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`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 NOTICE OF MULTIPLE PETITIONS
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`
`
`
`
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`
`
`
`I.
`
`INTRODUCTION
`
`Notice of Multiple Petitions
`IPR2023-00640, IPR2023-00641
`
`Petitioner is filing two petitions that challenge non-overlapping sets of
`
`claims in U.S. Patent No. 10,880,721 (“the ’721 Patent”). The “patent owner has
`
`asserted a large number of claims in litigation,” including claims that are distinct
`
`from one another, that collectively comprise several thousand words of claim lan-
`
`guage. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (No-
`
`vember 2019) at 59. More than one petition is therefore necessary to sufficiently
`
`address the challenged claims, and the Board should exercise its discretion to insti-
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`tute both petitions.1
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner requests that the Board consider the petitions in the following or-
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`der, although, for the reasons explained below, the Board’s analysis would not be
`
`complete without considering both petitions:
`
`
`To ease the Board’s review, this Notice of Multiple Petitions is substantively
`1
`the same as the Notice Regarding Multiple Petitions filed in Meta Platforms, Inc.
`v. VoIP-Pal, Inc., IPR2022-01234 and IPR2022-01235 (“the Meta proceedings”),
`filed on June 30, 2022, for U.S. Patent No. 10,880,721.
`
`
`
`2
`
`
`
`
`
`Notice of Multiple Petitions
`IPR2023-00640, IPR2023-00641
`
`Rank
`A
`
`B
`
`Challenged Claims
`Petition
`IPR2023-00641 51-52, 57, 60, 63, 65, 67,
`73, 77, 103-104, 108-110,
`124, 130, 133, and 138-
`139
`
`IPR2023-00640 1, 2, 6, 9, 14-16. 20, 25,
`34, 38-39, 43, 45-46, 49-
`50, 135-136, and 140
`
`Primary References
`Buckley (EX1005)
`Bates (EX1009)
`Ejzak (EX1007)
`
`Buckley (EX1005)
`Bates (EX1009)
`
`
`III. DIFFERENCES BETWEEN THE PETITIONS AND WHY THEY
`SHOULD BOTH BE INSTITUTED
`
`The two petitions challenge 39 claims, 29 of which were originally assert-
`
`ed by Patent Owner against Petitioner in the parallel District Court litigation,
`
`VoIP-Pal.com, Inc. v. T-Mobile USA, Inc., Case No. 6-21-cv-00674 (W.D. Tex.).
`
`Those asserted claims collectively comprise well over 2,700 words, making it
`
`practically infeasible to substantively analyze all of them in a single petition,
`
`given the word limit. Indeed, the narrowed set of 16 claims currently asserted
`
`against Petitioner comprise more than 2,000 words alone. Moreover, Petitioner
`
`files a “me too” petition here, committing Petitioner to challenge the same claims
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`on the same grounds as the Meta petitions.
`
`There are also differences between the claims that warrant grouping them
`
`separately for analysis. In particular, independent claims 1, 20, 38, and 50 are
`
`
`
`3
`
`
`
`
`
`Notice of Multiple Petitions
`IPR2023-00640, IPR2023-00641
`
`claimed from the perspective of the mobile device (telephone), while independ-
`
`ent claims 51, 77, 103, and 130 are claimed from the perspective of the server.
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`As a result, the claims in the two claim sets recite some different language and
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`claim elements. For example, the server-side claims recite elements regarding
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`the specifics to “produce an access code” (cls. 51, 77, 103) that the telephone-
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`side claims do not.2
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`Given the number of asserted claims, their length, and their different group-
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`ings, Petitioner reasonably divided its challenge into two petitions: (1) IPR2023-
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`00641 challenging the server-side claims (ranked A above), and (2) IPR2023-
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`00640 challenging the telephone-side claims (ranked B above). There is no overlap
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`in the challenged claims across the two petitions. The Board has instituted multiple
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`petitions in similar situations, and should do so here. See, e.g., Microsoft Corp. v.
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`Synkloud Tech., LLC, IPR2020-01269, Paper 9 at 7–9 (PTAB Apr. 7, 2021) (insti-
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`tuting two petitions for IPR where “the length of the claims, and the difference in
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`scope of [the independent claims], warranted the filing of two petitions”); Adobe
`
`
`During the prosecution of the ’721 Patent’s parent application, the applicant
`2
`bucketed the telephone and server claims separately, recognizing the two claims
`sets are logically distinct. Compare IPR2022-01231, EX1002, 1840 (“Independent
`Claims 1, 12, 22, and 321 all recite a common feature….”), with id., 1843 (“Re-
`garding independent Claims 33, 52, 71 and 90, these claims all recite in various
`forms the following exemplary language….”).
`
`
`
`4
`
`
`
`
`
`Notice of Multiple Petitions
`IPR2023-00640, IPR2023-00641
`
`Inc. v. Synkloud Tech., LLC, IPR2020-01392, Paper 8 at 9–10 (PTAB Mar. 11,
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`2021) (similar).
`
`IV. CONCLUSION
`
`
`
`For the reasons given above and in the concurrently-filed Petitions and Mo-
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`tions for Joinder, the Board should institute both Petitions.
`
`
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`
`
`Dated: February 28, 2023
`
`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, Colorado 80202
`Phone: 303-291-2300
`Fax: 303-291-2400
`
`
`
`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
`
`
`
`5
`
`
`
`
`
`
`
`Notice of Multiple Petitions
`IPR2023-00640, IPR2023-00641
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 28, 2023, I caused a true and correct copy
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`of the foregoing PETITIONER’S MOTION OF MULTIPLE PETITIONS to
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`be served via USPS Priority Mail Express on the Patent Owner at the following
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`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
`
`
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`litigation counsel at the following email addresses:
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`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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