Paper 7
`Trials@uspto.gov
`571-272-7822 Entered: October 3, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`PROXENSE, LLC,
`Patent Owner.
`
`IPR2024-01333 (Patent 8,352,730 B2)
`IPR2024-01334 (Patent 8,886,954 B1)
`IPR2024-01335 (Patent 9,298,905 B1)
`IPR2024-01398 (Patent 8,646,042 B1)
`IPR2024-01399 (Patent 8,646,042 B1)1
`
`
`
`
`
`
`Before THU A. DANG, KEVIN F. TURNER, DAVID C. MCKONE, and
`NORMAN H. BEAMER, Administrative Patent Judges.2
`
`MCKONE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 The combined caption is for administrative convenience only and does not
`indicate that the above-listed proceedings have been joined. The parties are
`not authorized to use this caption without express permission from the
`Board.
`2 The four listed judges represent overlapping panels on several proceedings.
`This is not an expanded panel.
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: October 3, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`PROXENSE, LLC,
`Patent Owner.
`
`IPR2024-01333 (Patent 8,352,730 B2)
`IPR2024-01334 (Patent 8,886,954 B1)
`IPR2024-01335 (Patent 9,298,905 B1)
`IPR2024-01398 (Patent 8,646,042 B1)
`IPR2024-01399 (Patent 8,646,042 B1)1
`
`
`
`
`
`
`Before THU A. DANG, KEVIN F. TURNER, DAVID C. MCKONE, and
`NORMAN H. BEAMER, Administrative Patent Judges.2
`
`MCKONE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 The combined caption is for administrative convenience only and does not
`indicate that the above-listed proceedings have been joined. The parties are
`not authorized to use this caption without express permission from the
`Board.
`2 The four listed judges represent overlapping panels on several proceedings.
`This is not an expanded panel.
`
`
`
`
`IPR2024-01333 (Pat. 8,352,730 B2); IPR2024-01334 (Pat. 8,886,954 B1);
`IPR2024-01335 (Pat. 9,298,905 B1); IPR2024-01398 (Pat. 8,646,042 B1);
`IPR2024-01399 (Pat. 8,646,042 B1)
`
`
`BACKGROUND
`Apple Inc. (“Apple”) e-mailed the Board to request a conference call
`to discuss its motions for joinder filed in IPR2024-01398 and IPR2024-
`01399. Apple seeks to join IPR2024-00573 and IPR2024-00782,
`respectively. On October 1, 2024, the Board conducted a conference call
`with counsel for Apple, Google LLC (“Google”), Microsoft Corporation
`(“Microsoft”), and Proxense, LLC (“Proxense” or “Patent Owner”) to
`discuss how to timely manage the proceedings. A court reporter was not
`present on the call. This Order serves as the official record of the
`teleconference.
`
`DISCUSSION
`In IPR2024-01398 and IPR2024-01399, Apple seeks to join IPR2024-
`00573 and IPR2024-00782. However, there are several pending motions for
`joinder filed in the above-listed proceedings. We raised the additional cases
`beyond IPR2024-01398 and IPR2024-01399 in order to manage these cases
`efficiently and because counsel for all four parties attended the
`teleconference.3 A table summarizing the motions for joinder is below.
`
`Petitioner
`
`Proceeding
`IPR2024-01318
`IPR2024-01319
`IPR2024-01320
`
`3 We reminded counsel for Patent Owner to make formal appearances in,
`and submit mandatory notices in, IPR2024-01318, IPR2024-01319,
`IPR2024-01320, IPR2024-01398, and IPR2024-01399. See 37 C.F.R.
`§§ 42.8, 42.10(a)–(b).
`
`
`Proceeding to join Challenged Patent
`IPR2024-00573
`8,646,042 B1
`IPR2024-00407
`9,679,289 B1
`IPR2024-00405
`10,073,960 B1
`
`
`
`IPR2024-01333 (Pat. 8,352,730 B2); IPR2024-01334 (Pat. 8,886,954 B1);
`IPR2024-01335 (Pat. 9,298,905 B1); IPR2024-01398 (Pat. 8,646,042 B1);
`IPR2024-01399 (Pat. 8,646,042 B1)
`
`
`Proceeding
`IPR2024-01326
`IPR2024-01327
`IPR2024-01328
`IPR2024-01333
`IPR2024-01334
`IPR2024-01335
`IPR2024-01398
`IPR2024-01399
`
`Proceeding to join Challenged Patent
`IPR2024-00232
`8,352,730 B2
`IPR2024-00233
`8,886,954 B1
`IPR2024-00234
`9,298,905 B1
`IPR2024-00232
`8,352,730 B2
`IPR2024-00233
`8,886,954 B1
`IPR2024-00234
`9,298,905 B1
`IPR2024-00573
`8,646,042 B1
`IPR2024-00782
`8,646,042 B1
`
`Petitioner
`Microsoft
`Microsoft
`Microsoft
`Apple
`Apple
`Apple
`Apple
`Apple
`
`During the conference call, counsel for Apple, Google, Microsoft, and
`Patent Owner discussed the pending motions for joinder.
`Apple explained that it was sued by Patent Owner more than ten
`months after Google and Microsoft and could have filed its own independent
`petitions for inter partes review. However, Apple represents that it decided
`to file joinder petitions seeking inter partes review with accompanying
`motions for joinder in order to save the parties’ and the Board’s resources.
`Consistent with its Motions for Joinder, Apple reiterated that it intends to
`take an understudy role in the proceedings it seeks to join unless the other
`petitioner(s) are dismissed from the proceedings. Apple also represented
`that it included stipulations under Sand Revolution in each of its joinder
`petitions to indicate that will not pursue the grounds raised in its petition in
`the parallel district court litigation with respect to the claims for which trial
`is instituted if the proceeding is instituted and joinder is granted. See Sand
`Revolution II, LLC v. Continental Intermodal Group–Trucking LLC,
`IPR2019- 01393, Paper 24 at 7 (PTAB Jun. 16, 2020).
`Apple filed a document ranking its joinder petitions and motions for
`joinder in IPR2024-01398 and IPR2024-01399. Apple indicated that its
`
`3
`
`
`
`IPR2024-01333 (Pat. 8,352,730 B2); IPR2024-01334 (Pat. 8,886,954 B1);
`IPR2024-01335 (Pat. 9,298,905 B1); IPR2024-01398 (Pat. 8,646,042 B1);
`IPR2024-01399 (Pat. 8,646,042 B1)
`
`joinder petition and motion for joinder in IPR2024-01399 takes precedence
`over its joinder petition and motion for joinder in IPR2024-01398 if the
`Board determines that it will only institute one of the joinder petitions in
`IPR2024-01398 and IPR2024-01399.
`Google stated that it filed its joinder petitions and motions for joinder
`conditionally and with rankings. Google requests that its motions for joinder
`be held in abeyance until, and only if, its earlier-filed petitions are denied.
`Google also indicated that its earlier-filed petitions take precedence over its
`joinder petitions. See, e.g., IPR2024-01318, Paper 4 (Petitioner’s
`Supplemental Paper and Notice Ranking Petitions), 1.4
`Microsoft explained that it filed its joinder petitions and motions for
`joinder conditionally. Microsoft requests that the Board grant its motions
`for joinder if, and only if, the Board denies institution of its earlier-filed
`petitions. See, e.g., IPR2024-01326, Paper 2 (Petitioner’s Conditional
`Motion for Joinder), 1.5
`Patent Owner stated that it does not oppose joinder in the Apple
`joinder proceedings6 and agreed that we should proceed to grant those
`motions. We infer from this that Patent Owner will not file preliminary
`responses in the Apple joinder proceedings.
`Patent Owner has concerns with Google’s motions for joinder because
`the parties have exchanged expert reports in the parallel district court
`
`
`4 Google filed similar statements in IPR2024-01319 and IPR2024-01320.
`5 Microsoft filed similar statements in IPR2024-01327 and IPR2024-01328.
`6 We do not yet address Apple’s Joinder Motion in IPR2024-01399, as we
`have not determined yet whether to institute a trial in the proceeding Apple
`seeks to join, IPR2024-00782.
`
`4
`
`
`
`IPR2024-01333 (Pat. 8,352,730 B2); IPR2024-01334 (Pat. 8,886,954 B1);
`IPR2024-01335 (Pat. 9,298,905 B1); IPR2024-01398 (Pat. 8,646,042 B1);
`IPR2024-01399 (Pat. 8,646,042 B1)
`
`litigation and a trial is scheduled to occur in February 2025. Patent Owner
`stated that a trial is scheduled for May 2025 in the parallel district court
`litigation involving Microsoft. Patent Owner and Google agreed to meet and
`confer to discuss whether they can resolve any opposition Patent Owner
`might have to Google’s motions for joinder.
`Microsoft and Patent Owner also agreed to meet and confer to discuss
`whether they can resolve any opposition Patent Owner might have to
`Microsoft’s motions for joinder.
`Patent Owner represented that it intends to file requests for adverse
`judgment in the proceedings challenging U.S. Patent No. 9,298,905 B1. We
`informed the parties that we will address any such requests once Patent
`Owner files them. We requested that the parties provide us a with a status
`update on each of the above-listed proceedings and meet and confer to
`attempt to resolve any disputes.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties provide the Board with a status update
`summary of each of the above-listed proceedings via email to
`Trials@uspto.gov no later than October 8, 2024.
`
`5
`
`
`
`IPR2024-01333 (Pat. 8,352,730 B2); IPR2024-01334 (Pat. 8,886,954 B1);
`IPR2024-01335 (Pat. 9,298,905 B1); IPR2024-01398 (Pat. 8,646,042 B1);
`IPR2024-01399 (Pat. 8,646,042 B1)
`
`FOR PETITIONER:
`Philip W. Woo
`D. Stuart Bartow
`Monté T. Squire
`Paul Belnap
`DUANE MORRIS LLP
`PWWoo@duanemorris.com
`DSBartow@duanemorris.com
`MTSquire@duanemorris.com
`PHBelnap@duanemorris.com
`
`FOR PATENT OWNER:
`David L Hecht
`James Zak
`HECHT PARTNERS LLP
`dhecht@hechtpartners.com
`jzak@hechtpartners.com
`
`
`
`
`
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