. 58,195
`
`Backup Counsel
`Amanda Tessar, Reg. No. 53,683
`
`Counsel for Petitioner
`
`
`
`
`16
`
`
`
`
`
`
`
`Motion for Joinder
`IPR2023-00640, IPR2023-00641
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 28, 2023, I caused a true and correct copy
`
`of the foregoing PETITIONER’S MOTION FOR JOINDER to be served via
`
`USPS Priority Mail Express on the Patent Owner at the following correspondence
`
`address of record as listed on PAIR:
`
`THORPE NORTH & WESTERN, LLP.
`P.O. Box 1219
`SANDY UT 84091-1219
`
`A courtesy copy was also sent via electronic mail to the Patent Owner’s
`
`
`
`litigation counsel at the following email addresses:
`
`Lewis E. Hudnell, III, lewis@hudnellaw.com
`Nicolas S. Gikkas, nick@hudnelllaw.com
`Hudnell Law Group P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`
`Respectfully submitted,
`
`/Kourtney Mueller Merrill/
`Lead Counsel
`Kourtney Mueller Merrill, Reg. No. 58,195
`
`Backup Counsel
`Amanda Tessar, Reg. No. 53,683
`
`Counsel for Petitioner
`
`
`
`
`
`Dated: February 28, 2023
`
`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, Colorado 80202
`Phone: 303-291-2300
`Fax: 303-291-2400
`
`
`
`
`
`
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