Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: March 24, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`PGR2022-00003
`Patent 10,600,046 B2
`
`
`Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. §§ 321, 324
`
`Denying Motion for Joinder
`35 U.S.C. § 325(c); 37 C.F.R. § 42.222
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Date: March 24, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`PGR2022-00003
`Patent 10,600,046 B2
`
`
`Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. §§ 321, 324
`
`Denying Motion for Joinder
`35 U.S.C. § 325(c); 37 C.F.R. § 42.222
`
`
`
`
`
`
`
`
`PGR2022-00003
`Patent 10,600,046 B2
`
`I.
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`post-grant review of claims 1‒17 of U.S. Patent No. 10,600,046 B2
`(Ex. 1001, “the ’046 patent”). Petitioner also filed a Motion for Joinder
`(Paper 3, “Mot.”) requesting that it be joined to PGR2021-00028 (the
`“Google PGR”) filed by Google LLC (“Google”). Mot. 1. RFCyber Corp.
`(“Patent Owner”) filed a Response to Petitioner’s Motion for Joinder (Paper
`7, “Resp.”), and Petitioner filed a Reply in support of its Motion for Joinder
`(Paper 8, “Reply”). Patent Owner also filed a Preliminary Response (Paper
`9).
`
`For the reasons stated below, we deny Petitioner’s Motion for Joinder
`and do not institute a post-grant review.
`II. BACKGROUND
`A. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’046 patent: RFCyber Corp. v. Apple Inc., Case No. 6:21-cv-
`00916 (W.D. Tex.); RFCyber Corp. v. Google LLC, Case No. 2:20-cv-00274
`(E.D. Tex.); and RFCyber Corp. v. Samsung Electronics Co. Ltd., Case No.
`2:20-cv-00335 (E.D. Tex.). Pet. 2; Paper 6, 1–2.
`In the Google PGR, the Board instituted a post-grant review of claims
`1–5, 12–14, and 171 of the ’046 patent on the following grounds:
`Claims Challenged
`35 U.S.C. §
`Reference/Basis
`1–5, 12–14, 17
`112(a)
`Written Description
`1–5, 12–14, 17
`101
`Eligibility
`
`
`1 The Board considered only claims 1–5, 12–14, and 17 in the Google PGR
`in view of Patent Owner’s statutory disclaimer of claims 6–11, 15, 16, 19,
`and 20 of the ’046 patent. Google PGR, Paper 10, 9.
`
`2
`
`
`
`PGR2022-00003
`Patent 10,600,046 B2
`
`B. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 2. Patent
`Owner identifies itself as the real party in interest. Paper 6, 1.
`C. Asserted Grounds
`The Petition in this proceeding asserts the same grounds of
`unpatentability as those upon which the Board instituted review in the
`Google PGR. Pet. 23.
`
`III. ANALYSIS
`A. Motion for Joinder
`Under Board rules, “[a]ny 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). Petitioner’s Motion for Joinder was filed October 20, 2021,
`which is more than one month after the Board instituted post-grant review in
`the Google PGR on July 23, 2021. Petitioner, however, argues that special
`circumstances warrant that the Board exercise its discretion under 37 C.F.R.
`§ 42.5 to waive the one-month joinder period. Mot. 3–6.
`First, Petitioner argues that the present circumstances are the same as
`the circumstances in two Board decisions in which the one-month joinder
`period was waived. Id. at 3–4 (citing Sony Corp. of Am. v. Network-1
`Security Solutions, Inc., IPR2013-00495, Paper 13 at 4 (PTAB Sept. 16,
`2013); GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge 1, IPR2017-
`00925, Paper 13 at 8–11 (PTAB June 9, 2017)). In particular, Petitioner
`asserts that in Sony Corp., “[t]he Board concluded that waiver was merited,
`highlighting that such joinder would not expand the grounds instituted,
`would require no change to the trial schedule, and would impose no
`additional burden because the joining party agreed to serve in an understudy
`
`3
`
`
`
`PGR2022-00003
`Patent 10,600,046 B2
`role.” Id. (citing Sony Corp., Paper 13 at 4). According to Petitioner, its
`requested joinder will not expand the grounds instituted because the Petition
`is substantively identical to the petition in the Google PGR. Id. at 4.
`Petitioner also contends that the requested joinder will not require changing
`the trial schedule or impose additional burden and that Petitioner has agreed
`to serve in an understudy role unless and until Google is terminated. Id.
`Second, Petitioner argues that good cause exists to waive the one-
`month joinder period in view of “Patent Owner’s strategically sequenced
`lawsuits.” Id. Specifically, Petitioner contends that Patent Owner waited
`more than one month after institution in the Google PGR (i.e., after the one-
`month joinder period) to file suit against Petitioner on September 7, 2021,
`and this timing was “a strategic decision that appears designed to deprive
`[Petitioner] the opportunity to join Google’s challenge or bring its own PGR
`challenge.” Id. at 4–5. In Petitioner’s view, “[p]ermitting Patent Owner to
`deploy such tactics undermines the AIA’s and USPTO’s objectives of
`improving patent quality.” Id. at 5.
`Patent Owner argues that the Motion for Joinder is untimely and the
`Board should not waive the one-month period. Resp. 10–13. Specifically,
`Patent Owner disputes Petitioner’s assertion that joinder will not require
`changing the trial schedule, arguing that Petitioner has necessitated a
`wholesale change to the trial schedule by filing its Motion for Joinder after
`the original due date of patent owner’s response in the Google PGR and after
`Google and Patent Owner reached a settlement agreement. Id. at 10–11.
`Patent Owner contends that it reasonably relied on its agreement with
`Google to put off deposing Google’s expert and submitting its patent owner
`response in the Google PGR, and, in filing its Motion for Joinder after
`Google and Patent Owner had filed a joint motion to terminate the Google
`
`4
`
`
`
`PGR2022-00003
`Patent 10,600,046 B2
`PGR, Petitioner was aware that Patent Owner did not expect to file its patent
`owner response. Id. at 11.
`We agree with Patent Owner that joinder would require changing the
`trial schedule. In the Google PGR, the parties extended by stipulation the
`due date for the patent owner response from October 15, 2021 to November
`15, 2021. Google PGR, Paper 12, 1. The parties filed the joint motion to
`terminate the Google PGR on October 19, 2021. Google PGR, Paper 14.
`As noted above, Petitioner’s Motion for Joinder was filed October 20, 2021.
`With this timing, joinder would impact the trail schedule significantly.
`Indeed, as Patent Owner notes, the Board has already extended the due date
`of the patent owner response in the Google PGR indefinitely. See Resp. 4
`(citing Ex. 2005), 11. Moreover, Patent Owner indicates that it has not yet
`deposed the expert witness or prepared a response in the Google PGR, and
`we agree that this step was reasonable in view of the settlement agreement
`with Google. We also note that Petitioner, as a non-party, even requested
`that the Board delay its decision on the joint motion to terminate the Google
`PGR. Ex. 2004.
`We also agree with Patent Owner’s assertion that the cases relied on
`by Petitioner do not support waiving the one-month joinder period. See
`Resp. 12 n.1. In Sony Corp., the Board determined that the fact that the
`petitioners had attempted previously—within the one-month period—to be
`joined to the proceeding weighed in favor of considering the joinder request
`outside the one-month period. Sony Corp., Paper 13 at 7. The Board also
`noted that the petitioners in Sony Corp. were not seeking to replace an
`existing petitioner that had settled with the patent owner. Id. at 9. Similarly,
`in GlobalFoundries, the petitioner was attempting to join a proceeding after
`the one-month period, but the petitioner’s parent company previously had
`
`5
`
`
`
`PGR2022-00003
`Patent 10,600,046 B2
`attempted to join the proceeding within the one-month period.
`GlobalFoundries, Paper 13 at 7. In addition, it appears that the existing
`petitioner in the proceeding sought to be joined had not settled with the
`patent owner. See id. at 10 (indicating that the patent owner argued that
`permitting joinder would frustrate the possibility of settlement).
`These unique facts, however, are not present here. Petitioner has not
`attempted previously to join the Google PGR within the one-month period.
`Also, in this case, Patent Owner and Google reached a settlement agreement
`prior to Petitioner’s attempt to join, unlike the situation in Sony Corp. and
`GlobalFoundries. In other words, Petitioner is essentially seeking to replace
`Google in the proceeding, in direct contrast to the petitioners in Sony Corp.
`and GlobalFoundries. This case also differs from the facts in Sony Corp.
`and GlobalFoundries in that, for the reasons discussed above, joinder would
`require changing the trial schedule. Furthermore, Petitioner’s agreement to
`serve in an understudy role provides little or no weight in favor of waiving
`the one-month joinder period here because Petitioner filed its Motion for
`Joinder knowing that Google and Patent Owner had already reached a
`settlement agreement and filed a joint motion to terminate the Google PGR.
`Regarding Petitioner’s second argument (i.e., the Board should waive
`the one-month joinder period in view of the timing of Patent Owner’s
`lawsuit against Petitioner), Patent Owner argues that Petitioner “cites no law
`that allows or encourages the Board to consider [Patent Owner’s] subjective
`intentions on when to file suit.” Resp. 12. According to Patent Owner,
`“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.” Id. (citing Pfizer, Inc. v. Teva Pharms., USA,
`Inc., 429 F.3d 1364, 1381 (Fed. Cir. 2005)).
`
`6
`
`
`
`PGR2022-00003
`Patent 10,600,046 B2
`Petitioner’s contention that Patent Owner timed the lawsuit to thwart
`Petitioner’s ability to challenge the’046 patent is speculative at best. Indeed,
`Petitioner asserts that the timing of the lawsuit only “appears designed to
`deprive [Petitioner] the opportunity to join Google’s challenge or bring its
`own PGR challenge.” Mot. 4–5 (emphasis added). Petitioner does not point
`to any factor other than the timing of the lawsuit to suggest that Patent
`Owner was intentionally gaming the system. Nor does Petitioner point out
`any evidence or reasoning to suggest that Patent Owner should have brought
`the lawsuit earlier. We also agree with Patent Owner that there could be
`many different factors influencing a patent owner’s decision of when to file
`suit. Thus, based on the record before us, we decline to speculate that Patent
`Owner was attempting to game the system by waiting until September 7,
`2021, to file suit against Petitioner.
`In the Reply, Petitioner argues that “it could not have followed” the
`one-month joinder rule because of the sequenced timing of Patent Owner’s
`lawsuit, and that it “acted diligently” after Patent Owner’s lawsuit was filed.
`Reply 2–3. This argument is not persuasive. We disagree that Petitioner
`“could not have followed” the one-month joinder rule because of the timing
`of Patent Owner’s lawsuit. Petitioner was free to file its Petition and Motion
`for Joinder at any time; it did not need to be sued by Patent Owner first.
`More importantly, recognizing that Petitioner may not have been motivated
`to attempt to join the Google PGR until it was sued on September 7, 2021,
`we nevertheless disagree that Petitioner acted diligently in filing the Petition
`and Motion for Joinder on October 20, 2021. Petitioner filed its Petition and
`Motion for Joinder slightly more than six weeks after September 7, 2021.
`That is, despite being past the one-month period provided by 37 C.F.R.
`
`7
`
`
`
`PGR2022-00003
`Patent 10,600,046 B2
`§ 42.222(b) when sued, Petitioner still took more than another month to file
`its Petition and Motion for Joinder.
`In view of the above, we do not waive the one-month period to file a
`motion for joinder under 37 C.F.R. § 42.222(b) and therefore deny
`Petitioner’s Motion for Joinder as untimely.
`B. Eligibility for Post-Grant Review under 35 U.S.C. § 321
`Institution of post-grant review is barred when a petition is filed more
`than 9 months after the challenged patent is granted. 35 U.S.C. § 321(c).
`The ’046 patent issued on March 24, 2020 (see Ex. 1001, code (45)), and the
`Petition in this proceeding was accorded a filing date of October 20, 2021
`(see Paper 1). Thus, the Petition was filed outside the 9-month statutory
`period for requesting post-grant review under § 321(c).
`Accordingly, in view of our decision to deny Petitioner’s Motion for
`Joinder, we deny the Petition because it was not filed within the time limit
`imposed under 35 U.S.C. § 321(c).
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion for Joinder is denied; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 321, the Petition
`is denied.
`
`
`8
`
`
`
`PGR2022-00003
`Patent 10,600,046 B2
`FOR PETITIONER:
`
`Adam P. Seitz
` Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Vincent J. Rubino, III
`Peter Lambrianakos
`Enrique W. Iturralde
`Richard Cowell
`FABRICANT LLP
`vrubino@fabricantllp.com
`plambrianakos@fabricantllp.com
`eiturralde@fabricantllp.com
`rcowell@fabricantllp.com
`
`
`
`9
`
`
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