`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner
`
`____________________
`
`Patent No. 10,880,721
`____________________
`
`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`INTRODUCTION ........................................................................................... 1
`RANKING ....................................................................................................... 1
`II.
`III. DIFFERENCES BETWEEN THE PETITIONS AND WHY THEY
`SHOULD BOTH BE INSTITUTED ............................................................... 2
`IV. CONCLUSION ................................................................................................ 2
`
`
`
`
`
`i
`
`
`
`U.S. Patent No. 10,880,721
`
`I.
`
`INTRODUCTION
`Petitioner is filing two petitions challenging different claims of U.S. Patent
`
`No. 10,880,721 (“the ’721 patent”), seeking to join the two petitions filed by Meta
`
`Platforms, Inc. (“Meta”) in IPR2022-01234 and IPR2022-01235. “To aid the Board
`
`in determining” why “more than one petition is necessary,” Petitioner provides the
`
`below information. See PTAB Consolidated Trial Practice Guide (“TPG”)
`
`(November 2019) at 59-60.
`
`II.
`
`RANKING
`Petitioner requests that the Board consider the petitions in the following order,
`
`although, for the reasons explained below, the Board’s analysis would not be
`
`complete without considering both petitions:
`
`Rank Petition Challenged Claims
`A
`Seeking
`51-52, 57, 60, 63, 65, 67,
`joinder to
`73, 77, 103-104, 108-
`110, 124, 130, 133, and
`IPR2022-
`138-139
`01235
`
`B
`
`Seeking
`joinder to
`IPR2022-
`01234
`
`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)
`
`Ejzak (EX1007)
`
`1
`
`
`
`U.S. Patent No. 10,880,721
`
`III. DIFFERENCES BETWEEN THE PETITIONS AND WHY THEY
`SHOULD BOTH BE INSTITUTED
`The two petitions challenge 39 claims, 29 of which have been asserted by
`
`Patent Owner against Petitioner in the parallel District Court litigation, VoIP-
`
`Pal.com, Inc. v. Google LLC, Case No. 3:22-cv-03199 (N.D. Cal.). The two
`
`petitions are substantively identical to the two petitions filed by Meta, and the Board
`
`has already determined that both of those petitions justified institution. As Meta
`
`explained when filing its petitions, the numerous claims asserted by Patent Owner
`
`made it practically infeasible to substantively analyze all of them in a single petition.
`
`And all that 35 U.S.C. § 315(c) permits is “join[der] [to an] already-instituted
`
`proceeding as a party,” without “bring[ing] into the proceeding new grounds that
`
`were not already instituted.” Network-1 Techs., Inc. v. Hewlett-Packard Co., 981
`
`F.3d 1015, 1027 (Fed. Cir. 2020). In other words, Google was only permitted to join
`
`the Meta IPR proceedings as they were prepared by Meta and instituted by the Board.
`
`IV. CONCLUSION
`For the reasons given above, the Board should institute both petitions.
`
`Dated: February 28, 2023
`
`Respectfully submitted,
`
`By:/Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
`
`
`
`
`2
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 28, 2023, I caused a true and correct copy of
`
`the foregoing Petitioner’s Notice Regarding Multiple Petitions to be served via
`
`express mail on the Patent Owner at the following correspondence address of record
`
`as listed on Patent Center:
`
`THORPE NORTH & WESTERN, LLP.
`P.O. Box 1219
`SANDY UT 84091-1219
`Customer Number: 20551
`
`A courtesy copy was also sent via electronic mail to the Patent Owner’s
`
`
`
`litigation counsel at the following 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
`T: 650.564.3698
`F: 347.772.3034
`
`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
`
`
`
`
`
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`
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