`Filed on behalf of:
`AMAZON WEB SERVICES, INC.
`AND AMAZON.COM SERVICES LLC,
`By:
`J. DAVID HADDEN, Reg. No. 40,629
`SAINA SHAMILOV, Reg. No. 48,266
`DARGAYE CHURNET, Reg. No. 71,288
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMAZON WEB SERVICES, INC.
`AND AMAZON.COM SERVICES LLC,
`Petitioners,
`v.
`
`ZENTIAN LIMITED
`Patent Owner.
`
`Case No. IPR2023-01197
`Patent No. 10,971,140
`
`PETITIONERS’ MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c), 37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ........................... 1
`
`REASONS FOR THE RELIEF REQUESTED ............................................... 2
`
`Page
`
`Legal Standard ....................................................................................... 2
`
`Reasons Why Joinder Is Appropriate .................................................... 2
`
`The Instant Petition Does Not Raise Any New Grounds of
`Unpatentability ....................................................................................... 4
`Joinder Will Not Affect the Schedule in the Apple IPR ........................ 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Joinder will Simplify Briefing Because Petitioners Have
`Agreed to Consolidated Filings and an Understudy Role ..................... 5
`Joinder Will Not Prejudice Patent Owner .............................................. 6
`
`F.
`III. CONCLUSION ................................................................................................ 6
`
`
`
`
`i
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Zentian Limited,
`IPR2023-00037 ............................................................................................. 1, 2, 6
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper 17 (PTAB July 29, 2013) ................................................ 2
`Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
`IPR2014-00556, Paper 19 (PTAB July 9, 2014) .................................................. 2
`Everlight Elecs. Co. v. Document Security Sys., Inc.,
`IPR2018-01260, Paper 12 (PTAB Nov. 14, 2018) ............................................... 3
`Noven Pharm., Inc. v. Novartis AG,
`IPR2014-00550, Paper 38 (PTAB April 10, 2015) .............................................. 5
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper 12 (PTAB Aug. 24, 2016) ............................................... 3
`Statutes
`35 U.S.C. § 315(c) ..................................................................................................... 1
`Other Authorities
`37 C.F.R. § 42.22 ....................................................................................................... 1
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`
`
`ii
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Amazon Web Services, Inc. and Amazon.com Services LLC (collectively,
`
`“Petitioners”) respectfully submit this Motion for Joinder under 35 U.S.C. § 315(c),
`
`37 C.F.R. §§ 42.22 and 42.122(b), concurrently with their Petition (“Instant
`
`Petition”) for inter partes review of U.S. Patent No. 10,971,140 (the “’140 Patent”).
`
`Joinder is appropriate because the Instant Petition is substantively identical
`
`to the petition filed in Apple Inc. v. Zentian Limited, IPR2023-00037 (“the Apple
`
`Petition”), on which trial was instituted on June 12, 2023 (the “Apple IPR”). The
`
`Instant Petition includes identical grounds concerning the same claims challenged
`
`in the Apple Petition and therefore would create no additional burden for the Board,
`
`Apple, or the Patent Owner, if joined.
`
`Petitioners stipulate that if joinder is granted, they will assume an
`
`“understudy” role to Apple and will cooperate with Apple in the joined proceeding,
`
`whether at hearings, at depositions, in filings, or otherwise, as outlined below.
`
`Joinder will not impact the trial schedule because the Apple IPR proceeding is in
`
`its early stages. Joinder would therefore lead to an efficient resolution of the
`
`validity of the ’140 Patent.
`
`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`as it is submitted within one month of June 12, 2023, the date on which the Apple
`
`IPR was instituted.
`
`1
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`II. REASONS FOR THE RELIEF REQUESTED
`A.
`Legal Standard
`In determining whether to join one IPR proceeding to another, the Board
`
`considers: (1) reasons why joinder is appropriate; (2) any new grounds of
`
`unpatentability asserted in the petition; (3) what impact (if any) joinder would have
`
`on the trial schedule for the existing review; and (4) specifically how briefing and
`
`discovery may be simplified. See Dell, Inc. v. Network-1 Security Solutions, Inc.,
`
`IPR2013-00385, Paper 17 at 3 (PTAB July 29, 2013). Each of these factors favors
`
`joinder here.
`
`B. Reasons Why Joinder Is Appropriate
`Joinder is appropriate because it is the most efficient way to resolve the two
`
`related proceedings. The Instant Petition is intentionally identical in substance to
`
`the Apple Petition and does “not present issues that might complicate or delay” the
`
`Apple IPR. See Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc., IPR2014-
`
`00556, Paper 19 (PTAB July 9, 2014). The only difference between the Instant
`
`Petition and the Apple Petition are the sections on Real Party-In-Interest, Related
`
`Matters, Counsel, Grounds for Standing, Considerations Under §§ 314(a) and
`
`325(d) (discretionary denial) and exhibits 1043 (Declaration of Dr. Les Atlas,
`
`2
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`Ph.D.)1 and 1044 (Zentian v. Amazon Amended Scheduling Order), which have
`
`been appropriately updated.
`
`Joinder would therefore have little, if any, impact on the Apple IPR because
`
`no new grounds would be added, the schedule would be unaffected, no additional
`
`briefing or discovery would be required, and no additional burdens would be placed
`
`on the Patent Owner, as detailed below. Accordingly, joinder is appropriate because
`
`it ensures a just, speedy, and inexpensive resolution of these proceedings. Samsung
`
`Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24,
`
`
`
`1 The Instant Petition is supported by a declaration from Dr. Les Atlas, Ph.D.
`
`(Ex. 1043), who considered the Declaration of Christopher Schmandt, submitted in
`
`the Apple IPR (IPR2023-00037, Ex. 1003 (Dec. 2, 2022)) and the opinions set forth
`
`therein. Dr. Atlas agrees with Mr. Schmandt’s opinions and adopts them as his own.
`
`Therefore, the declaration of Dr. Atlas is substantively identical to the declaration of
`
`Mr. Schmandt and does not expand on the scope of expert opinions provided by
`
`Mr. Schmandt in the Apple IPR. See Everlight Elecs. Co. v. Document Security Sys.,
`
`Inc., IPR2018-01260, Paper 12 at 6-7 (PTAB Nov. 14, 2018) (granting motion for
`
`joinder where petitioner submitted separate but substantially identical expert
`
`declaration).
`
`3
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`2016) (recognizing that the Board “routinely grants motions for joinder where the
`
`party seeking joinder introduces identical arguments and the same grounds raised
`
`in the existing proceeding.”).
`
`C.
`
`The Instant Petition Does Not Raise Any New Grounds of
`Unpatentability
`The Instant Petition relies on the same grounds of unpatentability of claims 1-
`
`8 of the ’140 Patent that were instituted in the Apple IPR. See IPR2023-00037, Paper
`
`10 (PTAB. June 12, 2023). As discussed above, the evidence and arguments
`
`supporting the Instant Petition are substantively identical to the evidence and
`
`arguments supporting the Apple IPR.
`
`D.
`Joinder Will Not Affect the Schedule in the Apple IPR
`Joinder will not affect the schedule in the Apple IPR, because Petitioners
`
`agree to the deadlines set forth in the Apple IPR Scheduling Order. See IPR2023-
`
`00037, Paper 11 (PTAB June 12, 2023). Since the Instant Petition does not raise
`
`any new arguments and is substantively identical to the Apple IPR petition, there
`
`should be no need for Patent Owner to submit a preliminary response to the Instant
`
`Petition. Joinder would allow the Board and parties to focus on the merits of the
`
`unpatentability challenges to claims 1-8 of the ’140 Patent in a single consolidated
`
`proceeding without duplication of effort, and in an efficient manner.
`
`4
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`E.
`Joinder will Simplify Briefing Because Petitioners Have Agreed to
`Consolidated Filings and an Understudy Role
`Petitioners agree to take an “understudy” role as long as Apple remains a party
`
`to the Apple IPR, which will simplify briefing and discovery.2 See, e.g., Noven
`
`Pharm., Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5 (PTAB April 10, 2015).
`
`In this role, Petitioners agree to the following conditions:
`
`(a)
`
`Petitioners will not make any substantive filings and shall be bound by
`
`the filings of Apple, unless a filing concerns termination and settlement, or issues
`
`solely involving Petitioners.
`
`(b)
`
`Petitioners will not present any argument or make any presentation at
`
`oral hearing unless an issue solely involves Petitioners, or when addressing Board-
`
`approved motions that do not affect Apple or the merits of Apple’s Petition or
`
`arguments.
`
`(c)
`
`Petitioners will not seek to cross-examine or defend the cross-
`
`examination of any witness, unless the topic of cross-examination concerns issues
`
`solely involving Petitioners, within the time permitted by Apple alone and with
`
`Apple’s agreement.
`
`
`
`2 In the event Apple no longer participates in the IPR proceedings, Petitioners would
`
`take over primary responsibility for subsequent filings and discovery.
`
`5
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`(d)
`Petitioners will not seek discovery from Patent Owner, unless issues
`
`arise that are unique to, and only applicable to, Petitioners.
`
`(e)
`
`Petitioners will not rely on expert testimony beyond that submitted by
`
`Apple unless and until Apple is terminated as party to the proceedings, prior to any
`
`necessary depositions. Petitioners’ expert, Dr. Atlas, adopts the opinions set forth in
`
`the declaration of Dr. Schmandt submitted in the Apple IPR and adds no new
`
`opinions. Dr. Atlas will not actively participate in these proceedings, unless and until
`
`Apple is terminated as a party.
`
`F.
`Joinder Will Not Prejudice Patent Owner
`Petitioners’ joining of the Apple IPR should not result in any prejudice to
`
`Patent Owner. No additional grounds or arguments are being introduced, no new
`
`evidence or issues are being added, and no additional discovery, briefing or oral
`
`argument should be necessary as a result of the Instant Petition and joinder.
`
`Additionally, joinder decreases the number filings by the parties, eliminates
`
`duplication of effort, and will create case management efficiencies for the Board and
`
`Patent Owner.
`
`III. CONCLUSION
`For the reasons above, Petitioners respectfully request that their Petition for
`
`Inter Partes Review of the ’140 Patent be instituted, and that Petitioners be joined
`
`to the Apple IPR, IPR2023-00037.
`
`6
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`
`
`Dated: July 12, 2023
`
`Respectfully submitted,
`
`
`
`
`
`FENWICK & WEST LLP
`
`
`
`/J. David Hadden/
`
`J. David Hadden
`Reg. No. 40,629
`Attorneys for Petitioners
`Amazon Web Services, Inc. and Amazon.com
`Services LLC
`
`
`7
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`I hereby certify, pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, that a complete
`
`copy of this Petitioners’ Motion for Joinder Under 35 U.S.C. § 315(c), 37 C.F.R.
`
`§ 42.22 and § 42.122(b), is being served via Federal Express on July 12, 2023, upon
`
`Patent Owner by serving the correspondence address of record with the USPTO as
`
`follows:
`
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Further, a courtesy copy of this Motion for Joinder is being served upon
`
`counsel of record for Patent Owner in the litigation pending before the U.S. District
`
`Court for the Western District of Texas entitled Zentian Ltd v. Amazon.com Inc.,
`
`Case No. 6:22-cv-00123-ADA (W.D. Tex.) as follows:
`
`John M. Hughes
`Katherine L.I Hacker
`Bartlit Beck LLP
`1801 Wewatta Street, Suite 1200
`Denver, CO 80202
`
`John Francis Luman , III
`Daniels & Tredennick PLLC
`6363 Woodway, Suite 700
`Houston, TX 77057
`
`Katherine E. Rhoades
`Nevin M. Gewertz
`Rebecca T. Horwitz
`Bartlit Beck LLP
`54 West Hubbard Street, Suite 300
`Chicago, IL 60654
`
`
`
`
`
`
`8
`
`
`
`IPR2023-01197
`Petitioners’ Motion for Joinder
`
`
`
`
` /J. David Hadden/
`J. David Hadden
`Reg. No. 40,629
`Attorneys for Petitioners
`Amazon Web Services, Inc. and
`Amazon.com Services LLC
`
`9
`
`
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