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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`——————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`——————————
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`GOOGLE LLC,
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`Petitioner,
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`v.
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`PROXENSE, LLC,
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`Patent Owner.
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`——————————
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`Case No. IPR2024-01319
`U.S. Patent No. 9,679,289
`Filing Date: December 7, 2015
`Issue Date: June 13, 2017
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`
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`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Google LLC
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`(“Petitioner”) moves for joinder with the Inter Partes Review of U.S. Patent
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`No. 9,679,289 (“the ’289 patent”), Microsoft Corporation v. Proxense, LLC,
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`IPR2024-00407 (“the Microsoft IPR”), which has been instituted on July 22, 2024.
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`IPR2024-00407, Paper 8.
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`Petitioner requests that action on this motion be held in abeyance until, and
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`only if, Petitioner’s earlier petition is denied. This motion is timely because it is filed
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`“no later than one month after the institution date” of the Microsoft IPR. 37 C.F.R.
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`§ 42.122(b); Central Security Group – Nationwide, Inc. v. Ubiquitous Connectivity,
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`LP, IPR2019-01609, Paper 11 at 8-9 (P.T.A.B. Feb. 26, 2020) (stating that
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`§ 42.122(b) is “[t]he only timing requirement for a motion for joinder”). Petitioner
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`understands that the petitioner in the Microsoft IPR (“Microsoft”) does not oppose
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`Petitioner’s request for joinder.
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`Petitioner requests institution of its Petition for Inter Partes Review.
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`Petitioner submits that the request for joinder is consistent with the policy objectives
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`surrounding inter partes reviews, as it is the most expedient way “to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b);
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`see also HTC v. Parthenon Unified Memory Architecture LLC, IPR2017-00512,
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`Paper 12 at 5-6 (June 1, 2017). The present Petition and the Microsoft IPR Petition
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`1
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`are substantively identical with respect to the asserted grounds and supporting
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`evidence.
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`Further, if joined to the Microsoft IPR, Petitioner agrees to act as an
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`“understudy” and will not assume a lead role unless Microsoft is no longer a party
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`to the proceeding or, otherwise, does not advance arguments for one or more claims
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`or grounds. Accordingly, the proposed joinder will not unduly complicate the
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`Microsoft IPR nor adversely impact its schedule. As such, the requested joinder will
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`promote judicial efficiency in determining the patentability of the ’289 patent
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`without prejudice to Patent Owner. Thus, the Petition warrants institution under 35
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`U.S.C. § 314, and 35 U.S.C. § 315(c) permits Petitioner’s joinder to the Microsoft
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`IPR.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Proxense, LLC (the “Patent Owner”) is the owner of the ’289 patent. Proxense
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`has asserted the ’289 patent against Google in Proxense, LLC v. Google LLC, 6:23-
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`cv-00320 (W.D. Tex.). On January 16, 2024, Microsoft filed its IPR petition,
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`IPR2024-00407, against the ’289 patent. On July 22, 2024, the Board granted
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`institution on the Microsoft IPR. Petitioner timely moves for joinder with the
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`Microsoft IPR.
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`2
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`Separately, Petitioner filed a IPR petition, IPR2024-00783, against the ’289
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`patent on April 19, 2024. Petitioner has concurrently filed a paper ranking the
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`petitions in the order in which it wishes the Board to consider the merits.
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`III. REASONS FOR REQUESTED RELIEF
`A. Legal Standard
`The Board may grant a motion for joining an inter partes review petition with
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`another inter partes review proceeding. 35 U.S.C. § 315(c); see also Sony Mobile
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`Comms. AB v. Ancora Technologies, Inc., IPR2021-00663, Paper 17 at 29-33
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`(P.T.A.B. June 10, 2021) (“Sony”). A petitioner may request joinder up to one month
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`after the institution date of the proceeding to which joinder is requested, without
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`prior authorization. 37 C.F.R. § 42.122(b). The Board, in determining whether to
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`exercise its discretion to grant joinder, considers whether the joinder motion: (1) sets
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`forth the reasons why joinder is appropriate; (2) identifies any new grounds of
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`unpatentability asserted in the petition; (3) explains what impact (if any) joinder
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`would have on the trial schedule for the existing review; and (4) addresses
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`specifically how briefing and discovery may be simplified. Central Security Group
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`– Nationwide, Inc. d/b/a Alert360 v. Ubiquitous Connectivity, LP, IPR2019-01610,
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`Paper 12 at 6.
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`B. Petitioner’s Motion for Joinder is Timely
`Joinder may be requested “no later than one month after the institution date
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`of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
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`3
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`The Microsoft IPR was instituted on July 22, 2024. Petitioner’s motion for joinder
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`is timely because it is being filed within one month after the institution date.
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`C. The Four Factors Favor Joinder
`Each of the four factors weighs in favor of granting Petitioner’s Motion for
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`Joinder. The Petition here is substantively identical to the petition in the Microsoft
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`IPR. It presents no new grounds of unpatentability, and it relies on the same prior
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`art. Joinder will have no impact on the schedule of the Microsoft IPR. Moreover,
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`briefing and discovery in the Microsoft IPR will be simplified by resolving all issues
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`in a single proceeding.
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`1. Joinder Will Promote an Efficient Determination of the
`Validity of the ’289 Patent Without Prejudice to Any Party
`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 (P.T.A.B. Aug. 24, 2016) (internal quotations and citations omitted); see Sony,
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`Paper 17 at 31. Here, joinder with the Microsoft IPR is appropriate because
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`Petitioner asserts the same unpatentability arguments and the same grounds in its
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`Petition as those raised in the Microsoft IPR. Both petitions contain identical
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`grounds based on the same prior art combinations against the same claims. Petitioner
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`also relies on substantially the same supporting evidence in its Petition as is relied
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`on in the Microsoft IPR. Thus, the Petition and the Microsoft IPR involve identical
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`4
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`grounds and substantially the same arguments and evidence. Accordingly, if joinder
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`is granted, the validity of the grounds raised in the Microsoft IPR and the Petition
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`here can be determined in a single proceeding. Because these proceedings introduce
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`substantially identical unpatentability arguments and the same grounds, good cause
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`exists for joinder, so that the Board, consistent with 37 C.F.R. § 42.1(b), can
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`efficiently “secure the just, speedy, and inexpensive resolution” of the Petition and
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`the Microsoft IPR.
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`2. Joinder Will Not Add Any New Grounds of Unpatentability
`The Petition is based on the same grounds and combinations of prior art that
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`the Board considered in deciding to institute the Microsoft IPR. Petitioner’s
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`supporting materials are substantially identical to those presented in the Microsoft
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`IPR. As a condition of joinder, Petitioner agrees to proceed based on Microsoft’s
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`expert declaration and petition. Petitioner does not seek to introduce grounds or
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`claims not in the Microsoft IPR and seeks only to join the proceeding as instituted.
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`Patent Owner should not require any discovery beyond that which it may need in the
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`Microsoft IPR, nor should the Board permit any. The Petition introduces no new
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`substantive issues relative to the Microsoft IPR and does not seek to broaden the
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`scope of the Microsoft IPR. See Sony Corp. v. Memory Integrity, LLC, IPR2015-
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`01353, Paper 11 at 5-6 (P.T.A.B. Oct. 5, 2015) (“Memory”) (granting motion for
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`5
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`joinder where petitioners relied “on the same prior art, same arguments, and same
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`
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`evidence, including the same expert and a substantively identical declaration”).
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`3. Joinder Will Not Affect the Schedule in the Microsoft IPR
`Joinder will not impact the Microsoft IPR trial schedule because the present
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`Petition presents no new issues or grounds of unpatentability. See Memory,
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`IPR2015-01353, Paper 11 at 6 (instituting IPR and granting motion for joinder where
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`“joinder should not necessitate any additional briefing or discovery from Patent
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`Owner beyond that already required in [the original IPR]”). Further, Petitioner
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`consents to any trial schedule adopted in the Microsoft IPR. There are no new issues
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`for the Board to address and Patent Owner will not be required to present any
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`additional evidence or argument. The Patent Owner’s Response, if any, will also not
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`be negatively impacted because the substantive issues presented in the Petition are
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`identical to the issues presented in the Microsoft IPR. Patent Owner will not be
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`required to provide any additional analysis or argument beyond what it will already
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`provide in the Microsoft IPR. Accordingly, joinder with the Microsoft IPR should
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`not unduly burden or negatively impact any trial schedule.
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`4. Joinder Will Simplify Briefing Because Petitioner Agrees to
`Consolidated Filings and to Participate in an Understudy Role
`if Microsoft Remains
`Petitioner agrees to take an “understudy” role in a joined proceeding, which
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`will simplify briefing and discovery. For efficiency’s sake, Petitioner will:
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`6
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`
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`1. Adhere to all applicable deadlines in the Microsoft IPR;
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`2. Submit “consolidated” filings with the Microsoft, as set forth above
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`in the statement of precise relief requested;
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`3. Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`4. Refrain from requesting or reserving additional oral hearing time; and
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`5. Assume a second-chair role as long as Microsoft remains in the
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`proceeding.1
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`See, e.g., HTC Corp. v. Uniloc 2017 LLC, IPR2018-01631, Paper 9 at 7 (P.T.A.B.
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`Jan. 25, 2019) (agreeing to “second-chair” role and other procedural concessions,
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`such as “consolidated” responses); Enzymotech Ltd. v. Neptune Techs., IPR2014-
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`00556, Paper 19 (P.T.A.B. July 9, 2014) (agreeing to similar procedural
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`concessions); Gillette Co. v. Zond, IPR2014-01016, Paper 13 (P.T.A.B. Nov. 10,
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`2014) (same). By Petitioner accepting an “understudy” role, the parties can comply
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`with the trial schedule assigned to the Microsoft IPR without any duplicative efforts
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`by the Board or Patent Owner. These steps minimize the possibility of any
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`1 For clarity, should Microsoft’s participation in the Microsoft IPR terminate,
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`Petitioner would take over primary responsibility for subsequent filings and
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`discovery.
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`7
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`complication or delay from joinder. See Memory, IPR2015-01353, Paper 11 at 6-7.
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`Joinder will further simplify briefing because Patent Owner will no longer be
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`burdened with preparing this response.
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`5. Joinder Will Not Prejudice Patent Owner
`As noted above, Petitioner’s joinder in the Microsoft IPR proceeding will not
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`result in any prejudice to Patent Owner. No additional grounds or arguments are
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`being introduced; no issues are being added; and no additional discovery, briefing,
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`or oral argument should be necessary because of Petitioner’s joinder. Rather than
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`prejudice Patent Owner, joinder would beneficially allow Patent Owner to litigate
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`the same patentability issues with both Microsoft and Petitioner efficiently and in a
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`coordinated manner. Thus, joinder is in the interest of not only the Board and
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`Petitioner, but also Patent Owner.
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`IV. CONCLUSION
`Petitioner’s requested joinder will not affect the substance, procedure, or
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`scheduling of the Microsoft IPR. Petitioner files this motion under the statutory
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`joinder provisions as contemplated by the AIA. Joinder will simplify the issues and
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`promote efficiency, justice, and speed. Petitioner thus respectfully requests inter
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`partes review of the ’289 patent and joinder with the Microsoft IPR.
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`8
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`Dated: August 22, 2024
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`Respectfully submitted,
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`/Erika H. Arner/
`Erika H. Arner
`Lead Counsel
`Reg. No. 57,540
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`9
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies
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`that a copy of
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`the
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`foregoing
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`PETITIONER’S MOTION FOR JOINDER was served on August 22, 2024, via
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`FedEx Priority Overnight on the correspondence address of record indicated in the
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`Patent Office’s Patent Center system for U.S. Patent No. 9,679,289.
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`PATENT LAW WORKS/PROXENSE
`Greg Sueoka
`4516 South 700 East, Suite 290
`Salt Lake City, UT 84107
`
`A courtesy copy is also being sent via email to Patent Owner’s counsel in
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`Proxense, LLC v. Google LLC, No. 6:23-cv-00320 (W.D. Tex.), where Patent Owner
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`has asserted the subject patent:
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`David L. Hecht
`dhecht@hechtpartners.com
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`Maxim Price
`mprice@hechtpartners.com
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`Conor B. McDonough
`cmcdonough@hechtpartners.com
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`Yi Wen Wu
`wwu@hechtpartners.com
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`HECHT PARTNERS LLP
`125 Park Avenue, 25th Floor
`New York, New York 10017
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`Brian D. Melton
`bmelton@susmangodfrey.com
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`10
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`Geoffrey L. Harrison
`gharrison@susmangodfrey.com
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`Meng Xi
`mxi@susmangodfrey.com
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`Bryce T. Barcelo
`bbarcelo@susmangodfrey.com
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`SUSMAN GODFREY L.L.P.
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002-5096
`
`Lear Jiang
`ljiang@susmangodfrey.com
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`SUSMAN GODFREY L.L.P.
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, California 90067-6029
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`Dated: August 22, 2024
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`By: /Daniel E. Doku/
`Daniel E. Doku
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`11
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