From: Chandran Iyer <cbiyer@daignaultiyer.com>
`Sent: Thursday, April 11, 2024 6:18 PM
`To: Paul Hart <paul.hart@eriseip.com>; Trials <Trials@USPTO.GOV>
`Cc: IPR39843-0148IP1@fr.com; ptabinbound@fr.com; axfptab@fr.com; jjm@fr.com; 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>
`Subject: Re: Status Update re Contingent Joinder in IPR2024-00143, -00144, -00145
`
`Your Honors,
`
`We represent Patent Owner DoDots Licensing Solutions LLC (DoDots).
`
`As the Board is aware and by way of background, DoDots sued Samsung Electronics Co., LTD
`(Samsung) and Apple Inc. (Apple) in the Western District of 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.
`
`Beginning on February 22, 2023 and continuing into March, Samsung 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 their original IPRs, IPR2023-00937, -00938,
`and -00939, also using prior art references asserted from the same joint preliminary invalidity
`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 2024-00143, -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. On December 15, 2023
`and January 3, 2024, the Board denied institution of Apple’s original IPRs 2023-00937, -00938,
`and -00939. Apple subsequently filed Requests for Director Review on January 16, 2024 and
`February 2, 2024 in their original IPRs, which the Director denied on March 27, 2024.
`
`In view of Apple and Samsung’s coordinated actions in the district court and IPR proceedings
`and the denial of Apple’s original IPRs and Director Review, DoDots writes to inform the Board
`that it does not oppose Apple’s conditional motion for joinder of Apple’s copy-cat petitions to
`Samsung IPRs 2023-00621, -00701, and -00756.
`
`Respectfully,
`Chandran B. Iyer
`
`
`

`

`
`
`
`Chandran B. Iyer
`Partner
`
`Daignault Iyer LLP
`202.330.1666
`cbiyer@daignaultiyer.com
`daignaultiyer.com
`
`
`
`From: Paul Hart <paul.hart@eriseip.com>
`Sent: Monday, April 1, 2024 4:50 PM
`To: Trials <trials@uspto.gov>
`Cc: IPR39843-0148IP1@fr.com <IPR39843-0148IP1@fr.com>; ptabinbound@fr.com
`<ptabinbound@fr.com>; axfptab@fr.com <axfptab@fr.com>; jjm@fr.com <jjm@fr.com>;
`in@fr.com <in@fr.com>; jason.s.charkow@gmail.com <jason.s.charkow@gmail.com>;
`richard.juang@gmail.com <richard.juang@gmail.com>; Chandran Iyer
`<cbiyer@daignaultiyer.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>
`Subject: Status Update re Contingent Joinder in IPR2024-00143, -00144, -00145
`
`
`To the Board,
`
` I
`
` represent Petitioner Apple Inc. in IPR2024-00143, -00144, and -00145, which were copycat
`petitions accompanied by contingent joinder motions ("Contingent Joinder Petitions”). The
`contingent joinder motions sought to join 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: IPR2023-00937, -00938, and -00939 (“Original Apple
`IPRs”).
`
`The Original Apple IPRs were initially denied institution, but Apple sought Director Review of
`those institution denials. On March 27, 2024, Director Vidal denied Apple’s Requests for Director
`Review. Accordingly, the Original Apple IPRs have been finally denied and Apple believes its
`Continent Joinder Petitions are now ripe.
`
`Respectfully,
`
` 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
`
`717 17th St.
`
`
`
`

`

`On Nov 17, 2023, at 3:43 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
`
`
`
`