Trials@uspto.gov
`571-272-7822
`
`Paper No. 9
`Date: April 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`KOSS CORP.,
`Patent Owner.
`
`IPR2022-00188
`Patent 10,469,934 B2
`
`Before KARL D. EASTHOM, PATRICK R. SCANLON,and
`DAVID C. McKONE,Administrative Patent Judges.
`
`EASTHOM,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 US.C. § 314
`
`Denying Motion for Joinder
`35 US.C. § 315(c); 37 CER. § 42.122
`
`
`571-272-7822
`
`Paper No. 9
`Date: April 14, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`KOSS CORP.,
`Patent Owner.
`
`IPR2022-00188
`Patent 10,469,934 B2
`
`Before KARL D. EASTHOM, PATRICK R. SCANLON,and
`DAVID C. McKONE,Administrative Patent Judges.
`
`EASTHOM,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 US.C. § 314
`
`Denying Motion for Joinder
`35 US.C. § 315(c); 37 CER. § 42.122
`
`
`
`IPR2022-00188
`Patent 10,469,934 B2
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`I.
`
`INTRODUCTION
`
`Apple Inc. (“‘Petitioner’” or “Apple”) filed a Petition for inter partes
`
`review of claims 1-22, 32-41, 47, and 49-62 of U.S. Patent No. 10,469,934
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`B2 (Ex. 1001, “the °934 patent”). Paper 2 (“Pet.”). Petitioner also filed a
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`Motion for Joinder with Bose Corp. v. Koss Corp., IPR2021-00680 (the
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`“°680 IPR”). Paper 3 (“Mot.” or “Joinder Motion’). Koss Corp. (“Patent
`
`Owner”) filed a Preliminary Response opposinginstitution and joinder.
`Paper 7 (Prelim. Resp.’””).! We have authority under 35 U.S.C. § 314(a),
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`which providesthat an inter partes review maynotbeinstituted “unless.. .
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challengedin the petition.”
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`For the reasons described below, we deny the Petition and Joinder
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`Motion and do notinstitute an inter partes review of the challenged claims.
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`Il. RELATED PROCEEDINGS
`
`The parties indicate that the °934 patentis the subject of several court
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`proceedings, the ’680 IPR filed by Bose Corp. (“Bose”), and two prior
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`petitions for inter partes review filed by Petitioner. Pet. 2-3; Paper 5, 1-2.
`
`Based on Apple’s first petition, the °934 patent was the subject of Apple Inc.
`
`v. Koss Corp., IPR2021-00592 (the “’592 IPR”), where the Board granted
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`institution of inter partes review. Paper 5,2. Based on Apple’s second
`
`petition, the °934 patent also was the subject of Apple Inc. v. Koss Corp.,
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`' Patent Ownerdid notfile an Opposition to the Joinder, but asserts in the
`Preliminary Responsethat ‘“‘the Board should denyinstitution of the Third
`Apple IPR and Petitioner’s motion for joinder.” Prelim. Resp. 11.
`
`2
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`IPR2022-00188
`Patent 10,469,934 B2
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`IPR2021-00693 (the “’693 IPR”), where the Board deniedinstitution of inter
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`partes review. Id.
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`The instant Petition challenges the same claimsin the ’934 patent on
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`the same grounds as Bose’s petition in the 680 IPR. See Pet. 5-6. The
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`Board instituted an inter partes review of claims 1-22, 32-41, 47, and
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`49-62 of the ’934 patent based on the following asserted prior art and
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`
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`groundsin Bose’s ’680 IPR petition, as summarized in the followingtable:
`
`35
`
`
`
`Claim(s) Challenged
`. Reference(s)/Basis
`§
`
`
`
`
`1-3, 5, 7, 9-11, 32-37, 39, 47,
`9
`3
`
`49, 51-57 103(a)|Schrager,“ Goldstein
`4, 6, 8, 12, 13, 38, 40, 41, 58-62|103(a)|Schrager, Goldstein, Harada’
`
`14-16, 19, 21, 49-51 103(a)|Schrager, Goldstein, Skulley”
`
`17, 18, 20, 22
`10
`Schrager, Goldstein, Skulley,
`1-3, 5, 7, 9-11, 14-16, 19, 21,
`Rezvani-446,° Rezvani-875,’
`47, 49-53
`Skulley, Hind?
`4, 6, 8, 12, 13, 17, 18, 20, 22,
`Rezvani-446, Rezvani-875,
`58-62
`Skulley, Hind, Harada
`
`Harada
`
`a)
`
`a)
`
`3(
`3(
`
`1
`
`0
`
`l
`
`3(
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`a)
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`103(32-37, 39, 54-57 Onotiaa” Rezvani-875,
`
`2 US 7,072,686 B1, issued July 4, 2006 (Ex. 1101).
`3 US 2008/0031475 Al, published Feb. 7, 2008 (Ex. 1026).
`4 US 2006/0229014 Al, published Oct. 12, 2006 (Ex. 1098).
`5 US 6,856,690 BI, issued Feb. 15, 2005 (Ex. 1017).
`6 US 2007/0136446 Al, published June 14, 2007 (Ex. 1097).
`7 US 2007/0165875 Al, published July 19, 2007 (Ex. 1016).
`8 US 7,069,452 B1, issued June 27, 2006 (Ex. 1019).
`9» WO 2006/098584 Al, published Sept. 21, 2006 (Ex. 1099).
`
`3
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`IPR2022-00188
`Patent 10,469,934 B2
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`35
`
`
`Reference(s)/Basis
`Claim(s) Challenged
`U.S.C.
`§
`
`
`
`Rezvani-446, Rezvani-875,
`103(a) Oh, Hind, Harada
`38, 40, 41
`Bose Corp. v. Koss. Corp., IPR2021-00680, Paper 15 at 8, 43 (PTAB Oct.
`
`
`
`13, 2021) (institution decision) (“680 Dec.”).
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`I. WHETHER TO INSTITUTE INTER PARTES REVIEW
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`Asindicated above,the Petition here asserts the same grounds of
`
`unpatentability as those upon whichthe Boardinstituted review in the 680
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`IPR. Compare Pet. 6, with 680 Dec. 8, 43. Petitioner verifies that the
`Petition “is substantively identical to the 680] petition.” Pet. 5.
`Based oninstitution in the ’680 IPR, the substantively identical
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`showing here by Petitioner warrants institution if the institution decision
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`considers only the merits of the prior art challenges. Notwithstanding the
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`merits, however, Patent Ownerargues that we should exercise our discretion
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`to deny institution under 35 U.S.C. § 314(a) and, accordingly, deny joinder,
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`based on the General Plastic factors and the Board’s most recent
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`precedential position on joinder. Prelim. Resp. 9-21 (citing General Plastic
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`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, 1PR2016-01357, Paper 19 at
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`16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) and Apple Inc. v.
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`Uniloc 2017 LLC, IPR2020-00854, Paper 9 at 4-7 (PTAB Oct. 28, 2020)
`(precedential as to discretionary denial ofjoinder) (“Uniloc”)).
`- Petitioner argues that the General Plastic factors support granting
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`joinderand that the facts in the Petition are substantially different than those
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`in Uniloc. Mot. 6, 10. As explained in further detail below,Petitioner’s
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`arguments are not persuasive. The “me-too” Petition here is Petitioner’s
`/
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`4
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`Patent 10,469,934 B2
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`third challenge to the ’934 patent. Should Bosesettle, Petitioner would be
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`able to continue a proceeding that would otherwise be terminated. See
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`Uniloc, Paper 9 at 4 (“[S]hould Microsoft settle, Petitioner would stand in to
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`continue a proceeding that would otherwise be terminated. In effect, it
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`would be as if Apple had brought the [third] challenge to the patent in the
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`first instance.”); General Plastic, Paper 19 at 17 (“Multiple, staggered
`
`petitions challenging the same patent and sameclaimsraise the potential for
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`abuse.”’).
`
`Underthe precedential decision in Uniloc, deciding to join Apple as a
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`party to the °680 IPR first involves considering whetherto exercise
`discretion under § 314(a). See Uniloc, Paper 9 at 5 (“[B]efore determining
`whetherto join Apple as a party to the 023 IPR, even though the Petition is a
`‘me-too petition,’ we first determine whether application of the General
`Plastic factors warrants the exercise of discretion to deny the Petition under
`§ 314(a).”).
`
`Thestatutory provision governing joinderin inter partes review, 35
`
`U.S.C. § 315(c), follows:
`
`the
`institutes an inter partes review,
`If the Director
`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 undersection 313 or the expiration ofthe time forfiling
`such a response, determines warrants the institution of an inter
`partes review undersection 314.
`
`See also Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332
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`(Fed. Cir. 2020) (determining that § 315(c) requires “two different
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`decisions,”first “whether the joinder applicant’s petition for IPR ‘warrants’
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`IPR2022-00188
`Patent 10,469,934 B2
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`institution under § 314,” and then whetherto “exercise .
`.
`decide whetherto ‘join as a party’ the joinder applicant”).
`Summarizing, under 35 U.S.C. § 315(c), the Director’s discretion to
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`. discretion to
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`join a party to an ongoing IPR includes determining whetherthe petition
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`warrants institution. Under General Plastic, the Board may denya petition
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`based on the Director’s discretionary authority of § 314(a). General Plastic,
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`Paper 19 at 15. Under Uniloc, before determining whetherto join Apple as
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`a party to the ’680 IPR, even thoughthe Petition is a “me-too”Petition, we
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`first determine whether application of the General Plastic factors warrants
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`the exercise of discretion to deny the Petition under § 314(a). See Uniloc,
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`Paper 9 at 5-13 (applying General Plastic factors).
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`A. Prior Petitions
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`In General Plastic, the Board recognized certain goals of the AIA but
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`also “recognize[d] the potential for abuse of the review process by repeated
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`attacks on patents.”!° General Plastic, Paper 19 at 16-17. On March 2,
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`2021, Apple filed a first petition challenging the ’934 patent. °592 IPR,
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`Paper 2. The Board granted that petition on August 23, 2021, because the
`evidence and arguments presented met the reasonable likelihood threshold
`required for institution.
`’592 IPR, Paper 9. On March 23, 2021, Applefiled
`a secondpetition challenging the ’934 patent.
`’693 IPR, Paper 2. The Board
`
`denied that petition on October 13, 2021, because the evidence and
`arguments presented failed to meet substantively the reasonable likelihood
`threshold required for institution. °693 IPR, Paper 11. At this pointin the
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`10 “ATA”refers to the Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284 (2011).
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`Patent 10,469,934 B2
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`timeline of events, Patent Owner had served Apple with a district court
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`complaint more than a yearprior to the Board’s decision denyinginstitution
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`in the °693 IPR. Accordingly, after that time, 35 U.S.C. § 315(b) time
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`barred Apple from filing any further petitions against the ’934 patent.
`
`Six days before Apple filed its second petition, Bosefiled its petition
`challenging the °934 patent, on March 17, 2021.
`’680 IPR, Paper 2. The
`Board granted that petition and instituted the ’680 IPR on October 13, 2021.
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`°680 Dec. 1.
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`Applefiled its third petition, the instant Petition, on November15,
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`2021, together with its Joinder Motion, seeking to join the 680 IPR. As
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`noted above, Patent Owner challenges Apple’s request to join the ’680 IPR.
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`See Prelim. Resp. 11. Patent Ownernotes that the Board denied Apple’s
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`second petition, which Apple filed after the Bosefiled its petition. See id. at
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`7-8. Therefore, Patent Owner argues that we should denythis Petition as “a
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`third bite at the apple [that] is exactly the ‘kind of serial attack that General
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`Plastic was intendedto address,”because “Petitioner ‘is using the joinder
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`procedure as an end run aroundits failed [second] petition.’” Jd. at 11
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`(quoting Uniloc, Paper 9 at 4).
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`By way of summary, the Board instituted in Apple’s first attemptto
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`challenge the ’934 patent, denied institution in Apple’s second attemptto
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`challenge the °934 patent, and, over a year later and subject to a § 315(b)
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`bar, Apple seeks to join the ongoing Bose proceeding challenging that same
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`patent with the instant Petition.
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`B. General Plastic Factors
`
`The Board’s decision in General Plastic articulates a non-exhaustive
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`list of factors to be considered in evaluating whether to exercise discretion,
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`IPR2022-00188
`Patent 10,469,934 B2
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`under 35 U.S.C. § 314(a), to deny a petition that challenges a patent that was
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`previously challenged before the Board. These factors follow:
`
`whether the same petitioner previously filed a petition
`1.
`directed to the same claims of the samepatent;
`2.
`whether at
`the time of filing of the first petition the
`petitioner knew oftheprior art asserted in the secondpetition or
`should have knownofit;
`3.
`whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`responseto the first petition or received the Board’s decision on
`whetherto institute review in thefirst petition;
`4,
`the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the secondpetition
`and thefiling of the secondpetition;
`5.
`whetherthe petitioner provides adequate explanation for
`the time elapsed betweenthefilings of multiple petitions directed
`to the same claims of the same patent;
`6.
`the finite resources of the Board; and
`7.
`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.
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`General Plastic, Paper 19 at 9-10.
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`C. Assessment ofthe Factors
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`The Petition here is Apple’s third petition challenging the ’934 patent.
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`Patent Ownerurges that we exercise discretion to deny the Petition and deny
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`joinder because of Apple’s repeated challenges.
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`1. “whether the same petitioner previouslyfiled a petition
`directed to the same claims ofthe same patent”
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`Asstated above,this Petition is Apple’s third petition challenging
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`claims of the ’934 patent. Prelim. Resp. 6.
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`Inits first petition, Apple
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`challenged claims 1-3, 5, 7, 9-11, 14-16, 19, 21, 23-25, 28, 30, 32-37, 39,
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`42-43, 45-48, and 51-57 of the ’934 patent. IPR2021-00592, Paper 2, 1. In
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`8
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`IPR2022-00188
`Patent 10,469,934 B2
`its second petition, Apple challenged claims 1-6, 8, 10-20, 22-29, 31-36,
`38-42, 44, and 58-62 of the ’934 patent. IPR2021-00693, Paper 2, 1. Here,
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`in Apple’s third petition, Apple challenges a subset of the claims challenged
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`in the first two petitions, and adds two additional dependent claims 49 and
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`50. Pet. 6.
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`Even thoughthe challenged claimsare not exactly the samein the
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`instant Petition relative to Apple’s first two petitions, there is substantial
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`overlap.
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`Accordingly, this first General Plastic factor weighs in favor of
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`exercising discretion to deny institution.
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`2. “whetherat the time offiling ofthefirst [two]
`petition[s] the petitioner knew ofthe prior art asserted in
`the [third] petition or should have knownofit”
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`Patent Ownerargues that Apple “was aware ofthe priorart cited in
`
`this proceedingat the timeit filed the Second Apple IPR becausethe prior
`art was cited in the Bose IPR, which wasfiled March 17, 2021 ({Exhibit]
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`2006), six days before Petitioner filed the Second Apple IPR ({Exhibit]
`
`2007) on March 23, 2021.” Prelim. Resp. 13. In support of this assertion,
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`Patent Owner contends that Apple “cited the Bose IPR in its mandatory
`
`notices in the Second Apple IPR ({Exhibit] 2007 at 76) and expressly
`
`acknowledgedthat the Bose IPR relied on ‘an entirely different set of prior
`art.’” Jd. (citing Ex. 2007, 69).'' According to Patent Owner, Apple “had to
`
`know whatart was cited in the Bose IPR in order to makethe representation
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`that the art was ‘entirely different.’” Jd. Patent Ownerfurther argues that
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`Apple’s “Joinder Motion improperly ignores the Second Apple IPR and
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`!! Page numbersrefer to the original petition page numbers.
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`9
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`Patent 10,469,934 B2
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`instead focuses solely on what Petitioner knew whenit filed the First Apple
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`IPR dueto Petitioner’s mischaracterization of the Board’s ruling in Uniloc.”
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`Td. at 14.
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`Apple contendsthatit “was not aware of U.S. Patent No. 7,072,686
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`(‘Schrager’)—the primary reference that forms the basis of Grounds 1A—1D
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`of the [’]680 Proceeding—before Bosefiled IPR2021-00612 (a petition
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`against related U.S. Patent No. 10,206,025) a day later on March 3, 2021.”
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`Mot. 7. This contention does not specifically address what Apple knew or
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`should have knownatthe time of filing of its second petition, which Apple
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`filed after the filing of the Bose ’680 petition and after March 3, 2021. See
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`id. In any event, Apple appears to admit that it knew of Schraderprior to
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`filing its second petition on March 23, 2021. See id.
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`In addition, Patent
`
`Ownerintroduces evidence that Apple knew or should have knownabout
`
`Schragerpriorto filing ofits first petition. See Prelim. Resp. 15 (showing
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`“Petitioner had been aware of Schragersinceat least 2014” (citing Ex. 2003;
`
`Ex. 2004) and identifying “over 100 times” Apple “had cited Schragerto the
`Office ... in its own patent applications”(citing Ex. 2002)); 4 (citing Ex.
`2002, 10-15 (web documentlisting Apple as assignee on multiple patents
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`citing Schrager between 2014 and 2018)); Ex. 2003 (Information Disclosure
`
`Statement (IDS)filed by Apple listing Schrager in 2014); Ex. 2004 (IDS
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`filed by Apple listing Schrager in 2016).
`
`Accordingly, this second General Plastic factor weighs in favor of
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`exercising discretion to denyinstitution.
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`10
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`Patent 10,469,934 B2
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`3. “whetheratthe time offiling of the [third] petition the
`petitioner already received the patent owner’s preliminary
`responseto the first [two] petition[s] or received the
`Board’s decision[s] on whetherto institute review in the
`first [two] petition[s]”
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`Patent Ownerarguesthatpriorto filing the instant Petition, Apple had
`
`already received the preliminary responses for Apple’s first and second
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`petitions, and the Board hadinstituted Apple’s first petition and denied
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`Apple’s second petition. Prelim. Resp. 17. As explained abovein the
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`timeline of events, the record shows that Apple had received the Board’s
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`decisions granting thefirst petition and denying the secondpetition well
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`before Apple filed the instant Petition. In its Joinder Motion, Apple focuses
`on the ’680 IPRpetition andasserts that “Bose certainly did not have access
`to Koss’s preliminary responseor the Board’s institution decision when
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`preparing the petition for the [’]680 Proceeding.” Mot. 7-8.
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`Apple’s argumentis unpersuasive because the third General Plastic
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`factor addresses whether Apple had access to a Board decision or a
`
`preliminary response concerningits first or second petitions, such that Apple
`would have beenin a position to gain a benefit from having that information
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`before filing its third petition. See Uniloc, Paper 9 at 10.
`
`Accordingly, the third General Plastic factor weighs in favor of
`
`exercising discretion to denyinstitution.
`
`4. “the length oftime that elapsed betweenthe time the
`petitioner learned ofthe prior art asserted in the [third]
`petition andthefiling ofthe [third] petition”
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`Patent Ownerarguesthat “[t]he only prior art relied uponin this
`
`proceedingthat Petitioner asserted it did not know of whenit filed its
`petition for the First Apple IPR is Schrager.” Prelim. Resp. 18 (citing
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`11
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`Mot. 7). Patent Ownerrepeats that Apple knew ofthe priorart (including
`Schrager) whenit filed its second petition “for more than eight months,” and
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`at least should have knownofthe prior art whenitfiled its first petition. Jd.
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`(emphasis omitted). Apple argues that this factor is not relevant because it
`
`does not affect Patent Owner. Mot.9.
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`Contrary to Apple’s argument, the General Plastic factors are relevant
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`to our analysis under the precedential decision in Uniloc, as explained
`above. The fourth General Plastic factor seeks to address a delay, if any, in
`filing a subsequent,in this case, third petition, i.e., the Petition. Apple was
`awareofthe prior art asserted in its Petition for about seven and one-half
`
`months before Apple filed it (November 2021), because Apple’s second
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`petition (March 2021) lists the 680 IPR in the Related Matters section
`thereof andit also characterizes Bose’s ’680 petition as employing an
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`“entirely different set of prior art” relative to Apple’s first petition and
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`Bose’s ’680 petition. See Ex. 2007, 69, 76 (related matters); Prelim. Resp.
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`18 (citing Ex. 2007).
`
`Accordingly, the fourth General Plastic factor weighs in favor of
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`exercising discretion to denyinstitution.
`
`5. “whether the petitioner provides adequate explanation
`for the time elapsed betweenthefilings ofmultiple
`petitions directed to the same claims ofthe same patent”
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`Patent Owner contendsthat “Petitioner failed to provide any
`
`explanation as to the time elapsed between, on one hand,the filings of the
`First and Second Apple IPR[ petitions] in March of 2021, respectively, and,
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`on the other hand,thefiling of this proceeding almost eight monthslaterin
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`Novemberof 2021.” Prelim. Resp. 19. Apple argues the fourth and fifth
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`General Plastic factors together and asserts they are not relevant. See
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`12
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`Mot. 9. For the samereasonsstated above, including with respect to
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`factor 4, Uniloc dictates relevancy of the General Plastic factors here. See
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`Uniloc, Paper 9 at 10-11.
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`Accordingly,the fifth General Plastic factor weighs in favor of
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`exercising discretion to denyinstitution.
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`6. “thefinite resources ofthe Board”
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`Patent Ownerarguesthatit is appropriate to consider the resources of
`
`the Board in the event “Bose and Patent Ownersettle the Bose IPR.”
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`Prelim. Resp. 20. Patent Owneris correct that if Bose and Patent Owner
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`were to settle, Apple would standin as a petitioner in the joined proceeding
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`and that the Board would expendresources in continuing the proceeding in
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`that event. Jd. Apple argues that this sixth General Plastic factor weighs
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`against denial ofinstitution because the ’680 IPR is already ongoing and
`Apple’s involvement in an understudy role would not impact the Board’s
`
`resources. Mot. 9-13.
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`Although a joinder request is usually an efficient mechanism by which
`
`to becomea petitioner in an IPR, under the precedential decision in Uniloc,
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`Apple’s argument that Apple’s understudy role is an efficient use of
`resources in what would beits third petition challenging the ’934 patentis
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`not persuasive. See Uniloc, Paper 9 at 11-12. For example, consistent with
`Uniloc’s reasoning, should Bosesettle, “Apple would stand in to continue a
`proceeding that would otherwise be terminated.” Jd. at 12. Also, “[j]oinder
`in this circumstance would allow Apple to continue a proceeding, even after
`
`settlement with the primary petitioner, based on a [third] attempt by Apple.”
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`Id.
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`13
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`Accordingly, the sixth General Plastic factor weighs in favor of
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`exercising discretion to deny institution of the proceeding.
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`7. “the requirement under 35 U.S.C. § 316(a)(11) to issue
`a final determination notlater than 1 year after the date on
`which the Director notices institution ofreview”
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`Like the sixth General Plastic factor, the seventh factor, “the
`requirement under 35 U.S.C. § 316(a)(11) to issuea final determination not
`later than 1 year after the date on which the Director notices institution of
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`review,” implicates an efficiency consideration.
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`Patent Ownerarguesthat “[a]s in Uniloc, this factor is neutral.”
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`Prelim. Resp. 20. Apple argues that joinder and institution will not impact
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`the timing of issuing a final written decision in the ’680 IPR because the
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`issues are the same with Apple acting as an understudy to Bose. See Mot. 9—
`13.
`|
`
`Notwithstanding Apple’s argument, the issues were the samein the
`
`successive petitions in Uniloc because that case also involved a “me-too
`
`petition.” Uniloc, Paper 9 at 4; see also id. at 12 (“Because there is no
`evidence or persuasive argument towardsthis factor, we determinethis
`
`factor’s weight is neutral.”). However, unlike in Uniloc, Apple articulates
`
`some argumenthere even if Apple mainly explicitly relies on what was
`implicit in Uniloc—i.e., a “‘me-too petition” as providing an efficiency gain.
`Compare IPR2022-00854, Paper 8, 5 (Apple arguing that “[t]his factor
`weighsin favorofinstitution, as there is nothing to prevent the Board from
`
`issuing a final determination on Microsoft’s petition within one year’’), with
`
`Mot. 10-13 (providing efficiency “understudy” arguments as summarized
`
`above and also arguing that Apple consents to the ’680 IPRtrial schedule).
`
`14
`
`
`
`IPR2022-00188
`Patent 10,469,934 B2
`
`Accordingly, this seventh factor is neutral or weighsslightly in favor
`
`of not exercising discretion to denyinstitution.
`
`D. Conclusion
`
`After a holistic review of the General Plastic factors and the
`
`arguments presented for and against the exercise of discretionary denial, and
`
`following Uniloc, we exercise discretion under 35 U.S.C. § 314(a) and deny
`
`institution.
`
`IV.
`DENIAL OF MOTION FOR JOINDER
`Asstated above, the Director may join a party to an ongoing IPR only
`if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c).
`
`Because wedenyinstitution under § 314, we deny Petitioner’s Motion for
`
`Joinder.
`
`IV. ORDER
`
`| Accordingly,it is
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), the Petition is
`
`denied; and
`
`FURTHER ORDEREDthat the Motion for Joinder is denied.
`
`15
`
`
`
`IPR2022-00188
`Patent 10,469,934 B2
`
`For PETITIONER:
`
`Walter Renner
`David Holt
`Joel Henry
`FISH & RICHARDSONP.C.
`axf-ptab@fr.com
`holt2@fr.com
`jhenry@fr.com
`
`For PATENT OWNER:
`
`Mark Knedeisen
`K&L GATES LLP
`mark.knedeisen@klgates.com
`
`16
`
`
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