`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`RFCYBER CORP.,
`Patent Owner.
`
`
`
`Patent No. 10,600,046
`Filing Date: June 2, 2015
`Issue Date: March 24, 2020
`
`Inventors: Xiangzhen Xie, Liang Seng Koh, and Hsin Pan
`Title: METHOD AND APPARATUS FOR MOBILE PAYMENTS
`
`
`__________________________________________________________________
`
`RFCYBER CORP.’S
`RESPONSE TO MOTION FOR JOINDER UNDER
`35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b) TO
`RELATED POST-GRANT REVIEW PGR2021-00028
`
`Case No. PGR2022-00003
`
`__________________________________________________________________
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`Page(s)
`
`
`I.
`INTRODUCTION ........................................................................................... 1
`STATEMENT OF ADDITIONAL MATERIAL FACTS .............................. 3
`II.
`III. ARGUMENT ................................................................................................... 4
`A.
`Legal Standard ....................................................................................... 4
`B.
`The Statute Does Not Allow Apple to Join the Google PGR ............... 4
`1.
`Apple Cannot Join the Google PGR Because the ’046
`Patent Is No Longer PGR-Eligible and Therefore
`Apple’s Petition Was Not Properly Filed ................................... 5
`35 U.S.C. § 325(c) Does Not Allow for Apple to Join
`the Google PGR as a Party .......................................................... 7
`35 U.S.C. §327 Does Not Allow Apple to Substitute for
`Google ......................................................................................... 8
`The Board Should Terminate the Original Proceeding Which
`Would Moot Apple’s Request ............................................................... 8
`D. Apple’s Motion Is Untimely and the Board Should Not
`Suspend Its Rules to Allow It ..............................................................10
`Apple’s Delay Has Burdened and Negatively Impacted the
`Google PGR Trial Schedule ................................................................13
`IV. CONCLUSION ..............................................................................................14
`
`
`
`
`2.
`
`3.
`
`C.
`
`E.
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
` Page(s)
`
`Cases
`Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
`IPR2016-01757, Paper 11 (P.T.A.B. Feb. 3, 2017) .............................................. 9
`Aerohive Networks, Inc. v. Chrimar Sys., Inc.,
`IPR2016-01757, Paper 3 (P.T.A.B. Sep. 8, 2016) ................................................ 9
`Badaracco v. C.I.R.,
`464 U.S. 386 (1984) ............................................................................................ 13
`Dell Inc. v. Chrimar Sys., Inc.,
`IPR2016-00569, Paper 40 (P.T.A.B. Jan. 20, 2017) ............................................ 9
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) ............................................................................ 6
`Globalfoundries U.S., Inc. v. Godo Kaisha IP Bridge 1,
`IPR2017-00925, Paper 13 (P.T.A.B. Jun. 9, 2017) ............................................ 12
`Lenovo (U.S.) Inc. v. Neodron Ltd.,
`IPR2020-00729, paper 9 (P.T.A.B. Aug. 3, 2020) ............................................... 9
`LG Elecs., Inc. v. Bell N. Research, LLC,
`IPR2020-00108, Paper 14 (P.T.A.B. May 20, 2020) ........................................... 9
`Mylan Techs., Inc. v. MonoSol Rx, LLC,
`IPR2017-00200, Paper 22 (P.T.A.B. Oct. 5, 2017) .............................................. 9
`Mylan Techs., Inc. v. MonoSol Rx, LLC,
`IPR2017-00200, Paper 23 (P.T.A.B. Oct. 6, 2017) .............................................. 9
`Par Pharm., Inc. v. MonoSol Rx, LLC,
`IPR2017-01557, Paper 4 (P.T.A.B. June 9, 2017) ............................................... 9
`Pfizer, Inc. v. Teva Pharms., USA, Inc.,
`429 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 12
`
`ii
`
`
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`
`Russello v. United States,
`464 U.S. 16 (1983) ................................................................................................ 6
`Sony Corp. of Am. v. Network-1 Sec. Sols., Inc.,
`IPR2013-00495, Paper 13 (P.T.A.B. Sep. 16, 2013) ...................................... 8, 12
`United States v. Wong Kim Bo,
`472 F.2d 720 (5th Cir. 1972) ................................................................................ 6
`Visa Inc. v. Universal Secure Registry, LLC,
`CBM2019-00025, Paper 7 (P.T.A.B. June 11, 2019) ........................................... 7
`Statutes
`35 U.S.C. § 315 .......................................................................................................... 5
`35 U.S.C. § 321 .................................................................................................passim
`35 U.S.C. § 325 .................................................................................................passim
`35 U.S.C. § 327 ...................................................................................................... 8, 9
`Other Authorities
`37 CFR § 42.122 ........................................................................................................ 6
`37 CFR § 42.222 ............................................................................................ 1, 3, 4, 6
`
`
`
`
`
`iii
`
`
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`EXHIBITS
`
`Description of Document
`
`Joint Motion to Stay All Deadlines and Notice of Settlement (Dkt.
`119) in RFCyber Corp. v. Google LLC, Case No. 2:20-cv-00274-
`JRG (Lead Case) (E.D. Tex.), dated September 28, 2021
`
`Order (Dkt. 120) in RFCyber Corp. v. Google LLC, Case No. 2:20-
`cv-00274-JRG (Lead Case) (E.D. Tex.), dated September 29, 2021
`
`Stipulation of Dismissal in RFCyber Corp. v. Google LLC, Case
`No. 2:20-cv-00274-JRG (Lead Case) (E.D. Tex.), dated October
`18, 2021
`
`Email from Adam Seitz to Trials@uspto.gov re PGR2021-00028 –
`Apple’s request to Delay Termination in Order to File a Joinder
`Motion and Copycat Petition, dated October 19, 2021
`
`Email from Trials @USPTO.gov to Adam Seitz; Trials re:
`PGR2021-00028 – Apple’s Request to Delay Termination in Order
`to File a Joinder Motion and Copycat Petition, dated November 15,
`2021
`
`
`Exhibit
`No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`
`
`
`
`
`iv
`
`
`
`INTRODUCTION
`On October 20, 2021, Petitioner Apple, Inc. (“Apple” or “Petitioner”) filed a
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`
`I.
`
`
`Petition for Post-Grant Review (“Petition”) against U.S. Patent No. 10,600,046 (Ex.
`
`1001, “the ’046 Patent”). At the same time, Apple filed a “Motion For Joinder Under
`
`35 U.S.C. 325(c) and 37 C.F.R. § 42.222(b) To Related Post-Grant Review
`
`PGR2021-00028” seeking to join PGR2021-00028 (the “Google PGR”), in which a
`
`joint motion for termination has been pending since October 19, 2021. Paper No. 3
`
`(“Motion”). Apple’s request violates both the statute and the Board’s Rules; Patent
`
`Owner RFCyber Corp. (“RFCyber” or “Patent Owner”) therefore respectfully
`
`requests that the Board deny the Motion.
`
`
`
`First, Apple cannot (and does not try to) show that its Petition is “properly
`
`filed,” as required by 35 U.S.C. § 325(c). The ’046 Patent issued on March 24, 2020,
`
`and its PGR eligibility expired on December 23, 2020. See Ex. 1001. The PGR
`
`statute does not contain an exception allowing petitions filed after the expiration of
`
`PGR-eligibility to join other proceedings. Accordingly, Apple’s Petition is not
`
`properly filed and cannot be joined to the Google PGR.
`
`
`
`Second, even if Apple’s Petition were properly filed, Apple has failed to
`
`comply with the Board’s Rules which require that joinder be requested within one
`
`month of institution. Apple instead waited until nearly three months after institution,
`
`and after Google and RFCyber settled all matters in controversy between them, to
`
`1
`
`
`
`
`make its request.
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`
`
`Third, Apple’s dilatory conduct is inexcusable. Apple was sued on the ’046
`
`Patent shortly after the joinder window expired. Apple did not seek joinder at that
`
`time. Further, Google and Patent Owner filed a Joint Motion to Stay All Deadlines
`
`and Notice of Settlement on September 28, 2021 (Ex. 2001). Apple was thus aware
`
`that “All matters in controversy between [Google and RFCyber] had been settled in
`
`principle” and that Google and RFCyber were in the process of formalizing a
`
`settlement agreement. Ex. 2001 at 1. Nevertheless, Apple did not seek joinder at
`
`that time either. Instead, Apple waited nearly another full month (until after the
`
`original Due Date for RFCyber’s Patent Owner Response) to file its Motion. With
`
`no notice of Apple’s plans, RFCyber reasonably relied on its settlement with Google
`
`to stipulate to extend the deadline for the Patent Owner Response and to put off the
`
`deposition of Google’s expert.
`
`
`
`Finally, Apple has not shown that joinder is warranted, or that the Board
`
`should suspend its rules to allow joinder. Because of Apple’s delay, if the Board
`
`were to institute its Petition, the Google PGR schedule will need to be completely
`
`rewritten to allow for discovery and for RFCyber to submit its Patent Owner
`
`Response.
`
`2
`
`
`
`
`II.
`
`STATEMENT OF ADDITIONAL MATERIAL FACTS
`The ’046 Patent issued on March 24, 2020. By statute, it became
`1.
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`ineligible for PGR on December 24, 2020. 35 U.S.C. §321 (c).
`
`2.
`
`The Board instituted trial in the Google PGR on July 23, 2021. The
`
`one-month deadline for joinder motions expired on August 23, 2021. 37 C.F.R.
`
`§ 42.222(b).
`
`3.
`
`On September 28, 2021, Google and RFCyber filed a Joint Motion to
`
`Stay All Deadlines and Notice of Settlement. Ex. 2001. The Joint Motion
`
`specifically noted that “All matters in controversy between the Parties have been
`
`settled in principle.” Id. at 1. The District Court granted the Joint Motion on
`
`September 29, 2021. Ex. 2002.
`
`4.
`
`On October 18, 2021, Google and RFCyber filed a stipulation of
`
`dismissal in the District Court. Ex. 2003.
`
`5.
`
`On October 19, 2021, Google and RFCyber filed a Joint Motion to
`
`Terminate the Google PGR. That night, for the first time, Apple indicated that it
`
`intended to join the Google PGR. Ex. 2004.
`
`6.
`
`On October 20, 2021, Apple filed the instant Petition and Motion.
`
`Apple did not, and has not, “arrange[d] a conference call with the panel, petitioner,
`
`and patent owner of the first proceeding within five business days of filing [its]
`
`motion,” as required by Patent Trial and Appeal Board Consolidated Trial Practice
`
`3
`
`
`
`
`Guide (November 2019) (“TPG”). TPG at 76.
`
`PGR2022-00003
`PATENT NO. 10,600,046
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`7.
`
`On November 15, 2021, the Board extended the Due Date for
`
`RFCyber’s Response in the Google PGR indefinitely. Ex. 2005.
`
`III. ARGUMENT
`A. Legal Standard
`35 U.S.C. § 321 (c) states that “A petition for a post-grant review may only
`
`
`
`be filed not later than the date that is 9 months after the date of the grant of the
`
`patent.” 35 U.S.C. § 321 (c). 35 U.S.C. § 325 allows that “If more than 1 petition
`
`for a post-grant review under this chapter is properly filed against the same patent
`
`and the Director determines that more than 1 of these petitions warrants the
`
`institution of a post-grant review under section 324, the Director may consolidate
`
`such reviews into a single post-grant review.” 35 U.S.C 325(c).
`
`
`
`The Board’s Rules require that “Any request for joinder must be filed, as a
`
`motion under § 42.22, no later than one month after the institution date of any post-
`
`grant review for which joinder is requested.” 37 C.F.R. §42.222(b).
`
`The Statute Does Not Allow Apple to Join the Google PGR
`B.
`Apple’s Motion is predicated on the idea that joinder in PGRs is the same as
`
`
`
`in IPRs. Motion at 3-12. But Apple cites no case where the Board has applied the
`
`same test to joinder in PGRs as it does in IPRs. See generally id. That is with good
`
`reason, the joinder provision for IPRs is vastly different than that for PGRs, with
`
`4
`
`
`
`
`different requirements and relief. Apple does not analyze these differences.
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`1.
`
`Apple Cannot Join the Google PGR Because the ’046
`Patent Is No Longer PGR-Eligible and Therefore
`Apple’s Petition Was Not Properly Filed
`Apple’s Petition was not “properly filed” as required by 35 U.S.C. § 325
`
`
`
`because the ’046 Patent was not eligible for PGR when Apple filed its Petition. The
`
`’046 Patent became statutorily ineligible for PGR on December 24, 2020. 35 U.S.C.
`
`§ 321(c). The statute makes clear that joinder requests do not allow PGRs to be
`
`instituted after the nine-month window closes.
`
`
`
`When joinder after a statutory bar is intended, the statute explicitly states as
`
`much. For example, while inter partes review normally may not be instituted if the
`
`petition is filed more than a year after the petitioner is served with a complaint for
`
`infringement, the statute explicitly allows requests for joinder after that time:
`
`An inter partes review may not be instituted if the petition requesting
`
`the proceeding is filed more than 1 year after the date on which the
`
`petitioner, real party in interest, or privy of the petitioner is served with
`
`a complaint alleging infringement of the patent. The time limitation set
`
`forth in the preceding sentence shall not apply to a request for joinder
`
`under subsection (c).
`
`35 U.S.C. § 315(b) (emphasis added). Thus a request for joinder to an IPR can be
`
`properly filed even more than 1 year after service of a complaint.
`
`5
`
`
`
`By contrast, there is no exception set forth for joinder to a PGR that allows a
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`
`
`
`petitioner to evade the nine-month PGR window. See 35 U.S.C. §§ 321, 325. Had
`
`Congress intended to allow for joinder of PGRs after the PGR eligibility window
`
`had passed, it would have included an express exemption as it did for IPRs. Russello
`
`v. United States, 464 U.S. 16, 23 (1983) (“[W]here Congress includes particular
`
`language in one section of a statute but omits it in another section of the same Act,
`
`it is generally presumed that Congress acts intentionally and purposely in the
`
`disparate inclusion or exclusion.” (quoting United States v. Wong Kim Bo, 472 F.2d
`
`720, 722 (5th Cir. 1972). Indeed, the Board’s Rules also acknowledge this
`
`distinction. Compare 37 CFR § 42.122(b) (“The time period set forth in
`
`§ 42.101(b) shall not apply when the petition is accompanied by a request for
`
`joinder.”) with 37 CFR § 42.222 (setting out no exception).
`
`
`
`Accordingly, Apple’s Petition was not “properly filed” because the PGR-
`
`eligibility window has closed, and the Board should deny Apple’s Motion and
`
`dismiss its Petition. Indeed, the Federal Circuit has previously reversed the Board
`
`when it departed from the language of the statute. Facebook, Inc. v. Windy City
`
`Innovations, LLC, 973 F.3d 1321, 1338 (Fed. Cir. 2020) (“[W]e must abide by the
`
`clear and unambiguous statutory language.”).
`
`
`
`Apple cites no case where the Board allowed a second petitioner to evade the
`
`time requirements of § 321(c). Indeed, the only non-IPR case Apple cites concerns
`
`6
`
`
`
`
`a CBM. Motion at 2 (citing Visa Inc. v. Universal Secure Registry, LLC, CBM2019-
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`00025, Paper 7 at 3-5 (P.T.A.B. June 11, 2019)). But CBMs are explicitly not bound
`
`by § 321(c). AIA § 18(a)(1)(A). Moreover, the Patent Owner in Visa did not file an
`
`opposition or preliminary response to the request for joinder. Visa, CBM2019-
`
`00025, Paper 7 at 2.
`
`2.
`
`35 U.S.C. § 325(c) Does Not Allow for Apple to Join
`the Google PGR as a Party
`The PGR joinder provision does not allow for Apple’s requested relief: that it
`
`
`
`be joined as a party to the Google PGR. Motion at 1 (“[Apple] is willing to
`
`streamline discovery and briefing by serving in an understudy role unless and until
`
`Google is terminated from the Google PGR at which point Apple will step into
`
`Google’s shoes and proceed with the PGR as if it were the original filer.”
`
`(emphasis added)).
`
`
`
`The IPR joinder provision expressly allows the Director to “join as a party” a
`
`second petitioner. 35 U.S.C. § 325(c). However, the PGR joinder provision only
`
`allows for the Director to “consolidate” multiple reviews if each petition “warrants
`
`the institution of a post-grant review . . .” 35 U.S.C. § 325(c). The difference in
`
`language makes clear that the statute was intended to allow streamlining of
`
`proceedings when multiple meritorious petitions were timely presented and was not
`
`intended to allow subsequent petitioners to avoid the time bar. Here, Apple’s
`
`7
`
`
`
`
`Petition does not warrant institution of a post-grant review because it is statutorily
`
`PGR2022-00003
`PATENT NO. 10,600,046
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`barred. The Board should, therefore, deny Apple’s Motion and dismiss its Petition.
`
`3.
`
`35 U.S.C. §327 Does Not Allow Apple to Substitute
`for Google
`35 U.S.C. § 327 provides that “A post-grant review instituted under this
`
`
`
`chapter shall be terminated with respect to any petitioner upon the joint request of
`
`the petitioner and the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” 35 U.S.C. § 327(a). As the
`
`Board has noted, the AIA does not allow for substitution of parties after a settlement.
`
`Sony Corp. of Am. v. Network-1 Sec. Sols., Inc., IPR2013-00495, Paper 13 at 9
`
`(P.T.A.B. Sep. 16, 2013) (“The AIA, however, does not provide for the
`
`‘replacement’ of a party. A petitioner may settle with the patent owner and upon
`
`entering the joint request, the review will terminate with respect to the petitioner.”)
`
`(“Sony”) (quoting 77 Fed. Reg. 48680, 48707 (Aug. 14, 2012)). RFCyber and
`
`Google have settled; Apple’s request to “step into Google’s shoes” is therefore an
`
`improper request to replace a party. See Motion at 1.
`
`C. The Board Should Terminate the Original Proceeding Which
`Would Moot Apple’s Request
`As noted above, RFCyber has settled with Google in the Google PGR, and the
`
`
`
`Board authorized the parties to file a Joint Motion to Terminate the Google PGR,
`
`which the parties did on October 19, 2021. If terminated, the Google PGR cannot
`
`8
`
`
`
`
`serve as a proceeding with which the Apple Petition may be consolidated. See, e.g.,
`
`PGR2022-00003
`PATENT NO. 10,600,046
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`LG Elecs., Inc. v. Bell N. Research, LLC, IPR2020-00108, Paper 14 (P.T.A.B. May
`
`20, 2020) (denying motion for joinder after original proceeding was terminated);
`
`Lenovo (U.S.) Inc. v. Neodron Ltd., IPR2020-00729, paper 9 (P.T.A.B. Aug. 3, 2020)
`
`(denying motion for joinder because the original proceeding had not been instituted).
`
`
`
`The Board should terminate the Google IPR. “A post-grant review instituted
`
`under this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and the patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” 35 U.S.C.
`
`§ 327(a) (emphasis added). Apple’s late-filed request for joinder is irrelevant. For
`
`example, in Mylan Techs., Inc. v. MonoSol Rx, LLC, IPR2017-00200, Paper 23
`
`(P.T.A.B. Oct. 6, 2017), the Board terminated the proceeding despite a pending
`
`joinder request by a petitioner in Par Pharm., Inc. v. MonoSol Rx, LLC, IPR2017-
`
`01557, Paper 4 (P.T.A.B. June 9, 2017). The Board further denied Par’s request to
`
`have its petition and motion for joinder decided before the Board decided whether
`
`to terminate. Mylan, IPR2017-00200, Paper 22 at 2 (P.T.A.B. Oct. 5, 2017).
`
`Similarly, in Dell Inc. v. Chrimar Sys., Inc., IPR2016-00569, Paper 40 (P.T.A.B.
`
`Jan. 20, 2017), the Board also fully terminated despite the pending joinder request
`
`in Aerohive Networks, Inc. v. Chrimar Sys., Inc., IPR2016-01757, Paper 3 (P.T.A.B.
`
`Sep. 8, 2016). The Board then denied the request for joinder in Aerohive , IPR2016-
`
`9
`
`
`
`
`01757, Paper 11 (P.T.A.B. Feb. 3, 2017).
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`PGR2022-00003
`PATENT NO. 10,600,046
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`
`
`The Board has recognized the importance of settlement. “The Board expects
`
`that a proceeding will terminate after the filing of a settlement agreement, unless the
`
`Board has already decided the merits of the proceeding.” TPG at 86. As discussed
`
`in more detail below, Apple had ample opportunity to seek joinder before Google
`
`and RFCyber settled. The Board should follow its procedures, and the statute, and
`
`terminate the Google PGR. At that point, Apple’s motion will become moot and
`
`should be denied.
`
`D. Apple’s Motion Is Untimely and the Board Should Not Suspend
`Its Rules to Allow It
`Even if the Board determines that the statute allows Apple’s untimely joinder
`
`
`
`and does not terminate the Google PGR, Apple’s Motion should be denied as
`
`untimely. Apple waited until October 20, 2021, nearly three months after the
`
`Board’s July 23, 2021 Institution Decision in the Google PGR to file its Motion.
`
`Apple’s Motion comes long after the Board’s one-month time limit for joinder
`
`motions. Apple’s delay alone is enough to justify denying joinder. Apple
`
`acknowledges the lateness of its request but argues that the Board should suspend
`
`its rules to institute Apple’s Petition. Motion at 3-6.
`
`
`
`Apple provides multiple excuses for its violation of the Board’s Rules. First,
`
`Apple argues that good cause exists to suspend the rules because joinder will not
`
`10
`
`
`
`
`expand the grounds instituted or require changing the trial schedule. Motion at 4.
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`PGR2022-00003
`PATENT NO. 10,600,046
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`Apple is wrong. By waiting until after the original due date for Patent Owner’s
`
`Response, and until after Google and Patent Owner had concluded a settlement
`
`agreement, Apple has necessitated a wholesale change to the trial schedule. As noted
`
`above, RFCyber reasonably relied on its agreement with Google to put off deposing
`
`Google’s expert and submitting its Patent Owner Response.
`
`
`
`Apple was aware when it filed its Motion that joinder would require changing
`
`the schedule in the Google PGR. As Apple noted, RFCyber and Google had already
`
`stipulated to move the due date for RFCyber’s Patent Owner Response to November
`
`15, 2021. Motion at 8. That date was before the due date for RFCyber’s Response
`
`to Apple’s Motion, much less its Patent Owner Preliminary Response. And Apple
`
`did not file its Motion or Petition until after Google and RFCyber had already filed
`
`the Joint Motion to Terminate the Google PGR, so it was aware that RFCyber did
`
`not expect to file its Patent Owner Response. TPG at 86 (“The Board expects that a
`
`proceeding will terminate after the filing of a settlement agreement, unless the Board
`
`has already decided the merits of the proceeding.”).
`
`
`
`The Board has already noted the disruption to the Google PGR schedule and
`
`extended the due date for RFCyber’s Patent Owner Response indefinitely, while it
`
`considers the motion to terminate. Thus, the Apple PGR has already caused, and
`
`11
`
`
`
`
`will continue to cause, significant disruption to the schedule.1
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`PGR2022-00003
`PATENT NO. 10,600,046
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`
`
`Second, Apple argues that the Board should excuse its failure to follow the
`
`Rules because RFCyber sued Apple on September 7, 2021. Motion at 4-5. Apple
`
`cites no law that allows or encourages the Board to consider RFCyber’s subjective
`
`intentions on when to file suit. As Apple should be aware, there are many drivers
`
`on when a patent owner may file suit—including the patentee’s limited resources
`
`and time—and a patent owner is not required to sue all infringers at once. See Pfizer,
`
`Inc. v. Teva Pharms., USA, Inc., 429 F.3d 1364, 1381 (Fed. Cir. 2005) (noting, in
`
`injunction context, that “[a] patentee does not have to sue all infringers at once.”).
`
`
`
`Finally, Apple argues that the Board should suspend the Rules because public
`
`policy favors the PTAB considering patentability questions and completing the
`
`PGR. Motion at 5-6. Apple’s argument ignores the strong public policy in favor of
`
`settlement. Indeed, the Board has explained that “There are strong public policy
`
`reasons to favor settlement between the parties to a proceeding… The Board expects
`
`
`1 Apple’s cited cases are not to the contrary. Both Sony and Globalfoundries
`
`involved cases where the original petitioner had not settled, and therefore the trial
`
`schedule could continue. Sony, IPR2013-00495 at 8-9; Globalfoundries U.S., Inc.
`
`v. Godo Kaisha IP Bridge 1, IPR2017-00925, Paper 13 at 9-10 (P.T.A.B. Jun. 9,
`
`2017).
`
`12
`
`
`
`
`that a proceeding will terminate after the filing of a settlement agreement unless the
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`Board has already decided the merits of the proceeding.” TPG at 86.2 Because the
`
`Board expects a proceeding to terminate after settlement, it has already determined
`
`that public policy favors settlement over any interest in the Board “complet[ing] its
`
`analysis.” Motion at 6. The Board’s Rules (and the statute) are clear thus that public
`
`policy does not favor granting Apple’s Motion.
`
`E. Apple’s Delay Has Burdened and Negatively Impacted the Google
`PGR Trial Schedule
`As noted above, Apple was sued on September 7, 2021, only a short time after
`
`
`
`the Board’s one month deadline for joinder requests. Nevertheless, Apple did not
`
`file its Petition or otherwise provide any notice that it intended to join the Google
`
`PGR. Apple similarly refused to act when Google and RFCyber filed a joint motion
`
`and notice in the District Court announcing that they had settled all matters in
`
`controversy in principle. Ex. 2001. Had Apple acted diligently, disruption to the
`
`
`2 Moreover, Congress already restricted access to PGRs to a nine-month window,
`
`demonstrating that Congress felt public policy was best favored by only a limited
`
`window to raise PGR arguments. 35 U.S.C. § 321(c). Public policy concerns cannot
`
`override the clear language of a statute. Badaracco v. C.I.R., 464 U.S. 386, 398
`
`(1984) (“Courts are not authorized to rewrite a statute because they might deem its
`
`effects susceptible of improvement.”).
`
`13
`
`
`
`
`schedule may have been avoided. Instead, Apple chose to wait until Google and
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`RFCyber had fully concluded their settlement to act. Apple’s delay, which was
`
`entirely of its own making, necessitated changing the schedule. Ex. 2005. If joinder
`
`is granted now, a new scheduling order will be required, delaying Patent Owner’s
`
`vindication of its rights far beyond the statutory deadlines. Accordingly, the key
`
`factor of whether joinder will impact the trial schedule weighs heavily against
`
`granting Apple’s motion.
`
`IV. CONCLUSION
`
`The statute, the Board’s Rules, practical factors, and simple equity all favor
`
`denying Apple’s Motion. Accordingly, the Board should deny Apple’s Motion and
`
`dismiss its Petition.
`
`
`
`
`
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`
`
`
`
`
`Respectfully submitted,
`
`Dated: November 22, 2021
`
`By:
`
`
`
`/
`/Vincent J. Rubino, III
`
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`Email: vrubino@fabricantllp.com
`
`14
`
`
`
`
`
`CERTIFICATE OF SERVICE
`A copy of RFCYBER CORP.’S RESPONSE TO MOTION FOR
`
`PGR2022-00003
`PATENT NO. 10,600,046
`
`JOINDER UNDER 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b) TO
`
`RELATED POST-GRANT REVIEW PGR2021-00028 and Exhibits 2001-2005
`
`have been served on Petitioner’s counsel of record as follows:
`
`Adam P. Seitz
`Email: Adam.Seitz@eriseip.com
`ERISE IP, P.A.
`7015 College Boulevard, Suite 700
`Overland Park, KS 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`
`Paul R. Hart
`Email: Paul.Hart@eriseip.com
`ERISE IP, P.A.
`5600 Greenwood Plaza Boulevard, Suite 200
`Greenwood Village, CO 80111
`Telephone: (913) 777-5601
`
`Attorneys for Apple Inc.
`
`
`
`November 22, 2021
`
`
`
`By:
`
`/
`
`/Vincent J. Rubino, III
`Vincent J. Rubino, III (Reg. No. 68,294)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`
`
`
`
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