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 IPR2023-01197
` Patent No. 10,971,140
` ____________________
`
` PATENT OWNER’S PRELIMINARY RESPONSE
` AND CONTINGENT JOINDER OPPOSITION
`
`
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` AMAZON WEB SERVICES, INC.
` AND AMAZON.COM SERVICES LLC,
` Petitioners,
`
` v.
`
` Zentian Limited
` Patent Owner.
` ____________________
`
` Case IPR2023-01197
` Patent No. 10,971,140
` ____________________
`
` PATENT OWNER’S PRELIMINARY RESPONSE
` AND CONTINGENT JOINDER OPPOSITION
`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S P RELIMINARY R ESPONSE
`
` T ABLE OF C ONTENTS
`
` The Board should not institute and join Amazon’s Petition unless
` I.
` Amazon is bound by the same Sotera stipulation to which Apple agreed
`
` 1
`
` - 1 -
`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S P RELIMINARY R ESPONSE
`
` EXHIBIT LIST
`
` Exhibit No.
` 2001
`
` 2002
`
` 2003
`
` Description
` Amazon’s District Court Amended Invalidity Contentions
` Scheduling Order in Zentian Ltd. v. Amazon.com, Inc.,
` 6:22-cv-00123 (W.D. Tex.)
` Correspondence between counsel for Zentian and Amazon re:
` Sotera stipulation
`
` - 2 -
`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S P RELIMINARY R ESPONSE
` The Board should not institute and grant joinder of Amazon’s Petition
` I.
` unless Amazon is bound by the same Sotera stipulation to which Apple agreed
`
` Amazon Web Services, Inc. and Amazon.com Services LLC (“Amazon”)
`
` and Zentian are currently involved in litigation with respect to the ’140 Patent
`
` before the Western District of Texas. The complaint in that proceeding was served
`
` no later than April 25, 2022, more than one year before the date on which Amazon
`
` filed its Petition in this proceeding. Compare Zentian Ltd. v. Amazon.com, Inc.,
`
` 6:22-cv-00123 (W.D. Tex.), Dkt. 15 with Paper 2 (Petition filed on July 12, 2023).
`
` Amazon’s Petition in this proceeding thus violates the statutory time bar set
`
` forth in 35 U.S.C. § 315(b). The Petition therefore cannot be instituted unless the
`
` Board grants Amazon’s accompanying motion for joinder with respect to
`
` IPR2023-00037. See § 315(c); Paper 3 (joinder motion).
`
` Moreover, Amazon has served invalidity contentions in the district court
`
` proceeding in which Amazon presents many of the same art and arguments raised
`
` in its Petition. Compare Ex. 2001 at 8-10 (relying on Jiang 1 , Robinson, and
`
` Wrench) with Petition at 7 (relying on same references for Petition’s grounds). The
`
` district court proceeding is not stayed, and is set for trial on September 23, 2024.
`
` Ex. 2002 at 3 (district court scheduling order). Amazon’s invalidity expert report is
`
` 1 Amazon’s invalidity contentions refers to “Jiang II” for the reference
` corresponding to Jiang in this proceeding.
`
` - 1 -
`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S P RELIMINARY R ESPONSE
` due by May 2, 2024, and Zentian’s rebuttal report is due on May 30, 2024. Id.
`
` Meanwhile, the underlying proceeding that Amazon seeks to join is on track for an
`
` oral hearing on March 13, 2024, and a final written decision by June 12, 2024.
`
` Accordingly, Fintiv factors 1-5 here warrant non-institution and denial of
`
` joinder.
`
` Fintiv factor 6 likewise warrants non-institution unless the Board requires
`
` Amazon to enter the same Sotera stipulation to which Apple agreed, and on which
`
` the Board relied, in underlying proceeding IPR2023-00037, which Amazon seeks
`
` to join.
`
` In particular, in that proceeding, Apple mooted Zentian’s Fintiv- based
`
` non-institution arguments by committing to “not pursue in the parallel district court
`
` proceeding the same grounds as in the Petition or any grounds that could have
`
` reasonably been raised in the pending Petition.” IPR2023-00037, Paper 9 at 1 (the
`
` Sotera stipulation). The Board relied on Apple’s Sotera stipulation as a basis for
`
` granting institution. IPR2023-00037, Paper 10 at 9-10. Notably, because Apple
`
` provided a Sotera stipulation, the Board did not assess Apple’s Petition under the
`
` “compelling merits” standard that would have applied without Apple’s Sotera
`
` stipulation. Commscope Techs. LLC v. Dali Wireless, Inc. , IPR2022-01242, Paper
`
` 23 at 4 (Feb. 27, 2023) (precedential). “The compelling merits standard is a higher
`
` - 2 -
`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S P RELIMINARY R ESPONSE
` standard than the standard for institution set by statute.” Id. at 3. To meet the
`
` “compelling merits” standard, the Petition must demonstrate that it is “ highly likely
`
` that the petitioner would prevail with respect to at least one challenged claim.” Id.
`
` at 3-4 (emphasis added).
`
` But although Amazon’s Petition purports to wholly adopt Apple’s arguments
`
` and positions in IPR2023-00037, see Mot. for Joinder (Paper 3) at 2-4, Amazon’s
`
` Petition and Motion for Joinder do not expressly agree to undertake the Sotera
`
` stipulation on which Apple relied in order to obtain institution. Indeed, in response
`
` to Zentian’s inquiry on the issue, Amazon responded that it would not voluntarily
`
` provide a Sotera stipulation in this proceeding. See Ex. 2003 at 1.
`
` But given that Amazon is otherwise time-barred, and that Amazon
`
` effectively seeks to enjoy the benefits of joining Apple’s instituted proceeding on
`
` the same terms and conditions through which Apple obtained institution, it would
`
` be unfair and prejudicial to Zentian if Amazon were permitted to join without
`
` being bound by the same Sotera stipulation to which Apple has agreed, and on
`
` which the Board’s institution decision relied.
`
` Accordingly, Zentian respectfully requests that the Board only grant
`
` Amazon’s request for institution and joinder contingent on Amazon being bound
`
` by the same Sotera stipulation terms as Apple. Otherwise, the Board should deny
`
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`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S P RELIMINARY R ESPONSE
` institution and joinder as prejudicial and unfair. See Trial Practice Guide (2019) at
`
` 42 (providing that, in the context of same party and/or issue joinder, the Board will
`
` permit joinder “ only where fairness requires it and to avoid undue prejudice to a
`
` party.”).
`
` Respectfully submitted,
`
` /s/ Peter Knops
`
` Peter C. Knops, Reg. No. 37,659
` Kayvan B. Noroozi, Admitted Pro Hac Vice
` N OROOZI PC
` 11601 Wilshire Blvd., Suite 2170
` Los Angeles, CA 90025
` Attorneys for the Patent Owner
`
` Date: October 12, 2023
`
` - 4 -
`
`
`
` CERTIFICATION OF WORD COUNT
`
` The undersigned hereby certifies that the portions of the above-captioned
`
` PATENT OWNER’S PRELIMINARY RESPONSE AND CONTINGENT
`
` JOINDER OPPOSITION specified in 37 C.F.R. § 42.24 have 702 words, in
`
` compliance with the 14,000 word limit set forth in 37 C.F.R. § 42.24(b)(1). This
`
` word count was prepared using Microsoft Word 365.
`
` /Peter Knops/
` Peter Knops
`
` Counsel for Patent Owner
`
` Date: October 12, 2023
`
`
`
` CERTIFICATION OF SERVICE
`
` The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
` PRELIMINARY RESPONSE AND CONTINGENT JOINDER
`
` OPPOSITION was served electronically via e-mail on October 12, 2023, on the
`
` following counsel of record for Petitioner:
`
` J. David Hadden (Reg. No. 40,629)
` dhadden@fenwick.com
` Fenwick & West LLP
` 801 California Street
` Mountain View, CA 94041
` Telephone: (650) 988-8500
` Facsimile: (650) 938-5200
`
` Date: October 12, 2023
`
` Saina Shamilov (Reg. No. 48,266)
` sshamilov@fenwick.com
` Fenwick & West LLP
` 801 California Street
` Mountain View, CA 94041
` Telephone: (650) 988-8500
` Facsimile: (650) 938-5200
`
` Dargaye Churnet (Reg. No. 71,288)
` dchurnet@fenwick.com
` Fenwick & West LLP
` 555 California Street, 12th Floor
` San Francisco, CA 94104
` Telephone: (415) 875-2300
` Facsimile: (415) 281-1350
`
` /Peter Knops/
` Peter C. Knops, Reg. No. 37,659
` N OROOZI PC
` 11601 Wilshire Blvd., Suite 2170
` Los Angeles, CA 90025
` Tel.: 310-975-7074
`
` Counsel for Patent Owner
`
`
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