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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner
`
`Case IPR2024-00145
`Patent No. 8,510,407
`
`PETITIONER’S CONDITIONAL MOTION FOR JOINDER
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`
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`I.
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`STATEMENT OF PRECISE RELIEF REQUESTED
`Under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Apple Inc. (“Apple” or
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`“Petitioner”) conditionally moves for joinder with the inter partes review instituted
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`against U.S. Patent No. 8,510,407 (“the ’407 Patent”) in Samsung Electronics Co.,
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`Ltd. v. DoDots Licensing Solutions LLC, IPR2023-00701 (“the Samsung
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`Proceeding”). This motion is timely filed no later than one month after the Board’s
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`institution decision in the Samsung Proceeding on October 23, 2023.
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`More specifically, Apple respectfully requests that the Board institute review
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`in this proceeding (IPR2024-00145) and grant this joinder motion if, and only if,
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`the Board has previously denied institution in Apple Inc., v DoDots Licensing
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`Solutions LLC, IPR2023-00939 (“the Apple Proceeding”). Conversely, if the Board
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`institutes review in the Apple Proceeding, Apple withdraws this motion. Apple
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`makes this request to ensure that it is a named petitioner in one—and only one—
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`instituted inter partes review proceeding. In this way, consistent with the Board’s
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`policy goals, Apple seeks a fair and efficient resolution to its dispute with Patent
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`Owner.
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`To be clear, Apple prefers and requests initial consideration of its petition
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`(“Original Petition”) in the Apple Proceeding. Apple’s Original Petition presents a
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`compelling case of obviousness based on prior art and arguments that the Office has
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`not yet considered. Patent Owner’s Preliminary Response (“POPR”) in the Apple
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`Proceeding does not dispute that the substance of the disclosures relied upon in the
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`2
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`Proposed Grounds satisfy each limitation in the Challenged Claims. Instead, the
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`POPR asks the Board to exclude portions of a key reference (“Slivka”) because they
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`were submitted as appendices with the Slivka application and did not publish as part
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`of the Slivka patent. See generally IPR2023-00939, Paper 7. As set forth in Apple’s
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`Preliminary Reply, Patent Owner’s position mischaracterizes the facts and
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`governing law and should be rejected. IPR2023-00939, Paper 9.
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`Instituting review in the Apple Proceeding would promote efficiency for all—
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`the parties, the Board, and the District Court. For one, institution of the Apple
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`Proceeding would trigger Apple’s contingent stipulation stated in the Original
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`Petition:
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`“[I]f the instant IPR is instituted, [Apple] will 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 petition.”1
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`Moreover, institution could preclude or abridge a jury trial on validity by
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`encouraging a stay and/or leading to a final written decision that estops Apple under
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`35 U.S.C. § 315(e)(2) from asserting certain printed publication grounds in the
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`district court litigation. The scope of the estoppel would be broader if the Apple
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`Proceeding is instituted and proceeds to a final decision than if Apple is merely
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`joined to the Samsung Proceeding. See Network-1 Techs., Inc. v. Hewlett-Packard
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`1 IPR2023-00939, Paper 1 at 75-76.
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`3
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`Co., 981 F.3d 1015, 1026-28 (Fed. Cir. 2020) (finding the scope of estoppel
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`narrowed when a petitioner was limited to joining an instituted proceeding).
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`However, if the Board were to decline to institute review in the Apple
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`Proceeding, the next best course of action would be to institute review here and grant
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`this motion for joinder with the Samsung Proceeding. As with the Apple Proceeding
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`(albeit to a lesser extent), institution and joinder would promote efficiency in the
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`district court litigation and would do so at no expense or prejudice to Patent Owner.
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`On the other hand, if the Board were to deny Apple any opportunity to participate in
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`inter partes review, Apple would have no choice but to pursue its printed publication
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`invalidity defenses in the litigation, separate and apart from the already-instituted
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`Samsung Proceeding. The Board should avoid this scenario, as it departs from the
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`congressional objective that AIA proceedings serve as “a less-expensive alternative
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`to district court litigation to resolve certain patentability issues.” OpenSky Indus.,
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`LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 28 (PTAB Oct. 17, 2022).
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`Under the specific circumstances on which this conditional motion is
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`premised, joinder would help efficiently resolve the parties’ disputes without undue
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`prejudice. As such, if the Board were to deny institution in the Apple Proceeding,
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`Apple respectfully submits that it should be allowed to join the Samsung Proceeding
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`in an “understudy” role. See Dell Inc. v. Network-1 Sec. Sols., Inc., IPR2013-00385,
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`Paper 17 at 4-6 (PTAB Jul. 29, 2013) (“Dell”).
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`4
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`II. BACKGROUND AND RELATED PROCEEDINGS
`DoDots Licensing Solutions LLC is the purported owner of the ’407 Patent.
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`DoDots asserted the ’407 Patent against Apple in DoDots Licensing Solutions LLC v.
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`Apple Inc., et al., Case 6:22-cv-00533-ADA (WDTX). DoDots asserted the same
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`patents against Samsung in DoDots Licensing Solutions LLC v. Samsung Electronics
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`Co., Ltd. et al., Case 6:22-cv-00535 (WDTX).
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`On March 10, 2023, Samsung Electronics Co., Ltd. petitioned for inter partes
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`review of the ’407 patent in the Samsung Proceeding (IPR2023-00701). The Board
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`instituted inter partes review in the Samsung Proceeding on October 23, 2023. On
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`May 23, 2023, entirely independent of Samsung and based on different prior art,
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`Apple petitioned for review of the ’407 patent in the Apple Proceeding (IPR2023-
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`00939). Apple now seeks joinder to the Samsung Proceeding challenging the ’407
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`patent if, and only if, the Board denies institution in the Apple Proceeding
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`challenging that same patent.
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`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`The Board has discretion to join a party that properly files an inter partes
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`review petition to an existing instituted proceeding addressing the same patent. See
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`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell at 4-6; Sony Corp. v. Yissum
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`Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326, Paper 15 at 3-
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`4 (PTAB Sep. 24, 2013); Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper
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`15 at 3-4 (PTAB Feb. 25, 2013). “The Board will determine whether to grant joinder
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`5
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`on a case-by-case basis, taking into account the particular facts of each case,
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`substantive and procedural issues, and other considerations.” Dell at 3. The movants
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`bear the burden of proof in establishing entitlement to the requested relief. 37 §§
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`42.20(c), 42.122(b). A motion for joinder should:
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`[A] set forth the reasons why joinder is appropriate; [B] identify any new
`grounds of unpatentability asserted in the petition; [C] explain what impact
`(if any) joinder would have on the trial schedule for the existing review;
`and [D] address specifically how briefing and discovery may be simplified.
`
`Dell at 4.
`A.
`The Statutory Requirements Are Satisfied, and Joinder Would Properly
`Balance the Parties’ Interests
`If, and only if, the Board denies institution in the Apple Proceeding, Apple
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`requests institution of the concurrently filed petition for inter partes review (“the
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`Joinder Petition”) and submits that joinder with the Samsung Proceeding would be
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`appropriate. The challenge raised against the ’407 patent in the Joinder Petition is
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`materially the same as that of the petition filed to initiate the Samsung Proceeding.
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`The Joinder Petition and the petition in the Samsung Proceeding challenge the same
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`claims based on the same prior art grounds and evidence, including an identical
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`declaration from the same expert.2
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`Apple agrees to proceed solely on the grounds, evidence, and arguments
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`advanced, or that will be advanced, in the Samsung Proceeding as instituted. The
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`2 The declaration is an exact duplicate of the declaration in the Samsung Proceeding.
`6
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`Joinder Petition therefore warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
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`§ 315(c) permits Apple’s joinder to the Samsung Proceeding.
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`Upon joining the Samsung Proceeding, Apple will act as an “understudy” and
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`will not assume an active role unless the current petitioner ceases to participate in
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`the Samsung Proceeding. The current petitioner will maintain the lead role so long
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`as the current petitioner remains in the proceeding. These limitations will avoid
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`lengthy and duplicative briefing. Apple also will not seek additional depositions or
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`deposition time. Apple further agrees to the foregoing conditions even in the event
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`that other third-party petitioners are joined with the Samsung Proceeding. The
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`proposed joinder will neither unduly complicate the Samsung Proceeding nor delay
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`its schedule.
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`Joinder also will not unduly prejudice any party. Because joinder will not add
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`any new substantive issues, delay the schedule, burden deponents, or increase
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`needless filings, any additional cost to Patent Owner would be minimal. On the other
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`hand, denial of joinder would prejudice Apple. Apple’s interests may not be
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`adequately protected in the Samsung Proceeding, particularly if the current petitioner
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`settles with Patent Owner.
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`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper 12
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`at 9 (PTAB Aug. 24, 2016) (cleaned up) (emphasis added). Here, joinder with the
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`7
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`Samsung Proceeding is appropriate because Apple’s Joinder Petition introduces
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`identical unpatentability arguments and the same grounds raised in the petition of
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`the Samsung Proceeding with no material changes to the facts, citations, evidence,
`
`or analysis. Because these proceedings introduce identical unpatentability
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`arguments and the same grounds, good cause exists for joinder, so that the Board,
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`consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and
`
`inexpensive resolution” of this proceeding and the Samsung Proceeding.
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`B.
`Joinder Would Not Add Any New Grounds of Unpatentability
`Apple’s Joinder Petition is based on the same grounds and combinations of
`
`prior art in the Samsung Proceeding. For simplicity and efficiency, Petitioner has
`
`copied the substance of the petition in the Samsung Proceeding and its accompanying
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`expert declaration. Petitioner does not seek to introduce grounds or claims not
`
`currently in the Samsung Proceeding and seeks only to join the proceeding as
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`instituted. Patent Owner should not require any discovery beyond that which it may
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`need in the Samsung Proceeding—nor should the Board permit any. The present
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`Joinder Petition introduces no new substantive issues relative to the Samsung
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`Proceeding and does not seek to broaden the scope of the Samsung Proceeding.
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`C.
`Joinder Would Not Impact the Samsung Proceeding’s Trial Schedule
`Joinder will not impact the Samsung Proceeding’s trial schedule because
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`Apple’s Joinder Petition presents no new issues or grounds of unpatentability. See
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`Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 at 6 (PTAB
`
`8
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`Oct. 15, 2015) (granting a motion where “joinder should not necessitate any
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`additional briefing or discovery from Patent Owner beyond that already required in
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`[the original IPR]”). Indeed, Apple expressly consents to the existing trial schedule
`
`in the Samsung Proceeding.
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`Patent Owner’s post-institution Response and Sur-Reply will not be
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`negatively impacted because the substantive issues presented in the Joinder Petition
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`are identical to the issues presented in the Samsung Proceeding. Patent Owner will
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`not be required to provide any additional analysis or arguments beyond what it will
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`already provide in responding to the petition in the Samsung Proceeding. Also,
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`because Apple’s Joinder Petition relies on the same expert declaration, only a single
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`deposition is needed for the proposed joined proceeding.
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`For all these reasons, Apple’s joinder with the Samsung Proceeding would not
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`unduly burden or negatively impact the trial schedule.
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`D.
`Procedures to Simplify Briefing and Discovery
`Apple expressly agrees to take an “understudy” role, which would simplify
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`briefing and discovery. Specifically, Apple expressly agrees, upon joining the
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`Samsung Proceeding, that the following conditions, as previously approved by the
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`Board in similar circumstances, shall apply so long as the current petitioner remains
`
`an active party:
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`a) all filings by Apple in the Samsung Proceeding shall be consolidated with
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`the filings of the current petitioner, unless a filing concerns issues solely
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`9
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`IPR2024-00145
`U.S. Patent No. 8,510,407
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`involving Apple;
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`b) Apple shall not be permitted to raise any new grounds not instituted by
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`the Board in the Samsung Proceeding, or introduce any argument or
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`discovery not introduced by the current petitioner;
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`c) Apple shall be bound by any agreement between Patent Owner and the
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`current petitioner concerning discovery and/or depositions; and
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`d) Apple at deposition shall not receive any direct, cross-examination or
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`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or
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`any agreement between Patent Owner and the current petitioner.
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`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5
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`(PTAB Apr. 10, 2015). Unless and until the current petitioner ceases to participate,
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`Apple will not assume an active role in the Samsung Proceeding.
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`Thus, by Apple accepting an “understudy” role, the parties can comply with
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`the trial schedule assigned to the Samsung Proceeding without duplicative efforts.
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`These steps minimize the possibility of any complication or delay from joinder. See
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`Sony, IPR2015-01353, Paper 11 at 6-7 (granting a motion for joinder where
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`petitioner agreed to an “understudy” role because “joinder would increase efficiency
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`by eliminating duplicative filings and discovery, and would reduce costs and burdens
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`10
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`on the parties as well as the Board”). Apple is further willing to agree to any other
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`reasonable conditions the Board deems necessary.
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`IV. CONCLUSION
`For the foregoing reasons, Apple respectfully requests if, and only if, the
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`Board has previously denied institution of the Apple Proceeding, that the Board
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`institute review in this proceeding (IPR2024-00145) and grant this motion for
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`joinder with the Samsung Proceeding (IPR2023-00701).
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`Dated: November 17, 2023
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`
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`Respectfully submitted,
`
`
`
`/Paul R. Hart/
`Paul R. Hart, Reg. No. 59,646
`Adam P. Seitz, Reg. No. 52,206
`Kevin Rongish, Reg. No. 78,716
`Erise IP, PA.
`
`Attorneys for Petitioner
`
`11
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`IPR2024-00145
`U.S. Patent No. 8,510,407
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on November 17,
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`2023, a complete and entire copy of this Motion for Joinder was provided via Federal
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`Express to the Patent Owner by serving the correspondence addresses of record for the
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`’407 Patent as listed on Patent Center:
`
`PK Patent Law
`213 S. Payne St.
`Alexandria, VA 22314
`Further, a courtesy copy of this Motion was sent via email to Patent
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`Owner’s litigation counsel:
`
`cbiyer@daignaultiyer.com
`jcharkow@daignaultiyer.com
`oburger@daignaultiyer.com
`rjuang@daignaultiyer.com
`rdaignault@daignaultiyer.com
`ssamay@daignaultiyer.com
`smaheshwari@daignaultiyer.com
`zellis@daignaultiyer.com
`raymort@austinlaw.com
`
`
`
`
`
`
`/Paul R. Hart/
`Paul R. Hart, Reg. No. 59,646
`Erise IP, P.A.
`
`
`
`
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