UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`____________
`
`
`Case No. PGR2022-00003
`U.S. Patent No. 10,600,046
`____________
`
`
`PETITIONER’S REPLY IN SUPPORT OF 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
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`____________
`
`
`Case No. PGR2022-00003
`U.S. Patent No. 10,600,046
`____________
`
`
`PETITIONER’S REPLY IN SUPPORT OF 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
`
`
`
`
`
`
`
`PGR2022-00003
`U.S. Patent No. 10,600,046
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner (“PO”) strategically sequenced its lawsuits, depriving Petitioner
`
`the opportunity to file its own PGR or to timely join Google’s instituted PGR. PO’s
`
`tactics open the door to abuse and gamesmanship, encourage duplication of issues,
`
`and waste judicial resources. The Board should not embolden such gamesmanship.
`
`Nor should it prejudice Petitioner by depriving it of the work already completed by
`
`the Board. In the interests of fairness and efficiency, the Board should permit joinder.
`
`II. ARGUMENT
`A.
`Joinder is Proper Under 35 U.S.C. §§ 321(c) and 325(c)
`PO argues 35 U.S.C. § 321 “makes clear that joinder requests do not allow
`
`PGRs to be instituted after the nine-month window closes.” Paper 7, 5. First, PO
`
`entirely ignores that 37 C.F.R. § 42.5(b) gives the Board discretion to “waive or
`
`suspend” any requirements enumerated in its rules, including the 9-month deadline
`
`set forth in Rule 42.202. Second, PO is wrong about the 35 U.S.C. § 321, which is
`
`silent as to joinder. This is likely why PO seeks to manufacture a statutory provision
`
`from Congressional silence. To do so, PO argues that because 35 U.S.C. § 315(b)
`
`contains an express time bar exception for IPR joinder, the Board should impute
`
`upon Congress an intent to exclude PGR joinder as well. The Supreme Court has
`
`soundly rejected attempts to make law out of what the legislature has not said. Pauley
`
`v. BethEnergy Mines, Inc., 501 U.S. 680, 703 (recognizing “the dubious reliability
`
`
`
`1
`
`
`
`PGR2022-00003
`U.S. Patent No. 10,600,046
`of inferring specific intent from silence”) (quoting Sunstein, Law and Administration
`
`After Chevron, 90 Colum.L.Rev. 2071, 2085–2088 (1990)). Congress did not draft
`
`35 U.S.C. § 321 to foreclose a petitioner’s ability to join a properly instituted PGR
`
`past the 9-month window and no such prohibition should be read into this provision.
`
`Turning from timing to the discretionary analysis that governs whether joinder
`
`should be granted, PO insists that language differences between the IPR joinder
`
`provisions in § 315(c) and the PGR joinder provisions in § 325(c) should be
`
`interpreted to disallow PGR party joinder even where no new grounds are
`
`introduced. Paper 7, 7-8; id. at 4 (arguing “Apple cites no case where the Board has
`
`applied the same test to joinder in PGRs as it does in IPRs” and “the joinder
`
`provision for IPRs is vastly different than that for PGRs”). In fact, the Board has
`
`treated the discretionary joinder provisions similarly and, as explained in Apple’s
`
`motion, has applied the same Kyocera analysis to a petition governed by the PGR
`
`joinder provisions of § 325(c), granting joinder of copycat petition as it routinely
`
`does for IPRs. Paper 3, 2-3 (discussing joinder in CBM2019-00025).
`
`PO’s Lawsuit Sequencing Dictated the Joinder Timing
`
`B.
`PO filed suit after both the 9-month PGR eligibility window and the 30-day
`
`window to file a motion for joinder had closed. Yet PO argues Petitioner should be
`
`punished for “fail[ing] to follow the Rules”—rules it could not have followed due to
`
`PO’s sequenced lawsuit timing. Paper 7, 12. The reality is, Petitioner acted
`
`
`
`2
`
`
`
`PGR2022-00003
`U.S. Patent No. 10,600,046
`diligently after PO’s long delayed lawsuit was filed. In just over five weeks,
`
`Petitioner assessed eight separate PTAB proceedings against PO’s patents and
`
`moved to join Google’s PGR. PO decided when to sue Petitioner and must live with
`
`the impact of its strategic choices—its gamesmanship should not be encouraged as
`
`a means to avoid joinder of parties sued late in a lawsuit campaign.
`
`The PTAB expressly recognizes gamesmanship as justification for exercising
`
`even the Board’s narrowest discretion. PTAB Cons. Trial Practice Guide, Nov.
`
`2019, 76-77 (discussing a matter of narrow discretion and identifying as compelling
`
`justification a PO’s “attempts to game the system,” including a “plaintiff []
`
`strategically wait[ing] to alter or add late-asserted patent claims…to wait out the
`
`one-year bar”). Here, Petitioner is not seeking a broad exception allowing PGR
`
`joinder outside the permitted window, but is instead seeking a narrow exception in
`
`light of PO’s lawsuit sequencing gamesmanship. To combat these inequities, the
`
`Board should exercise its discretion and waive the joinder deadlines as it has
`
`repeatedly in the past. See Sony Corp. of Am. and Hewlett-Packard Co v. Network-
`
`1 Security Solutions, Inc., IPR2013-00495, Paper 13, slip op. at 4 (PTAB Sept. 16,
`
`2013) (waiving statutory time bar under 37 C.F.R. § 42.5(b)); see also
`
`Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1, IPR 2017-00925, Paper 12,
`
`slip op. at 8-11 (PTAB Jun. 9, 2017) (same); SL Corp. v. Adaptive Headlamp Tech.,
`
`Inc., IPR2016-01368, Paper 9, at 6-9 (same).
`
`
`
`3
`
`
`
`PGR2022-00003
`U.S. Patent No. 10,600,046
`Emphasizing the importance of encouraging settlements, PO argues that the
`
`Board must rule on its pending motion to terminate, mooting Petitioner’s joinder
`
`request. Paper 7, 8-10. However, Rule 42.72 leaves it to the Board’s discretion to
`
`join Petitioner prior to ruling on the pending motion to terminate. 37 C.F.R. § 42.72
`
`(“The Board may terminate . . . pursuant to a joint request under 35 U.S.C. []
`
`327(a)”) (emphasis added). Exercising this discretion, the Board in AT&T Services,
`
`Inc. v. Covergent Media Solutions, LLC, “decide[d] Petitioner’s motion for joinder
`
`prior to acting on Patent Owner’s [pending] joint motion to terminate[.]” IPR2017-
`
`01237, Paper 10, at 27 (May 10, 2017) (emphasis added); see also Globalfoundries,
`
`IPR2017-00925, Paper 13 at 9 (recognizing the “possible chilling effect of joinder
`
`on settlement is a factor present in most, if not all, joinder situations” and concluding
`
`this must simply “weighed together with all of the other facts”). Where, as here, the
`
`PO’s own tactics created any settlement tension, the Board should find such tension
`
`does not outweigh the strong interests in preserving the existing PGR.
`
`The Joinder Factors Overwhelmingly Favor Joinder
`
`C.
`Contrary to PO’s insistence that a “different” test applies to PGR joinder under
`
`§ 325, the Board in fact applies the four-factor Kyocera calculus to both IPR joinder
`
`under § 315 and PGR joinder under § 325. See, e.g., Visa, CBM2019-00025, Paper
`
`7 at 3-5 (applying Kyocera test to CBM joinder under § 325). These four factors
`
`weigh heavily in favor of joinder here.
`
`
`
`4
`
`
`
`PGR2022-00003
`U.S. Patent No. 10,600,046
`PO does not dispute that the Apple Petition is a true copycat of Google’s—a
`
`fact that routinely results in the Board permitting joinder. Rather, PO focuses entirely
`
`on the timing of Petitioner’s motion and the impact on the current schedule. Paper
`
`7, 10-14. As to timing, Petitioner moved just over a month after being sued, and after
`
`combing through the ’046 Patent’s expansive judicial record and the records of the
`
`then-pending eight PTAB proceedings involving this and other asserted patents.
`
`Given the scope of its review, Petitioner moved as quickly as practicable.
`
`Turning to the schedule, PO blames “[Petitioner’s] delay” of having
`
`“necessitated changing the schedule,” which PO argues will “delay[] Patent Owner’s
`
`vindication of its rights far beyond the statutory deadlines.” Paper 7, 14. As an initial
`
`matter, PO’s conduct does not evince great concern for timing. It sat quietly for over
`
`three weeks in response to Petitioner’s joinder motion and filed its Response only
`
`when required by statute. Had PO acted with more diligence, the requested joinder
`
`could have been resolved more quickly and its impact on the underlying schedule
`
`minimized. Further, Congress expressly contemplated extending statutory deadlines
`
`in the case of joinder. 35 U.S.C. § 326(11); see also 37 C.F.R. § 42.200(c) (allowing
`
`PGRs to conclude more than one year after institution in the case of joinder).
`
`
`
`
`
`
`
`5
`
`
`
`PGR2022-00003
`U.S. Patent No. 10,600,046
`
`
`
`
`
`
`
`
`
`
`
`
`BY: /s/ Adam P. Seitz
`
`
`Adam P. Seitz (Reg. No. 52,206)
`ERISE IP, P.A.
`
`
`
`7015 College Boulevard, Suite 700
`Overland Park, KS 66211
`
`Telephone: (913) 777-5600
`
`Facsimile: (913) 777-5601
`
`Adam.Seitz@eriseip.com
`
`
`
`
`
`COUNSEL FOR PETITIONER APPLE INC.
`
`
`Paul R. Hart (Reg. No. 59,646)
`ERISE IP, P.A.
`5299 DTC Blvd., Ste. 1340
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`Paul.Hart@eriseip.com
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PGR2022-00003
`U.S. Patent No. 10,600,046
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of the Reply in Support
`
`
`
`of the Motion for Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and
`
`42.122(b) To Related Post-Grant Review PGR2021-00028 has been served on the
`
`Patent Owner on December 22, 2021, by filing this document through the E2E
`
`system and via email to Patent Owner’s designated correspondence address for its
`
`counsel of record:
`
`Vincent J. Rubino, III (vrubino@fabricantllp.com)
`Peter Lambrianakos (plambrianakos@fabricantllp.com)
`Enrique W. Iturralde (eiturralde@fabricantllp.com)
`Richard Cowell (rcowell@fabricantllp.com)
`ptab@fabricantllp.com
`
`Further, a courtesy copy of this Reply in Support of the Motion For Joinder
`
`
`
`
`Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) To Related Post-
`
`Grant Review PGR2021-00028 was sent via electronic mail to Patent Owner’s
`
`litigation counsel:
`
`Raymond W. Mort, III (raymort@austinlaw.com)
`Alfred R. Fabricant (ffabricant@fabricantllp.com)
`Peter Lambrianakos (plambrianakos@fabricantllp.com)
`Vincent J. Rubino, III (vrubino@fabricantllp.com)
`Richard M. Cowell (rcowell@fabricantllp.com)
`
`Finally, Petitioner has sent an Email to the Board and parties listed in
`
`
`
`PGR2021-00028 notifying of the filing of the Reply in Support of the Motion for
`
`
`
`7
`
`
`
`PGR2022-00003
`U.S. Patent No. 10,600,046
`Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) To Related
`
`Post-Grant Review PGR2021-00028 as follows:
`
`Vincent J. Rubino, III (vrubino@fabricantllp.com)
`Peter Lambrianakos (plambrianakos@fabricantllp.com)
`Alfred R. Fabricant (ffabricant@fabricantllp.com )
`Enrique W. Iturralde (eiturralde@fabricantllp.com)
`Andrew S. Ehmke (andy.ehmke.ipr@haynesboone.com)
`Scott T. Jarratt (scott.jarratt.ipr@haynesboone.com)
`Jonathan R. Bowser (jon.bowser.ipr@haynesboone.com)
`Angela M. Oliver (angela.oliver.ipr@haynesboone.com)
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BY: /s/ Adam P. Seitz
`
`
`Adam P. Seitz, Reg. No. 52,206
`
`COUNSEL FOR PETITIONER APPLE INC.
`
`8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
