Trials
`Chandran Iyer; IPR39843-0148IP1; ptabinbound@fr.com; axfptab@fr.com; jjm@fr.com; Hyun Jin In;
`jason.s.charkow@gmail.com; richard.juang@gmail.com; Ron Daignault; DoDotsLit; Adam Seitz; Kevin Rongish;
`Christina Canino; Paul Hart
`Trials
`RE: Conference Call re Stay of IPR2023-00937, -00938, and -00939, and Joinder in IPR2024-00143, -00144, and
`-00145
`Friday, November 24, 2023 1:32:06 PM
`image001.png
`
`From:
`To:
`
`Cc:
`Subject:
`
`Date:
`Attachments:
`
`Counsel,
`
`Patent Owner DoDots Licensing Solutions LLC’s request for the Board to stay its decision on instituting
`Apple’s IPR2023-00937, -00938, and -00939 in order to conduct “discovery of the facts underlying
`[alleged] coordinated and joint relationship between Apple and Samsung” is denied. We have a statutory
`obligation to issue a timely decision. See 35 U.S.C. 314(b). In the case of IPR2023-00937, for example, a
`decision on institution is due December 18, 2023. The request would delay the decision in abrogation of
`our statutory obligation. Further explanation for denying the request will be provided in a forthcoming
`Order.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Chandran Iyer <cbiyer@daignaultiyer.com>
`Sent: Tuesday, November 21, 2023 6:30 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: IPR39843-0148IP1 <IPR39843-0148IP1@fr.com>; ptabinbound@fr.com; axfptab@fr.com;
`jjm@fr.com; Hyun Jin In <in@fr.com>; jason.s.charkow@gmail.com; richard.juang@gmail.com; Ron
`Daignault <rdaignault@daignaultiyer.com>; DoDotsLit <DoDotsLit@daignaultiyer.com>; Adam Seitz
`<adam.seitz@eriseip.com>; Kevin Rongish <kevin.rongish@eriseip.com>; Christina Canino
`<christina.canino@eriseip.com>; Paul Hart <paul.hart@eriseip.com>
`Subject: Conference Call re Stay of IPR2023-00937, -00938, and -00939, and Joinder in IPR2024-
`00143, -00144, and -00145
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`We represent Patent Owner DoDots Licensing Solutions LLC (DoDots). DoDots sued
`Samsung Electronics Co., LTD (Samsung) and Apple Inc. (Apple) in the Western District of
`IPR2023-00937, -00938, -00939
`Ex. 3002
`
`

`

`Texas, case nos. 6:22-cv-00535-ADA-DTG and WDTX-6-22-cv-00533-ADA-DTG. Samsung
`and Apple were served with the complaints on or about June 3, 2022, and June 1, 2022,
`respectively. Apple and Samsung have made joint filings in the district court litigation and
`served joint preliminary invalidity contentions on February 01, 2023.
`
`Beginning on February 22, 2023 and continuing into March, Samsung subsequently filed
`IPR2023-00621, -00701, and -00756 based on prior art asserted in the joint preliminary
`invalidity conventions. Three months after Samsung’s filing, Apple then filed IPR2023-00937,
`-00938, and -00939, also using prior art references asserted from the same joint preliminary
`infringement contentions. In both the Samsung and Apple petitions, they seek to invalidate the
`exact same claims in the same patents. Because of their coordinated joint filings and actions in
`the district court litigation, Apple and Samsung were obviously well aware of the prior art
`references used in their joint invalidity contentions and also asserted in the IPR petitions.
`Further, Apple and Samsung filed joint claim construction briefs in the district court litigation.
`Indeed, it appears that Apple and Samsung have a joint defense agreement based on their
`coordinated action in the district court and in the IPRs.
`
`The Board instituted Samsung IPRs 2023-00621, -00701, and -00756. On November 13, 2023
`and November 17, 2023, Apple filed copy-cat petitions IPR 2024-0014, -00144, and -00145
`more than one year after the date of service of complaints and a request for joinder in
`Samsung’s IPR2023-00621, -00701, and -00756 under 37 C.F.R §42.122. Based on Apple’s
`and Samsung’s coordinated actions and joint submissions in the district court litigation, and
`now Apple’s joinder motions under 37 C.F.R §42.122, DoDots believes there are grounds for
`denying institution of Apple’s IPRs 2023-00937, -00938, and -00939, which are before the
`Board. Specifically, Apple’s IPR petitions should be dismissed under 37 C.F.R § 314(a) and
`the precedential decisions, Valve Corp. v. Elec. Scripting Prods., Inc., (IPR2019-00064 et al.,
`Paper 10 (May 1, 2019)) and General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`(IPR2016-01357 et al., Paper 19 (September 6, 2017))
`
`In particular, DoDots submits that Apple’s and Samsung’s joint and coordinated actions in the
`district court and IPR proceedings, and now with Apple’s joinder motion, raise grounds for
`denying institution under Section 314(a), and issues regarding (i) real party in interest and/or
`privity, (ii) the serial nature of all nine IPRs against the same claims in the same patents, (iii)
`the Board’s resources, (iv) the timeliness of Apple’s joinder motion, and (v) potential abuse of
`the IPR process.
`Accordingly, we respectfully request the Board to stay its decision on instituting Apple’s IPR
`2023-00937, -00938, and -00939 and schedule a teleconference with the parties regarding
`discovery of the facts underlying the 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 institution
`under Section 314(a) in accordance with General Plastic and Valve, and the propriety and
`timeliness of Apple’s copy-cat petitions and joinder motions.
`
`After Apple filed its joinder motions, it did not request a conference call with DoDots,
`Samsung, and the Board under the Board’s Practice Guide within five business days. DoDots,
`therefore, submits this email so that it can be heard before the Board’s impending decision on
`institution of IPR 2023-00937, -00938, and -00939. But as indicated in our prior
`communication to the Board referenced below, should the Board order the parties to meet and
`confer before raising the above-described issues, of course, DoDots will do so. We look
`forward to the Board’s instructions as to how it would like to proceed.
`
`

`

`Respectfully,
`Chandran B. Iyer
`
`cc: Hyun Jin In (Samsung's Counsel, IPR2023-00621, -00701, and -00756)
`
`
`Chandran B. Iyer
`Partner
`
`Daignault Iyer LLP
`202.330.1666
`cbiyer@daignaultiyer.com
`daignaultiyer.com
`
`
`
`
`
`From: Chandran Iyer <cbiyer@daignaultiyer.com>
`Sent: Monday, November 20, 2023 1:32 PM
`To: Trials <trials@uspto.gov>
`Cc: IPR39843-0148IP1 <IPR39843-0148IP1@fr.com>; ptabinbound@fr.com <ptabinbound@fr.com>;
`axfptab@fr.com <axfptab@fr.com>; jjm@fr.com <jjm@fr.com>; Hyun Jin In <in@fr.com>;
`jason.s.charkow@gmail.com <jason.s.charkow@gmail.com>; richard.juang@gmail.com
`<richard.juang@gmail.com>; Ron Daignault <rdaignault@daignaultiyer.com>; DoDotsLit
`<DoDotsLit@daignaultiyer.com>; Adam Seitz <adam.seitz@eriseip.com>; Kevin Rongish
`<kevin.rongish@eriseip.com>; Christina Canino <christina.canino@eriseip.com>; Paul Hart
`<paul.hart@eriseip.com>
`Subject: Re: Conference Call re Contingent Joinder in IPR2024-00143, -00144, -00145
`
`
`To the Board,
`
`
`
`We represent DoDots Inc. in IPR 2024-0014, -00144, and -00145. In accordance with the
`Board’s Trial Rules and Practice Guide, the Board "encourages the use of conference calls to
`raise and resolve issues in an expedited manner." See Metrics, Inc. v. Senju Pharmaceutical Co.,
`Ltd., Case Nos. IPR2014-01041 and -01043 (PTAB, Sept. 9, 2014) (Obermann, APJ). Moreover,
`the Trial Guide notes that "[a] party who files a motion for joinder should arrange a conference call
`with the panel, petitioner, and patent owner of the first proceeding within five business days of
`filing the motion" to discuss "timely manag[ing] the proceedings." Apple did not reach out to
`DoDots Inc. before sending its below request to the Board.
`
`
`
`

`

`Accordingly, we request the Board to 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 IPR 2024-0014, -00144, and -00145. The parties will contact the
`Board once we have conducted the meet-and-confer.
`
`
`
`Respectfully,
`
`
`
`Chandran B. Iyer
`Partner
`
`Daignault Iyer LLP
`202.330.1666
`cbiyer@daignaultiyer.com
`daignaultiyer.com
`
`
`On Nov 17, 2023, at 5:43 PM, Paul Hart <paul.hart@eriseip.com> wrote:
`
`To the Board,
`
` I
`
` represent Petitioner Apple Inc. in IPR2024-00143, -00144, and -00145, which were
`recently filed and accompanied by contingent joinder motions ("Contingent Joinder
`Petitions”). The 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 institution: IPR2023-00937, -00938, and -00939 (“Original
`Apple IPRs”).
`
`The Consolidated Trial Practice Guide notes that “[a] party who files a motion for
`joinder should arrange a conference call with the panel, petitioner, and patent owner
`of the first proceeding within five business days of filing the motion” to discuss "timely
`manag[ing] the proceedings.”
`
`Because Apple’s joinder motions are contingent on the Board denying institution in the
`Original Apple IPRs, Apple proposes tabling the issue of a joinder-related conference
`call until institution decisions issue in the Original Apple IPRs. If the Board denies
`institution in the Original Apple IPRs, Apple will send an email to the Board, requesting
`a conference call to discuss timely managing the Samsung IPRs in the event Apple is
`joined.
`
`If the Board would instead like to schedule a call before institution decisions issue in
`
`

`

`the Original Apple IPRs, counsel for Apple Inc. will make itself available at the Board’s
`convenience.
`
`Respectfully,
`
`717 17th St.
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 1400
`Denver, CO 80202
`(main) 913-777-5600
`(direct) 720-689-5441
`(fax) 913-777-5601
`paul.hart@eriseip.com
`www.eriseip.com
`
`
`
`
`
`
`
`
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