Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 15
`Date: November 29, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`__________
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1) 1
`
`___________
`
`Before HUBERT C. LORIN, GRACE KARAFFA OBERMANN,
`AMBER L. HAGY, and SHARON FENICK, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We exercise our discretion to issue one order to be entered in each case.
`The parties are not authorized to use a caption identifying multiple cases.
`This is not an expanded panel. The panel for IPR2023-00937 is Judges
`Lorin, Obermann, and Fenick. The panel for IPR2023-00938 and -00939 is
`Judges Lorin, Hagy, and Fenick.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 15
`Date: November 29, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`__________
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1) 1
`
`___________
`
`Before HUBERT C. LORIN, GRACE KARAFFA OBERMANN,
`AMBER L. HAGY, and SHARON FENICK, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We exercise our discretion to issue one order to be entered in each case.
`The parties are not authorized to use a caption identifying multiple cases.
`This is not an expanded panel. The panel for IPR2023-00937 is Judges
`Lorin, Obermann, and Fenick. The panel for IPR2023-00938 and -00939 is
`Judges Lorin, Hagy, and Fenick.
`
`
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1)
`
`
`
`On November 17, 2023, Petitioner Apple Inc. (“Apple”) notified the
`
`Board by email that it had filed contingent joinder motions in IPR2024-
`
`00143, -00144, and -00145. According to Petitioner Apple, “[t]he
`
`contingent joinder motions seek to join recently instituted IPR proceedings
`
`IPR2023-00621, -00756, and -00701 filed by Samsung (“Samsung IPRs”) if,
`
`and only if, the Board denies institution in the following proceedings filed
`
`by Apple, which have not yet reached a decision on institution: IPR2023-
`
`00937, -00938, and -00939 (“Original Apple IPRs”). See Ex. 3002, 4–5
`
`(Original Apple IPRs); Ex. 3001, 4–5 (Samsung IPRs).
`
`We did not respond, and do not now respond, to said notification
`
`because IPR2024-00143, -00144, and -00145 have not yet been paneled.
`
`On November 20, 2023, by email, Patent Owner DoDots Licensing
`
`Solutions LLC (“DoDots”) “request[ed] the Board . . . disregard Apple’s
`
`email request and order Apple to meet and confer with DoDots and original
`
`petitioner Samsung about Apple’s proposed copy-cat petition and related
`
`issues raised by IPR2024-00143, -00144, and -00145.” See Ex. 3002, 3–4
`
`(Original Apple IPRs); Ex. 3001, 3–4 (Samsung IPRs).
`
`Again, we did not respond, and do not now respond, to said request
`
`because IPR2024-00143, -00144, and -00145 have not yet been paneled.
`
`On November 21, 2023, by email, DoDots
`
`request[ed] the Board . . . stay its decision on instituting [the Original
`Apple IPRs] and schedule a teleconference with the parties regarding
`discovery of the facts underlying [a] coordinated and joint relationship
`between Apple and Samsung in the district court and the IPR
`proceedings, including real party in interest and privity, and potential
`abuse of the IPR process, and briefing the grounds for denying
`
`2
`
`
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1)
`
`
`
`institution under Section 314(a) in accordance with General Plastic2
`and Valve3, and the propriety and timeliness of Apple’s copy-cat
`petitions and joinder motions.
`
`See Ex. 3002, 1–3 (Original Apple IPRs); Ex. 3001, 1–3 (Samsung IPRs).
`
`
`
`The Board responded on November 24, 2023, with an email indicating
`
`that, inter alia, “[t]he request would delay the decision in abrogation of our
`
`statutory obligation” and for that reason denied the request. See Ex. 3002,
`
`1–3 (Original Apple IPRs); Ex. 3001, 1–3 (Samsung IPRs).
`
`
`
`We maintain our denial of DoDots’ request to stay decisions on
`
`instituting the Original Apple IPRs.
`
`
`
`Our authorizing statute, 35 U.S.C. § 314(b), states that “the Director
`
`shall determine whether to institute an inter partes review . . . within 3
`
`months after . . . (1) receiving a preliminary response . . . .” Emphasis
`
`added. In the case of IPR2023-00937, DoDots’ Preliminary Response was
`
`received on September 18, 2023. Therefore, in the case of IPR2023-00937,
`
`a decision on institution is due December 18, 2023. DoDots’ request to
`
`conduct “discovery of the facts underlying [an alleged] coordinated and joint
`
`relationship between Apple and Samsung” would delay the decision in
`
`IPR2023-00937 past the December 18 due date in abrogation of our
`
`
`2 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`01357, Paper 19 at 17–18 (PTAB Sept. 6, 2017) (precedential).
`3 Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063,
`-00084, Paper 11 (PTAB April 2, 2019) (precedential); Valve Corp. v.
`Electronic Scripting Products, Inc., IPR2019-00064, -00065, -00085, Paper
`10 (PTAB May 1, 2019) (precedential).
`
`3
`
`
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1)
`
`
`
`statutory obligation. A similar difficulty would arise for the institution
`
`decisions for IPR2023-00938 and -00939.
`
`
`
`That being said, we see no reason why “discovery of . . . facts
`
`underlying [an alleged] coordinated and joint relationship between Apple
`
`and Samsung in the district court and the IPR proceedings, including real
`
`party in interest and privity, and potential abuse of the IPR process” cannot
`
`be developed during the trial phase as part of the normal discovery process
`
`and presented in the Patent Owner Responses as part of Patent Owner’s full
`
`responses to the Original Apple IPRs.
`
`
`
`As far as “briefing the grounds for denying institution under Section
`
`314(a) in accordance with General Plastic and Valve” is concerned, given
`
`the short period for rendering decisions on institution in the Original Apple
`
`IPRs, the request for additional briefing at this late date would not be in the
`
`interests of justice. See Rule 42.5(c)(3).
`
`
`
`Finally, as to “the propriety and timeliness of Apple’s copy-cat
`
`petitions and joinder motions,” the petitions in question, and associated
`
`joinder motions, concern IPRs which, as earlier indicated, have not yet been
`
`paneled. We are not in position to address matters involving IPRs on which
`
`we have not been officially paneled.
`
`For the foregoing reasons, it is
`
`ORDERED that Patent Owner’s request that the Board stay its
`
`decisions on instituting the Original Apple IPRs is denied.
`
`
`
`
`
`
`4
`
`
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1)
`
`
`
`
`For PETITIONER:
`
`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Richard Juang
`Chandran B. Iyer
`DAIGNAULT IYER LLP
`jcharkow@daignaultiyer.com
`richard.juang@gmail.com
`cbiyer@daignaultiyer.com
`
`5
`
`
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