Trials@uspto.gov
`571.272.7822
`
`Paper 8
`Entered: October 8, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PROXSENSE LLC,
`Patent Owner.
`____________
`
`IPR2024-01398
`Patent 8,646,042 B1
`____________
`
`
`
`Before THU A. DANG, DAVID C. McKONE, and
`NORMAN H. BEAMER Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`Granting Motion for Joinder
`35 U.S.C. § 314; 35 U.S.C. § 315(c)
`
`
`
`571.272.7822
`
`Paper 8
`Entered: October 8, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PROXSENSE LLC,
`Patent Owner.
`____________
`
`IPR2024-01398
`Patent 8,646,042 B1
`____________
`
`
`
`Before THU A. DANG, DAVID C. McKONE, and
`NORMAN H. BEAMER Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`Granting Motion for Joinder
`35 U.S.C. § 314; 35 U.S.C. § 315(c)
`
`
`
`
`IPR2024-01398
`Patent 8,646,042 B1
`
`I.
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1, 5, 6, 8–11, 13, and 14 of U.S. Patent No.
`8,646,042 B1 (Ex. 1001, “the ’042 patent”). Additionally, Petitioner filed a
`Motion for Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and
`42.122(b) to Related Inter Partes Review IPR2024-00573. Paper 3
`(“Joinder Mot.”). In an October 1, 2024, teleconference among the panel
`and counsel for Petitioner, Patent Owner, and counsel for Microsoft Corp.
`(the petitioner in the IPR2024-00573 (“the Microsoft IPR”)), Patent Owner
`represented that it did not oppose Petitioner’s Joinder Motion and that we
`should proceed to join Petitioner as a party to the Microsoft IPR. Paper 7, 4.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The
`standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” For the
`reasons explained below, we institute an inter partes review of the ’042
`patent. We also join Petitioner as a party to IPR2024-00573.
`
`
`II.
`INSTITUTION OF INTER PARTES REVIEW
`A. Evidence
`Petitioner relies on the references listed below.
`
`Name
`
`Reference
`
`Date
`
`Giobbi-157
`
`US 2007/0245157 A1 Pub. Oct. 18, 2007
`(filed May 5, 2007)
`
`2
`
`Exhibit
`No.
`1005
`
`
`
`US 2004/0255139 A1 Pub. Dec. 6, 2004
`(filed May 17, 2004)
`May 26, 2015 (filed
`Sept. 30, 2014)
`Pub. June 1, 2005
`(filed Sept. 30, 2004)
`
`US 9,042,819 B2
`
`EP 1,536,306 A1
`
`Exhibit
`No.
`1006
`
`1007
`
`1008
`
`IPR2024-01398
`Patent 8,646,042 B1
`Name
`
`Reference
`
`Date
`
`Giobbi-139
`
`Dua
`
`Broadcom
`
`
`Petitioner also relies on the Declaration of Patrick Traynor, Ph.D.
`(Ex. 1003).
`
`
`B. The Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 1):
`Reference(s)
`35 U.S.C. §
`Claim(s) Challenged
`Giobbi-157, Giobbi-139
`§ 103(a)1
`1, 5, 6, 8–11, 13, 14
`
`Giobbi-157, Giobbi-139, Dua
`
`§ 103(a)
`
`1, 5, 6, 8–11, 13, 14
`
`Broadcom
`
`
`§ 103(a)
`
`10, 11, 13, 14
`
`C. Institution of Inter Partes Review
`This Petition is substantially identical to the petition in the Microsoft
`IPR, challenging the same patent and claims, based on the same grounds of
`unpatentability, and relying upon the same evidence (including the same
`prior art combinations supported by the same expert declaration). According
`to Petitioner, “the 1398 Petition involves the same patent, challenges the
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’042 patent has an
`effective filing date before the effective date of the relevant provision of the
`AIA, we cite to the pre-AIA version of § 103.
`
`3
`
`
`
`IPR2024-01398
`Patent 8,646,042 B1
`same claims, relies on the same expert declaration, and is based on the same
`grounds and combinations of prior art submitted in the Microsoft Petition.”
`Joinder Mot. 3; accord id. at 5 (“The Microsoft Petition and 1398 Petition
`present substantively identical grounds of rejection, including the same art
`combinations against the same claims.”).
`Petitioner undertakes, if the Petition and Joinder Motion are granted,
`to assume an “understudy” role, and will not take an active role in the inter
`partes review proceeding unless the petitioner in the Microsoft IPR ceases to
`participate in the instituted IPR. Id. at 5–6 (citing Noven Pharmaceuticals,
`Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5 (PTAB Apr. 10, 2015)).
`Petitioner represents that it “can comply with the current trial schedule and
`avoid any duplicative efforts by the Board or the Patent Owner.” Id. at 6.
`Thus, Petitioner argues, “[t]hese steps will minimize any potential
`complications or delay that potentially may result by joinder.” Id.
`In view of these representations by Petitioner and Patent Owner’s
`statement that it does not oppose joinder, and having reviewed the Petition,
`we determine that, under the current circumstances, it is appropriate to
`exercise our discretion to institute inter partes review of the challenged
`claims based upon the same grounds authorized and for the same reasons
`discussed in the Microsoft DI (Microsoft IPR, Paper 11). Petitioner has
`shown a reasonable likelihood that it would prevail with respect to each of
`the claims challenged in the Petition for the same reasons given in the
`Microsoft DI considering the same issues.
`
`
`III. PETITIONER’S JOINDER MOTION
`As noted above, Petitioner requests joinder of this proceeding with the
`Microsoft IPR. Joinder Mot. 1.
`
`4
`
`
`
`IPR2024-01398
`Patent 8,646,042 B1
`Joinder in inter partes review proceedings is subject to the provisions
`of 35 U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`“To join a party to an instituted [inter partes review (IPR)], the plain
`language of § 315(c) requires two different decisions.” Facebook, Inc. v.
`Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First,
`the statute requires that the Director (or the Board acting through a
`delegation of authority) . . . determine whether the joinder applicant’s
`petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect
`joinder, § 315(c) requires the Director to exercise h[er] discretion to decide
`whether to ‘join as a party’ the joinder applicant.” Id.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to joinder. See 37 C.F.R. § 42.20(c). A motion for joinder should:
`(1) set forth the reasons joinder is appropriate; (2) identify any new grounds
`of unpatentability asserted in the petition; and (3) explain what impact (if
`any) joinder would have on the trial schedule for the existing review. See
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB
`Apr. 24, 2013).
`A motion for joinder must be filed “no later than one month after the
`institution date of any inter partes review for which joinder is requested.”
`37 C.F.R. § 42.122(b). Petitioner argues that the Joinder Motion is timely
`because it was filed within one month of the August 13, 2024, Microsoft DI.
`Joinder Mot. 3.
`
`5
`
`
`
`IPR2024-01398
`Patent 8,646,042 B1
`Petitioner argues that the Petition “is . . . narrowly tailored to the same
`claims, prior art, and grounds for unpatentability that are the subject of the
`Microsoft IPR.” Id. at 1; see also id. at 3 (“[J]oinder will have minimal, if
`any, impact on the trial schedule, as all issues are substantively identical and
`Petitioner will accept an ‘understudy’ role.”). As we explain above, the
`Petition is substantially identical to the petition in the Microsoft IPR.
`Petitioner is “willing to streamline discovery and briefing” and
`“accept an ‘understudy’ role.” Id. at 1, 3; see also id. at 5 (“Petitioner
`explicitly agrees to take an ‘understudy’ role, as described by the Board” in
`Noven Pharmaceuticals, IPR2014-00550, Paper 38 at 5). In particular,
`Petitioner agrees to the following terms:
`(a) all filings by [Petitioner] in the joined proceeding be
`consolidated with [the filings of the petitioner in the Microsoft
`IPR], unless a filing solely concerns issues that do not involve
`[the petitioner in the Microsoft IPR];
`(b) [Petitioner] shall not be permitted to raise any new grounds
`not already instituted by the Board in the [Microsoft] IPR, or
`introduce any argument or discovery not already introduced by
`[the petitioner in the Microsoft IPR];
`(c) [Petitioner] shall be bound by any agreement between
`[Patent Owner] and [the petitioner in the Microsoft IPR]
`concerning discovery and/or depositions; and
`(d) [Petitioner] at deposition shall not receive any direct, cross-
`examination or redirect time beyond that permitted for [the
`petitioner in the Microsoft IPR] alone under either 37 C.F.R.
`§ 42.53 or any agreement between [Patent Owner] and [the
`petitioner in the Microsoft IPR].
`Id. at 5–6 (quoting Noven Pharmaceuticals, IPR2014-00550, Paper 38 at 5
`(alterations by Petitioner)). Petitioner represents that it “will assume the
`primary role only if Microsoft ceases to participate in the Microsoft IPR.”
`Id. at 6.
`
`6
`
`
`
`IPR2024-01398
`Patent 8,646,042 B1
`A. Whether the Petition Warrants Institution
`“The statute makes clear that the joinder decision is made after a
`determination that a petition warrants institution, thereby affecting the
`manner in which an IPR will proceed.” Facebook, 973 F.3d at 1332 (citing
`Thyrv, Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367, 1377 (2020)).
`As we explain above, Petitioner has shown a reasonable likelihood
`that it would prevail with respect to each of the claims challenged in the
`petition. Thus, Petitioner has shown that the Petition warrants institution.
`
`
`B. Whether to Join Petitioner as a Party to the Microsoft IPR
`The Joinder Motion, filed on September 13, 2024, was filed one
`month after the August 13, 2024, date of the Microsoft DI. Thus, the
`Joinder motion is timely. See 35 U.S.C. § 316(a)(12) (“The Director shall
`prescribe regulations— . . . (12) setting a time period for requesting joinder
`under section 315(c).”); 37 C.F.R. § 42.122(b) (“Any request for joinder
`must be filed, as a motion under § 42.22, no later than one month after the
`institution date of any inter partes review for which joinder is requested.”).
`As noted above, Patent Owner represented that it did not oppose
`Petitioner’s Joinder Motion and that we should proceed to join Petitioner as
`a party to the Microsoft IPR. Paper 7, 4. Petitioner represents that
`Microsoft does not oppose joinder. Joinder Mot. 1.
`The Petition does not present any new grounds or issues. Joinder
`Mot. 1, 3–5. Petitioner agrees to the schedule in the Microsoft IPR and,
`thus, has shown that the trial schedule is not likely to be affected by joinder.
`Id. at 5–6. No changes in the schedule are anticipated or necessary, and the
`limited participation, if at all, of Petitioner will not impact the timeline of the
`ongoing trial.
`
`7
`
`
`
`IPR2024-01398
`Patent 8,646,042 B1
`Petitioner has agreed to an “understudy” role, which will simplify
`matters in the ongoing Microsoft IPR and will be an efficient use of
`resources. Id. at 3, 5–6. Petitioner will assume a primary role only if the
`Microsoft IPR petitioner ceases to participate in the IPR. Id. at 6.
`Accordingly, we determine that Petitioner has met its burden of
`showing that we should exercise our discretion to join Petitioner to the
`Microsoft IPR (IPR2024-00573).
`
`
`IV. CONCLUSION
`Petitioner has established a reasonable likelihood that it would prevail
`with respect to at least one claim of the ’042 patent.
`Our factual findings, conclusions of law, and determinations at this
`stage of the proceeding are preliminary, and based on the evidentiary record
`developed thus far. This is not a final decision as to the patentability of
`claims for which inter partes review is instituted. Our final decision will be
`based on the record as fully developed during trial.
`Petitioner has shown that we should exercise our discretion to join
`Petitioner to the Microsoft IPR (IPR2024-00573).
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is instituted as to claims 1, 5, 6, 8–11, 13, and 14 of the ’042 patent
`on the grounds set forth in the Petition;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision;
`
`8
`
`
`
`IPR2024-01398
`Patent 8,646,042 B1
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2024-00573 (Paper 3) is granted, and Apple Inc. is hereby joined with
`Microsoft Corp. as a petitioner entity in IPR2024-00573;
`FURTHER ORDERED that the grounds on which trial in IPR2024-
`00573 were instituted are unchanged, and no other grounds are added in
`IPR2024-00573;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2024-00573 (Paper 12) shall govern the trial schedule in IPR2024-
`00573;
`FURTHER ORDERED that Petitioner’s role in IPR2024-00573 shall
`be limited as stated by Petitioner in the Joinder Motion (Joinder Mot. 5–6)
`unless and until Microsoft Corp. is terminated from that proceeding;
`FURTHER ORDERED that the case caption in IPR2024-00573 shall
`be changed to reflect joinder of Apple Inc. as a petitioner entity in
`accordance with the attached example;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of IPR2024-00573; and
`FURTHER ORDERED that all further filings shall be made in
`IPR2024-00573.
`
`
`9
`
`
`
`IPR2024-01398
`Patent 8,646,042 B1
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and APPLE INC.,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2024-005732
`Patent 8,646,042 B1
`____________
`
`
`
`
`
`
`
`
`
`
`2 IPR2024-01398 has been joined with this proceeding.
`
`10
`
`
`
`IPR2024-01398
`Patent 8,646,042 B1
`
`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
`
`
`PATENT OWNER:
`
`David L Hecht
`James Zak
`HECHT PARTNERS LLP
`dhecht@hechtpartners.com
`jzak@hechtpartners.com
`
`
`
`11
`
`
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