UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`APPLE INC.,
`
`Petitioner,
`
` v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`____________________
`
`Case No. IPR2024-01486
`
`U.S. Patent No. 8,352,730
`_________________
`
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2024-00775
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`APPLE INC.,
`
`Petitioner,
`
` v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`____________________
`
`Case No. IPR2024-01486
`
`U.S. Patent No. 8,352,730
`_________________
`
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2024-00775
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ..................... 1
`I.
`STATEMENT OF MATERIAL FACTS .................................................... 2
`II.
`III. STATEMENT OF THE PRECISE RELIEF REQUESTED ........................ 2
`A.
`LEGAL STANDARD .................................................................................. 2
`B.
`PETITIONER’S MOTION FOR JOINDER IS TIMELY ...................................... 3
`C.
`EACH FACTOR WEIGHS IN FAVOR OF JOINDER ....................................... 3
`1.
`Joinder is Appropriate ................................................................. 3
`2.
`Petitioner Proposes No New Grounds of Unpatentability ........... 4
`3.
`Joinder Will Not Unduly Burden or Negatively Impact the
`Microsoft IPR Trial Schedule ...................................................... 4
`Procedures to Simplify Briefing and Discovery .......................... 5
`4.
`IV. GENERAL PLASTIC IS INAPPLICABLE ................................................. 7
`V.
`CONCLUSION ............................................................................................ 11
`
`
`
`
`
`ii
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Apple Inc. (“Petitioner”) respectfully submits this Motion for Joinder,
`
`together with a Petition for Inter Partes Review of U.S. Patent No. 8,352,730 (“’730
`
`Patent”) (IPR2024-01486 “the 1486 Petition”) filed contemporaneously herewith.
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner requests
`
`institution of an inter partes review and joinder with the inter partes review in
`
`Microsoft Corp. v. Proxense, LLC, IPR2024-00775 (“the Microsoft IPR”).1 The
`
`1486 Petition is also narrowly tailored to the same claims, prior art, and grounds for
`
`unpatentability that are the subject of the Microsoft IPR. In addition, Petitioner is
`
`willing to streamline discovery and briefing. Petitioner understands that Microsoft
`
`does not oppose Petitioner’s request for joinder.
`
`Petitioner submits that joinder is appropriate because it will not unduly burden
`
`or prejudice the parties to the Microsoft IPR while efficiently resolving the question
`
`of the ’730 Patent’s validity in a single proceeding.
`
`
`
`
`
`
`1 Microsoft Corporation has filed a Conditional Motion for Joinder of Google LLC
`
`v. Proxense, LLC, IPR2024-00232 (“the Google IPR”) challenging the ’730 Patent.
`
`See Microsoft Corporation v. Proxense, LLC, IPR2024-01326, Paper 2.
`
`
`
`1
`
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`On April 19, 2024, Microsoft Corp. filed a petition for inter partes
`1.
`
`review in IPR2024-00775 (“the Microsoft Petition”) requesting cancellation of
`
`claims 1-17 of the ʼ730 Patent.
`
`2.
`
`The Patent Owner filed its preliminary response in the Microsoft IPR
`
`on August 21, 2024, setting a deadline for the Board to issue an institution decision
`
`of November 21, 2024. IPR2024-00775, Paper 8 (Aug. 21, 2024); 35 U.S.C.
`
`§ 315(b).
`
`3.
`
`Contemporaneously with this Motion, Petitioner filed the 1486 Petition
`
`for Inter Partes Review requesting cancellation of claims 1-17 of the ʼ730 Patent,
`
`which is substantively identical to the Microsoft Petition.
`
`III. STATEMENT OF THE PRECISE RELIEF REQUESTED
`A.
`Legal Standard
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
`
`inter partes review petition to an instituted inter partes review proceeding. See 35
`
`U.S.C. § 315(c). A motion for joinder must be filed within one month of the Board
`
`instituting an original inter partes review. 37 C.F.R. § 42.122(b). In deciding
`
`whether to exercise its discretion and permit joinder, the Board considers factors,
`
`including: (1) the reasons why joinder is appropriate; (2) whether the new petition
`
`presents any new grounds of unpatentability; (3) what impact, if any, joinder would
`
`have on the trial schedule for the existing review; and (4) how briefing and discovery
`
`
`
`2
`
`
`
`may be simplified. Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper
`
`15 at 4 (April 24, 2013).
`
`B.
`Petitioner’s Motion for Joinder is Timely
`This Motion for Joinder is timely because it is filed before, and thus within one
`
`month of, any institution decision by the Board in the Microsoft IPR, the deadline for
`
`which is November 21, 2024. 37 C.F.R. § 42.122(b).
`
`C.
`Each Factor Weighs in Favor of Joinder
`Each of the four factors considered by the Board weighs in favor of joinder
`
`here. Specifically, the 1486 Petition does not present any new grounds of
`
`unpatentability; rather it is substantively identical to the Microsoft Petition. Further,
`
`joinder will have minimal, if any, impact on the trial schedule, as all issues are
`
`substantively identical and Petitioner will accept an “understudy” role. See Sony
`
`Corp. et al. v. Memory Integrity, LLC, IPR2015-01353, Decision Instituting IPR
`
`Review, Motion for Joinder, Paper 11 at 6; (granting IPR where petitioners requested
`
`an “understudy” role); see also IPR2015-01353, Motion for Joinder, Paper 4 at 5-7.
`
`Lastly, the briefing and discovery will be simplified by resolving all issues in a single
`
`proceeding.
`
`1.
`Joinder is Appropriate
`Joinder with the Microsoft IPR is appropriate because the 1486 Petition
`
`involves the same patent, challenges the same claims, relies on the same expert
`
`
`
`3
`
`
`
`declaration, and is based on the same grounds and combinations of prior art
`
`submitted in the Microsoft Petition. Id. The 1486 Petition is substantively identical
`
`to the Microsoft Petition, containing only minor differences related to only other
`
`issues associated with a different party filing the petition. The 1486 Petition presents
`
`no changes to the facts, citations, evidence, or arguments related to patentability
`
`presented in the Microsoft Petition. Because these proceedings are substantively
`
`identical, good cause exists for joining this proceeding with the Microsoft IPR so that
`
`the Board can efficiently resolve all grounds in both the 1486 Petition and Microsoft
`
`Petition in a single proceeding. Id.
`
`2.
`Petitioner Proposes No New Grounds of Unpatentability
`The 1486 Petition presents the same grounds of unpatentability as the
`
`Microsoft Petition.
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Microsoft IPR Trial Schedule
`Because the 1486 Petition is substantively identical to the Microsoft Petition,
`
`with the same grounds challenging the same claims as instituted by the Board, there
`
`are no new substantive issues for Patent Owner to address. Due to the same issues
`
`being presented in the 1486 Petition and the Microsoft Petition, Patent Owner will
`
`not be required to present any additional responses or arguments. See IPR2015-
`
`01353, Decision Instituting IPR, Motion for Joinder, Paper 11 at 6 (granting IPR and
`
`motion for joinder where “joinder should not necessitate any additional briefing or
`
`
`
`4
`
`
`
`discovery from Patent Owner beyond that already required in [the original IPR].”);
`
`see also IPR2015-01353, Motion for Joinder, Paper 4 at 5-7.
`
`The Patent Owner Response will also not be negatively impacted because the
`
`issues presented in the Microsoft Petition are identical to the issues presented in the
`
`1486 Petition. Patent Owner will not be required to provide any additional analysis
`
`or arguments beyond what it will already provide in responding to the Microsoft
`
`Petition. Also, because the 1486 Petition relies on the same expert and an identical
`
`declaration, only a single deposition is needed for the proposed joined proceeding.
`
`Joinder of this proceeding with the Microsoft IPR does not unduly burden or
`
`negatively impact the trial schedule in any meaningful way. Further, even if a small
`
`adjustment of the trial schedule was necessary, this is already provided for in the rules
`
`and is a routine undertaking by parties in IPR proceedings. See 37 C.F.R. § 42.100(c).
`
`Thus, a slight adjustment in the trial schedule, should one be needed, is not enough
`
`of a reason to deny joining the present 1486 Petition with the Microsoft IPR.
`
`4.
`Procedures to Simplify Briefing and Discovery
`The Microsoft Petition and 1486 Petition present substantively identical
`
`grounds of rejection, including the same art combinations against the same claims.
`
`Additionally, Petitioner explicitly agrees to take an “understudy” role, as described
`
`by the Board:
`
`“(a) all filings by [Petitioner] in the joined proceeding be consolidated
`
`
`
`5
`
`
`
`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].”
`
`Noven Pharmaceuticals, Inc. et al. v. Novartis AG et al., IPR2014-00550, Paper 38
`
`at 5 (Apr. 10, 2015) (emphasis in original). Petitioner will assume the primary role
`
`only if Microsoft ceases to participate in the Microsoft IPR.
`
`By Petitioner accepting an “understudy” role, Patent Owner and Petitioner can
`
`comply with the current trial schedule and avoid any duplicative efforts by the Board
`
`or the Patent Owner. These steps will minimize any potential complications or delay
`
`that potentially may result by joinder. See IPR2015-01353, Decision Instituting IPR,
`
`Paper 11 at 6-7 (granting IPR and motion for joinder because “joinder would
`
`increase efficiency by eliminating duplicative filings and discovery, and would
`
`reduce costs and burdens on the parties as well as the Board” where petitioners
`
`
`
`6
`
`
`
`agreed to an “understudy” role.); see also IPR2015-01353, Motion for Joinder, Paper
`
`4 at 6-7.
`
`Accordingly, joinder should be permitted. See IPR2015-01353, Decision
`
`Instituting IPR Review, Motion for Joinder, Paper 11 at 5-6 (granting institution of
`
`IPR and motion for joinder where petitioners relied “on the same prior art, same
`
`arguments, and same evidence, including the same expert and a substantively
`
`identical declaration.”); see also IPR2015-01353, Motion for Joinder, Paper 4 at 4-
`
`5.
`
`IV. GENERAL PLASTIC IS INAPPLICABLE
`In General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, the Board
`
`“recognize[d] the potential for abuse of the review process by repeated attacks on
`
`patents.” IPR2016-01357, slip op. 16–17 (PTAB Sept. 6, 2017) (Paper 19)
`
`(precedential). In General Plastic, the Board set forth a series of factors that may be
`
`analyzed for follow-on petitions to help conserve the finite resources of the Board.
`
`Petitioner respectfully submits that application of the General Plastic analysis is
`
`inapplicable here. In the current motion, Petitioner merely seeks to join Microsoft’s
`
`petition and does not present any new grounds. Petitioner also filed a petition against
`
`the ’730 Patent in IPR2024-01333 (“the 1333 IPR”), seeking to join the Google IPR
`
`(IPR2024-00232). As such, Petitioner respectfully submits that General Plastic does
`
`not apply in this circumstance because Petitioner would be taking an understudy role
`
`
`
`7
`
`
`
`in both the Microsoft IPR and the Google IPR, and the Board’s finite resources
`
`would not be impacted. Moreover, a joinder petition in these circumstances is not
`
`the type of serial petition to which General Plastic applies. The PTAB has
`
`previously stated that a joinder petition “effectively neutralizes” a General Plastic
`
`analysis. See Apple Inc. v. Uniloc 2017 LLC, IPR2018-00580, Paper 13 at 10 (PTAB
`
`Aug. 21, 2018) (instituting a joinder petition where joinder petitioner previously
`
`filed a non-instituted IPR, stating joinder petitioner’s joinder motion agreeing to a
`
`passive understudy role “effectively neutraliz[es] the General Plastic factors”); see
`
`also Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 10 (PTAB Oct.
`
`30, 2018) (instituting a joinder petition where joinder petition previously filed a non-
`
`instituted IPR, stating the joinder motion “effectively obviates any concerns of serial
`
`harassment and unnecessary expenditure of resources”). Furthermore, the Patent
`
`Owner did not even argue that the General Plastic factors warranted exercising the
`
`Board’s discretion to deny the instituted challenges from the Microsoft IPR that
`
`Petitioner now seeks to join. See generally IPR2024-00775, Paper 8.
`
`In the event the Board does analyze the General Plastic factors, those factors
`
`heavily weigh in favor of instituting the present IPR. General Plastic at 16.
`
`Regarding the first factor, Petitioner has only filed another joinder petition
`
`against the ’730 Patent (the 1333 IPR) for which Petitioner has agreed to an
`
`understudy role. This factor weighs in favor of institution because a joinder petition
`
`
`
`8
`
`
`
`“effectively neutralizes” a General Plastic analysis. See Apple Inc. v. Uniloc 2017
`
`LLC, IPR2018-00580, Paper 13 at 10 (PTAB Aug. 21, 2018).
`
`The second factor is whether at the time of filing the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition. This
`
`factor is neutral, if not inapplicable, in the General Plastic analysis. Here, the
`
`Microsoft Petition and the 1486 Petition share the same prior art because the 1486
`
`Petition is a “copycat” of the Microsoft Petition. Because Petitioner is merely
`
`seeking to join in an understudy role, the factor is neutral, at best, in determining
`
`whether to institute.
`
`The third factor is whether at the time of filing of the second petition the
`
`petitioner already received the patent owner’s preliminary response to the first
`
`petition or received the Board’s decision on whether to institute review in the first
`
`petition. Because this is a Motion for Joinder requesting an understudy role,
`
`Petitioner is submitting a substantively identical petition and has not added to, or
`
`changed, any of the substantive arguments from the Microsoft Petition. Moreover,
`
`because the present 1486 Petition is submitted as a joinder and Petitioner will serve
`
`an understudy role, the 1486 Petition is not an attempt to harass the Patent Owner or
`
`otherwise engage in serial, tactical filings. Thus, this factor weighs against denial of
`
`joinder/institution.
`
`
`
`9
`
`
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second
`
`petition, and the fifth factor is whether the petitioner provides adequate explanation
`
`for the time elapsed between the filings of multiple petitions directed to the same
`
`claims of the same patent. In the context of a joinder motion where Petitioner will
`
`be taking an understudy role, these factors are inapplicable.
`
`The sixth factor is the finite resources of the Board. Allowing Petitioner’s
`
`joinder motion where it will serve in an understudy role will not impact the Board’s
`
`resources beyond those resources the Board dedicates to the instant joinder motion.
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on which the Director notices
`
`institution of review. As noted above, joining Petitioner should not impact the
`
`schedule. Accordingly, this factor weighs in favor of institution.
`
`An eighth factor identified by the Board in Shenzhen is the extent to which
`
`the petitioner and any prior petitioner(s) were similarly situated defendants or
`
`otherwise realized a similar-in-time hazard regarding the challenged patent.
`
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898,
`
`Paper 9 at 7, 13-14 (PTAB Oct. 1, 2018) (noting “the purpose of proposed Factor 8
`
`is to discourage tactical filing of petitions over time by parties that faced the same
`
`threat at the same time” such that earlier petitions are filed as “test case(s)” to gain
`
`
`
`10
`
`
`
`“tactical advantage”). Petitioner is not similarly situated as the petitioner for the
`
`Microsoft IPR. The petitioner for the Microsoft IPR was sued on the ’730 Patent in
`
`a case filed on May 2, 2023. The Petitioner here was sued on the ’730 Patent over
`
`ten months later, in a case filed on March 18, 2024. Furthermore, because the 1486
`
`Petition does not introduce any new grounds of unpatentability and will effectively
`
`merge into a single proceeding with the Microsoft IPR, no tactical advantage is
`
`gained here.
`
`Thus, none of the General Plastic factors weighs against institution and
`
`joinder in this situation.
`
`V. CONCLUSION
`Based on the factors discussed above, Petitioner respectfully requests that the
`
`Board grant the 1486 Petition for Inter Partes Review of U.S. Patent No8,352,730
`
`and then grant joinder with the Microsoft IPR2024-00775 proceeding.
`
`Date: October 16, 2024
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`DUANE MORRIS LLP
`
`BY: /Philip W. Woo/
`Philip W. Woo
`USPTO Reg. No. 39,880
`Duane Morris LLP
`260 Homer Avenue #202
`Palo Alto, CA 94301
`
`ATTORNEY FOR PETITIONER
`
`11
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of the Motion for
`
`Joinder has been served via Federal Express, postage prepaid, to Patent Owner, by
`
`serving the correspondence address of record for the ’730 Patent:
`
`89194 - Patent Law Works/Proxense
`Greg Sueoka
`4516 South 700 East, Suite 290
`Salt Lake City, UT
`UNITED STATES
`
`and, by email, upon counsel of record for the Patent Owner in the litigation before
`
`the United States District Court for the Western District of Texas:
`
`Brian D. Melton
`Susman Godfrey, LLP
`1000 Louisiana St.
`Suite 5100
`Houston, TX 77002
`Email: bmelton@susmangodfrey.com
`
`
`
`
`BY: /Philip W. Woo/
`Philip W. Woo, Reg. No. 39,880
`Duane Morris LLP
`260 Homer Avenue #202
`Palo Alto, CA 94301
`P: (650) 847 4145
`F: (650) 644 0150
`pwwoo@duanemorris.com
`
`ATTORNEY FOR PETITIONER
`
`
`
`
`
`12
`
`
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