`
`Filed: June 27, 2023
`
`Filed on behalf of Meta Platforms, Inc.
`By: Lisa Nguyen
`
`David Tennant
`
`Eric E. Lancaster
`
`Daniel Margolis
`
`Grace Wang
`
`Alan Billharz
`
`Colby Davis
`Allen & Overy LLP
`550 High Street
`Palo Alto, CA 94301
`Telephone: 650-388-1724
`Facsimile: 202-683-3999
`Email: AO_Meta_Jawbone@AllenOvery.com
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`META PLATFORMS, INC.,
`Petitioner,
`v.
`JAWBONE INNOVATIONS, LLC,
`Patent Owner.
`____________________________
`IPR2023-01130
`U.S. Patent No. 11,122,357
`____________________________
`MOTION FOR JOINDER TO AND CONSOLIDATION WITH
`RELATED INTER PARTES REVIEW IPR2023-00251
`PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ------------------------------------------------------------------- 1
`I.
`II. STATEMENT OF FACTS --------------------------------------------------------- 2
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ------------------ 3
`A.
`Legal Standard --------------------------------------------------------------- 3
`B.
`Petitioner’s Motion for Joinder is Timely. ------------------------------- 3
`C.
`The Board Should Permit Joinder ----------------------------------------- 3
`1.
`Joinder is Appropriate. ---------------------------------------------- 4
`2.
`Petitioner Proposes No New Grounds of Unpatentability. ------ 5
`3.
`Joinder Will Not Unduly Burden or Negatively Impact the
`Amazon IPR Trial Schedule. --------------------------------------- 5
`How Briefing and Discovery May Be Simplified --------------- 5
`4.
`D. GENERAL PLASTIC IS INAPPLICABLE ------------------------------ 7
`IV. CONCLUSION --------------------------------------------------------------------- 10
`
`-i-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`I.
`
`INTRODUCTION
`Meta Platforms, Inc. (“Petitioner”) respectfully submits this Motion for
`
`Joinder, together with a Petition for Inter Partes Review (“IPR”) of U.S. Patent No.
`
`11,122,357 (“the ’357 Patent”) filed contemporaneously herewith. Pursuant to 35
`
`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner requests institution of this IPR,
`
`and joinder and consolidation with IPR2023-00251 (“the Amazon IPR”). That IPR
`
`presents identical grounds for the challenged claims as Petitioner’s IPRand it was
`
`instituted less than one month ago, on June 1, 2023 (IPR2023-00251, Paper 7).
`
`Joinder here would be consistent with the overarching policy of securing “the
`
`just, speedy, and inexpensive resolution” of every IPR proceeding. 37 C.F.R. §
`
`42.1(b). Petitioner’s Petition and the Amazon petition contain identical grounds for
`
`the challenged claims including the same prior art combinations. Thus, joinder
`
`would neither unduly complicate the Amazon IPR nor delay its schedule.
`
`To streamline discovery and briefing, Petitioner agrees to take an
`
`“understudy” role should this Motion be granted, actively participating substantively
`
`in the Amazon IPR only if Amazon terminates its involvement after joinder.1
`
`
`1 If Amazon terminates its involvement prior to this Motion being granted, then
`Petitioner requests this Motion be withdrawn as moot so that Petitioner’s timely-
`filed Petition may be considered on its merits.
`
`-1-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`
`Because
`
`joinder would promote
`
`judicial efficiency
`
`in determining
`
`patentability without prejudicing Patent Owner, the Board should grant this Motion.
`
`II.
`
`STATEMENT OF FACTS
`
`Patent Owner filed suit against Samsung on May 27, 2021, asserting seven
`
`patents, including the ’357 patent. (Case No. 2:21-cv-00186, E.D. Tex.) Patent
`
`Owner filed suits against Apple and Google on September 23, 2021, and has asserted
`
`nine patents against each of them, including the seven patents asserted against
`
`Samsung. (Case Nos. 6:21-cv-00985 and 6:21-cv-00984, W.D. Tex.) Patent Owner
`
`filed suit against Amazon on Nov. 29, 2021, asserting the same nine patents. (Case
`
`No. 2:21-cv-00435, E.D. Tex., transferred to Case No. 3:22-cv-06727, N.D. Cal.)
`
`Patent Owner filed suit against Petitioner on Feb. 28, 2023, asserting eight of these
`
`same patents including the ’357 patent. (Case No. 6:23-cv-00158, W.D. Tex.) The
`
`patents asserted by Jawbone all relate to microphone arrays and noise filters.
`
`Samsung, Apple, Google, and Amazon filed IPR Petitions against each of the
`
`patents asserted against them. Petitioner is filing a petition asserting identical
`
`grounds for the challenged claims to those previously filed by Amazon against the
`
`’357 patent, and is seeking joinder to Amazon’s IPR.
`
`-2-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Board has the authority to join Petitioner as a party to the Amazon IPR.
`
`35 U.S.C. § 315(c); see also 35 U.S.C. § 315(d) (Board also has the authority to
`
`consolidate proceedings). Whether a request for joinder should be granted is
`
`discretionary. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(PTAB, April 24, 2013).
`
`B.
`
`Petitioner’s Motion for Joinder is Timely.
`
`A petitioner may request joinder “no later than one month after the institution
`
`date” of the original IPR. 37 C.F.R. § 42.122(b). This is the “only timing
`
`requirement for a motion for joinder.” Central Security Group — Nationwide, Inc.
`
`v. Ubiquitous Connectivity, LP, IPR2019-01609, Paper 11, at 8-9 (PTAB Feb. 26,
`
`2020).
`
`This Motion for Joinder is timely. Amazon’s petition was instituted on June
`
`1, 2023, and this motion is being filed less than one month later. Thus, Petitioner is
`
`filing its motion for joinder within the time limit set forth in 37 C.F.R. § 42.122(b).
`
`C. The Board Should Permit Joinder
`
`In deciding whether to exercise its discretion and permit joinder, the Board
`
`considers: (1) why joinder is appropriate; (2) whether the new petition presents any
`
`new grounds of unpatentability; (3) any impact joinder would have on the trial
`
`-3-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`schedule for the existing review; and (4) how briefing and discovery may be
`
`simplified. Kyocera Corp., IPR 2013- 00004, Paper 15 at 4 (April 24, 2013). Here,
`
`each of the four factors weighs in favor of joinder.
`
`1.
`
`Joinder is Appropriate.
`
`Joinder is appropriate here because the concurrently filed Petition involves the
`
`same patent, relies on the same exhibits, is based on identical grounds, and includes
`
`the same combinations of prior art submitted in the Amazon IPR. The concurrently
`
`filed Petition contains minor differences from the Amazon IPR, relating to (a) the
`
`procedural formalities of having a different Petitioner file the Petition, and (b)
`
`changes to arguments regarding discretionary denial under § 314(a) that result from
`
`a different co-pending litigation. Otherwise, t here are no changes to the facts,
`
`citations, evidence, or arguments presented in the grounds for unpatentability set
`
`forth in the Amazon Petition. Because the proceedings present identical grounds,
`
`good cause exists for joining Petitioner as a party to the Amazon IPR and
`
`consolidating the proceedings, so that the Board can efficiently resolve the
`
`challenges in a single proceeding. Cent. Sec. Group, IPR2019-01609, Paper 11 at
`
`8; ZyXEL, IPR2021-00739, Paper 17 at 20.
`
`This efficiency gain extends to the litigation. In the Petition, Petitioner
`
`stipulates that, if Petitioner’s Petition is instituted, then Petitioner will not pursue the
`
`grounds identified in its Petition in the district court. Thus, joinder will ensure that
`
`-4-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`the grounds presented in the Amazon IPR are not inefficiently and unnecessarily
`
`adjudicated in another forum (e.g., the district court litigation involving Petitioner).
`
`Because joinder will increase efficiency and reduce duplicative proceedings
`
`involving the same patentability challenges, this factor favors joinder.
`
`2.
`
`Petitioner Proposes No New Grounds of Unpatentability.
`
`The concurrently filed Petition presents identical grounds as the Amazon
`
`Petition. Therefore, Petitioner does not propose any new grounds of unpatentability
`
`and this factor also favors joinder.
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Amazon IPR Trial Schedule.
`Because Petitioner’s Petition presents the identical grounds and the same
`
`evidence, there are no new issues for Patent Owner to address. Further, joinder with
`
`the Amazon IPR will not unduly burden or negatively impact the schedule in that
`
`proceeding in any way. Thus, this factor also favors joinder. Sony Corp. v. Memory
`
`Integrity, LLC, IPR2015-01353 Paper 11 at 6 (granting motion where joinder
`
`does “not necessitate any additional briefing or discovery from Patent Owner
`
`beyond that already required [by the original IPR]”).
`
`4. How Briefing and Discovery May Be Simplified
`The concurrently filed Petition and the Amazon Petition have identical
`
`grounds, including the same combinations of art and the same obviousness
`
`-5-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`arguments. Additionally, if this motion for joinder is granted, Petitioner agrees to
`
`take an “understudy” role, adhering to the following restrictions:
`
`(a) all filings by [Petitioner] in the joined proceeding [shall]
`be consolidated with [Amazon’s], unless a filing solely
`concerns
`issues
`that do not
`involve [Amazon]; (b)
`[Petitioner] shall not be permitted to raise any new grounds
`not already instituted by the Board in the [Amazon IPR], or
`introduce any argument or discovery not already introduced
`by [Amazon]; (c) [Petitioner] shall be bound by any
`agreement between
`[Patent Owner] and
`[Amazon]
`concerning discovery and/or depositions; and (d) [Petitioner]
`at deposition shall not receive any direct, cross-examination
`or redirect time beyond that permitted for [Amazon] alone
`under either 37 C.F.R. § 42.53 or any agreement between
`[Patent Owner] and [Amazon].
`Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268, Paper 17 at 5 (PTAB April
`
`10, 2015) (emphasis in original); Sony, IPR2015-01353, Paper 11 at 6 (granting
`
`joinder where petitioners requested an “understudy” role). Petitioner will assume
`
`the primary role only if Amazon ceases to participate in the Amazon IPR.
`
`By joining Petitioner in the Amazon IPR and allowing Petitioner to take on an
`
`understudy role, both briefing and discovery will be simplified because Patent
`
`Owner can maintain its current trial schedule and avoid duplicative efforts. The
`
`understudy role will minimize any potential complications or delay that potentially
`
`could result by joinder, including duplicative discovery and filings. Sony, IPR2015-
`
`01353, Paper 11 at 6-7 (“joinder would increase efficiency by eliminating
`
`duplicative filings and discovery, and would reduce costs and burdens on the parties
`
`-6-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`as well as the board” where petitioners sought an “understudy” role). Thus, this
`
`factor also favors joinder.
`
`For the foregoing reasons, each of the factors that the Board considers in
`
`evaluating potential joinder weighs in favor of granting this Motion.
`
`D. GENERAL PLASTIC IS INAPPLICABLE
`The General Plastic analysis is inapplicable to this joinder motion and
`
`concurrently filed Petition. In General Plastic, the Board set forth factors for
`
`analyzing follow-on petitions. Generally, these factors are intended to help conserve
`
`the Board’s resources and to prevent a subsequent petitioner from gaining a strategic
`
`advantage from filing a later petition. General Plastic Indus. Co. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017).
`
`Here, Petitioner is not filing a follow-on petition. Rather, Petitioner seeks to
`
`join the Amazon IPR as an understudy and does not present any new grounds. This
`
`is not the type of serial petition necessitating a General Plastic analysis. Indeed, the
`
`Board has found that the General Plastic factors are “not particularly relevant” in
`
`this situation, i.e., where a different petitioner files a “me-too” or “copycat” petition
`
`with a timely motion for joinder. Central Security Group, IPR2019-01609, Paper 11
`
`-7-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`at 8; Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 9-11 (PTAB
`
`Oct. 30, 2018).2
`
`Even if the Board were to consider the General Plastic factors, they would
`
`weigh in favor of institution. Petitioner has not previously filed a petition against
`
`the ’357 patent. Petitioner and the prior petitioners are not the same party and have
`
`no significant relationship. They are not co-defendants. They are competitors
`
`accused of infringement—in different actions pending in different courts—based on
`
`sales of different products. This weighs against denial. NetNut Ltd. v. Bright Data
`
`Ltd., IPR2021-00465, Paper 11, at 9 (PTAB Aug. 12, 2021) (declining to extend
`
`General Plastic and Valve to different petitioner with no relationship to previous
`
`petitioners); Mercedes-Benz USA, LLC v. Carucel Invs. L.P., IPR2019-01404, Paper
`
`12, at 11-12 (PTAB Jan. 22, 2020); Toshiba Am. Info. Sys., Inc. v. Walletex
`
`Microelecs. Ltd., IPR2018-01538, Paper 11, at 20 (PTAB Mar. 5, 2019).
`
`
`2 Unlike in Apple v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28,
`2020) (precedential) (“Uniloc”), where joinder was denied, this is Meta’s first IPR
`petition challenging these claims of the ’357 Patent, and Meta’s “me-too” petition
`is not otherwise time-barred. Accordingly, the factors that influenced the Board’s
`application of the General Plastic factors in Uniloc—where the petitioner had
`already filed a previous petition, was time-barred from filing a second petition and
`sought to bring a second petition through joinder after denial of the first petition
`(id. at 4, 7)—are not present.
`
`-8-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`
`The second through fifth factors relate to timing issues that are largely
`
`irrelevant. When Petitioner learned of the prior art, whether Petitioner received
`
`Patent Owner’s preliminary response or an institution decision, and the length of
`
`time between the filing of the petitions, are all irrelevant. Petitioner did not
`
`previously file any IPR petition, has substantively duplicated the Amazon IPR,
`
`alleging the same facts, grounds, and prior art, and has agreed to take an understudy
`
`role. As a result, this IPR cannot be considered an attempt to harass Patent Owner
`
`or otherwise engage in serial, tactical filings. Indeed, the exact opposite is true.
`
`Petitioner seeks to simplify and minimize the number of distinct proceedings by
`
`joining the Amazon IPR rather than pursuing a separate IPR based on different
`
`grounds.
`
`The sixth factor considers the Board’s resources and the seventh factor relates
`
`to the Board’s ability to meet the one-year statutory deadline. Allowing joinder here
`
`would not impact the Board’s resources (beyond those dedicated to deciding this
`
`Motion), and would not impact the Board’s ability to meet the one-year statutory
`
`deadline.
`
`For the foregoing reasons, the General Plastic factors do not weigh against
`
`institution and joinder of Petitioner to Amazon’s IPR.
`
`-9-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`IV. CONCLUSION
`Petitioner respectfully requests
`
`that
`
`the Board
`
`institute Petitioner’s
`
`concurrently filed IPR Petition, and join Petitioner as a party to the Amazon IPR.
`
`
`
`Dated: June 27, 2023
`
`
`
`
`
`
`Respectfully submitted,
`ALLEN & OVERY, LLP
`/Lisa Nguyen/
`Lisa Nguyen (Reg. No. 58,018)
`Counsel for Petitioner,
`META PLATFORMS, INC.
`
`-10-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a complete copy of this MOTION FOR
`
`JOINDER TO AND CONSOLIDATION WITH RELATED INTER PARTES
`
`REVIEW IPR2023-00251 PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R.
`
`§ 42.122(b) is being served on June 27, 2023, via FedEx Priority Overnight on
`
`counsel of record for U.S. Pat. 11,122,357 patent owner Jawbone Innovations, LLC
`
`at the address below:
`
`Mark Leonardo
`Nutter McClennen & Fish LLP
`Seaport West
`155 Seaport Blvd.
`Boston, MA 02210-2604
`
`A courtesy copy is also being served via electronic mail on counsel for the
`
`patent holder in the pending district court litigation, Jawbone Innovations, LLC v.
`
`Meta Platforms, Inc., 6:23-cv-00158 (W.D. Tex., filed February 28, 2023), and all
`
`counsel for the patent owner in IPR2023-00251:
`
`Raymond W. Mort, III
`THE MORT LAW FIRM, PLLC
`501 Congress Avenue, Suite 150
`Austin, Texas 78701
`Telephone: (512) 865-7950
`Email: raymort@austinlaw.com
`
`Alfred R. Fabricant
`Peter Lambrianakos
`Vincent J. Rubino, III
`Enrique W. Iturralde
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`-11-
`
`
`
`Meta Platforms, Inc. v. Jawbone Innovations, LLC
`U.S. Patent No. 11,122,357
`
`
`Email: ffabricant@fabricantllp.com
`Email: plambrianakos@fabricantllp.com
`Email: vrubino@fabricantllp.com
`Email: jawbone@fabricantip.com
`Email: rcowell@fabricantllp.com
`Email: eiturralde@fabricantllp.com
`
`
`
`
`Dated: June 27, 2023
`
`
`
`
`
`
`ALLEN & OVERY, LLP
`
`/Lisa Nguyen/
`Lisa Nguyen (Reg. No. 58,018)
`Counsel for Petitioner,
`META PLATFORMS, INC.
`
`-12-
`
`
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