From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Adam Seitz <adam.seitz@eriseip.com>
`Tuesday, October 19, 2021 10:15 PM
`Trials
`Chalynda Giles; Paul Hart; andy.ehmke.ipr@haynesboone.com; angela.oliver.ipr@haynesboone.com;
`Enrique Iturralde; Fred Fabricant; jon.bowser.ipr@haynesboone.com; Peter Lambrianakos;
`ptab@eriseip.com; scott.jarratt.ipr@haynesboone.com; Vincent Rubino
`PGR2021-00028 — Apple’s Request to Delay Termination in Order to File a Joinder Motion and
`Copycat Petition
`
` To the Board:
` I write on behalf of non-party Apple Inc. regarding PGR2021-00028.
` A joint motion to terminate was filed today by Petitioner (Google) and Patent Owner in instituted
`PGR2021-00028. Non-party Apple Inc. (“Apple”) respectfully requests that the Board delay its
`decision on the motion (or allow Apple to oppose the motion to terminate) so that Apple may file
`a copycat petition and motion for joinder by close of business tomorrow, October 20.
` On September 7, 2021, Apple was sued Patent Owner on Patent No. 10,600,046, the same patent
`subject to PGR in the current proceeding. Apple has been assessing the strengths of this
`proceeding as well as other pre- and post-institution PTAB proceedings challenging this, and
`other, patents asserted against Apple. PGR2021-00028 is the sole proceeding of Google’s that
`Apple intends to join. Apple’s internal preparation of a copycat petition and joinder motion was
`already underway when Google filed its motion to terminate. Because the patent challenged in
`PGR2021-00028 is no longer PGR-eligible, were the Board to terminate prior to considering
`Apple’s motion for joinder, this challenge would not be raised again at the PTAB and the work
`invested by the Board will be lost. In its motion for joinder, Apple will lay out in detail why the
`public interest favors preserving this challenge and allowing the Board to complete the invalidity
`analysis it has already determined is more likely than not to render the challenged claims
`unpatentable. See Foster v. Hallco Mfg. Co., 947 F.2d 469, 474 (Fed. Cir. 1991) (citing Lear, Inc. v.
`Adkins, 395 U.S. 653 (1969) (acknowledging a long-standing and broad public policy of
`eliminating invalid patents).
` Apple also intends to file a motion to waive the statutory 30-day joinder window. Under 37 C.F.R.
`§ 42.5(b-c), the Board “may waive or suspend” the 30-day window post-institution within which
`a party must move to join a proceeding upon "a showing of good cause or upon a Board decision
`that consideration on the merits would be in the interests of justice.” See Sony Corp. of Am. and
`Hewlett-Packard Co v. Network-1 Security Solutions, Inc., IPR2013-00495, Paper 13 (PTAB Sept.
`16, 2013) (permitting joinder outside the 30-day statutory window for a copycat petition that,
`like Apple’s planned joinder, did not expand the instituted grounds); Globalfoundries U.S. Inc. v.
`Godo Kaisha IP Bridge 1, IPR 2017-00925, Paper 12 (PTAB Jun. 9, 2017) (same). Here, Apple
`could not have moved to join PGR2021-00028 within 30 days of its institution because Apple was
`
`1
`
`RFCyber's Exhibit No. 2004, PGR2022-00003
`Page 001
`
`

`

`not sued until after the 30-day window had expired and, accordingly, had no reason to consider
`challenging the validity of the patent at issue.
` In sum, the interests of justice and public policy in eliminating invalid patents favor delaying
`decision on today’s motion to terminate until Apple files its copycat petition and motion for
`joinder by close of business tomorrow, October 20. Once these are filed, the Board can assess
`whether Google should be terminated as the petitioner leaving Apple to prosecute the proceeding
`as the sole petitioner. Doing so is the only means to preserve the work invested by the Board and
`to ensure the PTAB has an opportunity to render a final decision as to the patentability of the
`challenged claims.
` Sincerely,
` Adam Seitz
`Reg. No. 52,206
`Erise IP
`Lead Counsel for Apple
`
` 
`
`2
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`RFCyber's Exhibit No. 2004, PGR2022-00003
`Page 002
`
`