UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`RJ TECHNOLOGY, LLC,
`Patent Owner.
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`Case IPR2024-00597
`Patent No. 7,749,641
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`PETITIONER’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c), 37 C.F.R. § 42.22, AND § 42.122(b)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`RJ TECHNOLOGY, LLC,
`Patent Owner.
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`Case IPR2024-00597
`Patent No. 7,749,641
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`PETITIONER’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c), 37 C.F.R. § 42.22, AND § 42.122(b)
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`Case IPR2024-00597
`Attorney Docket No: 50095-0143IP2
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Apple Inc. (“Apple” or
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`“Petitioner”) moves for joinder with the inter partes review instituted against U.S.
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`Patent No. 7,749,641 (“the ’641 Patent”) in Samsung Electronics Co.,
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`Ltd. v. RJ Technology, LLC, IPR2023-01183 (“the Samsung Proceeding”). This
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`motion is timely filed no later than one month after the Board’s institution decision
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`in the Samsung Proceeding on January 22, 2024.
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`Apple’s Petition being filed in the current proceeding (“the Joinder
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`Petition”) is substantively the same as the petition filed in the Samsung Proceeding
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`(“the Samsung Petition”): it challenges the same claims, on the same grounds, and
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`relies on the same prior art as the Samsung Petition and therefore would create no
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`additional burden for the Board, the Samsung Proceeding Petitioner, or Patent
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`Owner if joined. Joinder would therefore lead to an efficient resolution of the
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`validity of the ’641 Patent.
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`Apple stipulates that if joinder is granted, it will act as an “understudy” and
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`will not assume an active role unless the Samsung IPR Petitioner ceases to
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`participate in the proceeding. The Samsung IPR Petitioner will maintain the lead
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`role in the proceeding so long as it remains in the proceeding. These limitations
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`will avoid lengthy and duplicative briefing. Apple also will not seek additional
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`depositions or deposition time. Joinder will not impact the trial schedule because
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`Apple expressly consents to the existing trial schedule in the Samsung Proceeding.
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`In fact, joinder will help efficiently resolve the disputes among the parties.
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`By joinder, a single Board decision may dispose of the issues raised in the
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`Samsung Proceeding for all interested parties.
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`Joinder will not unduly prejudice any party. Because joinder will not add
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`any new substantive issues, delay the schedule, burden deponents, or needlessly
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`increase filings, any additional costs on Patent Owner will be minimal.
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`Given the similarities of the proceedings, the lack of undue prejudice to
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`Patent Owner, and the potential benefit to the public and to the Board that would
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`accrue by Apple’s cooperative participation in the Samsung Petition in the event
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`that the Samsung Proceeding Petitioner’s participation terminates, the Board
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`should institute IPR and grant Apple’s Motion for Joinder.
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`Samsung does not oppose this request.
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`RJ Technologies, LLC (“RJ”) is the purported owner of the ’641 Patent. RJ
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`asserted the ’641 Patent against Apple in RJ Technology LLC v. Apple Inc., Case
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`No. 8-22-cv-01874 (CDCA), filed October 13, 2022. RJ asserted the same patent
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`against Samsung in RJ Technology LLC v. Samsung Electronics Co., Ltd. et al.,
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`Case No. 2-22-cv-00401 (EDTX), filed October 13, 2022.
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`Attorney Docket No: 50095-0143IP2
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`On July 21, 2023, Samsung Electronics Co., Ltd. petitioned for inter partes
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`review of the ’641 Patent in the Samsung Proceeding (IPR2023-01183). The
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`Board instituted inter partes review in the Samsung Proceeding on January 22,
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`2024.
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`On August 23, 2023, entirely independent of Samsung and based on
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`different prior art than that of the Samsung Proceeding, Apple petitioned for inter
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`partes review of the ’641 Patent in Apple Inc.. v. RJ Technology, LLC, IPR2023-
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`01350 (“the first Apple Proceeding”). No institution decision has yet been issued
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`in the first Apple Proceeding.
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`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`The Board has discretion to join a party that properly files an inter partes
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`review petition to an existing instituted proceeding addressing the same patent. See
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`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell at 4-6; Sony Corp. v.
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`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326, Paper
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`15 at 3-4 (PTAB Sep. 24, 2013); Microsoft Corp. v. Proxyconn, Inc., IPR2013-
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`00109, Paper 15 at 3-4 (PTAB Feb. 25, 2013). “The Board will determine whether
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`to grant joinder on a case-by-case basis, taking into account the particular facts of
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`each case, substantive and procedural issues, and other considerations.” Dell at 3.
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`The movants bear the burden of proof in establishing entitlement to the requested
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`relief. 37 §§ 42.20(c), 42.122(b). A motion for joinder should:
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`[A] set forth the reasons why joinder is appropriate; [B] identify any
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`new grounds of unpatentability asserted in the petition; [C] explain
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`what impact (if any) joinder would have on the trial schedule for the
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`existing review; and [D] address specifically how briefing and
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`discovery may be simplified.
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`Dell at 4.
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`A.
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`Joinder With the Samsung Proceeding Would Be Appropriate
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`Apple submits that joinder with the Samsung Proceeding is appropriate. The
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`challenge raised against the ’641 Patent in the Joinder Petition is materially the
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`same as that of the petition filed to initiate the Samsung Proceeding. More
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`specifially, the Joinder Petition and the Samsung Petition challenge the same
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`claims based on the same prior art grounds and evidence, including an identical
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`declaration from the same expert.1
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`Further, in the Joinder Petition, Apple agrees to proceed solely on the
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`grounds, evidence, and arguments advanced, or that will be advanced, in the
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`Samsung Proceeding as instituted. The Petition therefore warrants institution
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`under 35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits Apple’s joinder to the inter
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`partes review instituted in the Samsung Proceeding.
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`1 The declaration is a duplicate of the declaration in the Samsung Proceeding.
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`Upon joining the Samsung Proceeding, Apple will act as an “understudy”
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`and will not assume an active role unless the current petitioner ceases to participate
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`in the Samsung Proceeding. The current petitioner will maintain the lead role so
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`long as the current petitioner remains in the proceeding. These limitations will
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`avoid lengthy and duplicative briefing. Apple also will not seek additional
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`depositions or deposition time. Apple further agrees to the foregoing conditions
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`even in the event that other third-party petitioners are joined with the Samsung
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`Proceeding. The proposed joinder will neither unduly complicate the Samsung
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`Proceeding nor delay its schedule.
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`Joinder also will not unduly prejudice any party. Because joinder will not
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`add any new substantive issues, delay the schedule, burden deponents, or increase
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`needless filings, any additional cost to Patent Owner would be minimal. On the
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`other hand, denial of joinder could prejudice Apple. Apple’s interests with respect
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`to the ’641 Patent may not be adequately protected without joinder with the
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`Samsung Proceeding if, for instance, the first Apple Proceeding is not instituted
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`and/or the current petitioner of the Samsung Proceeding settles with Patent Owner.
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`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper 12
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`at 9 (PTAB Aug. 24, 2016) (cleaned up) (emphasis added). Here, joinder with the
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`Samsung Proceeding is appropriate because Apple’s Joinder Petition introduces
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`identical unpatentability arguments and the same grounds raised in the petition of
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`the Samsung Proceeding with no material changes to the facts, citations, evidence,
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`or analysis on the merits. Because these proceedings introduce identical
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`unpatentability arguments and the same grounds, good cause exists for joinder, so
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`that the Board, consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just,
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`speedy, and inexpensive resolution” of this proceeding and the Samsung
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`Proceeding.
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`B.
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`Joinder Would Not Add Any New Grounds of Unpatentability
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`Apple’s Joinder Petition is based on the same grounds and combinations of
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`prior art in the Samsung Proceeding. For simplicity and efficiency, Petitioner has
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`copied the substance of the petition in the Samsung Proceeding and its
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`accompanying expert declaration. Apple does not seek to introduce grounds or
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`claims not currently in the Samsung Proceeding and seeks only to join the
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`proceeding as instituted. Patent Owner should not require any discovery beyond
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`that which it may need in the Samsung Proceeding—nor should the Board permit
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`any. The present Joinder Petition introduces no new substantive issues relative to
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`the Samsung Proceeding and does not seek to broaden the scope of the Samsung
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`Proceeding.
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`Joinder Would Not Impact the Samsung Proceeding’s Trial
`C.
`Schedule
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`Joinder will not impact the Samsung Proceeding’s trial schedule because
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`Apple’s Joinder Petition presents no new issues or grounds of unpatentability. See
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`Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 at 6 (PTAB
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`Oct. 15, 2015) (granting a motion where “joinder should not necessitate any
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`additional briefing or discovery from Patent Owner beyond that already required in
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`[the original IPR]”). Indeed, Apple expressly consents to the existing trial
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`schedule in the Samsung Proceeding.
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`Patent Owner’s post-institution Response and Sur-Reply will not be
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`negatively impacted because the substantive issues presented in the Joinder
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`Petition are identical to the issues presented in the Samsung Proceeding. Patent
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`Owner will not be required to provide any additional analysis or arguments beyond
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`what it will already provide in responding to the petition in the Samsung
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`Proceeding. Also, because Apple’s Joinder Petition relies on the same expert
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`declaration, only a single deposition is needed for the proposed joined proceeding.
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`For all these reasons, Apple’s joinder with the Samsung Proceeding would
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`not unduly burden or negatively impact the trial schedule.
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`Attorney Docket No: 50095-0143IP2
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`D.
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`Procedures to Simplify Briefing and Discovery
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`Apple expressly agrees to take an “understudy” role, which would simplify
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`briefing and discovery. Specifically, Apple expressly agrees, upon joining the
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`Samsung Proceeding, that the following conditions, as previously approved by the
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`Board in similar circumstances, shall apply so long as the current petitioner
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`remains an active party:
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`a)
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`all filings by Apple in the Samsung Proceeding shall be consolidated
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`with the filings of the current petitioner, unless a filing concerns issues
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`solely involving Apple;
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`b)
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`Apple shall not be permitted to raise any new grounds not instituted by
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`the Board in the Samsung Proceeding, or introduce any argument or
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`discovery not introduced by the current petitioner;
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`c)
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`Apple shall be bound by any agreement between Patent Owner and the
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`current petitioner concerning discovery and/or depositions; and
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`d)
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`Apple at deposition shall not receive any direct, cross-examination or
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`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or any
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`agreement between Patent Owner and the current petitioner.
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`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5
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`(PTAB Apr. 10, 2015). Unless and until the current petitioner ceases to
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`participate, Apple will not assume an active role in the Samsung Proceeding.
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`Thus, by Apple accepting an “understudy” role, the parties can comply with
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`the trial schedule assigned to the Samsung Proceeding without duplicative efforts.
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`These steps minimize the possibility of any complication or delay from joinder.
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`See Sony, IPR2015-01353, Paper 11 at 6-7 (granting a motion for joinder where
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`petitioner agreed to an “understudy” role because “joinder would increase
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`efficiency by eliminating duplicative filings and discovery, and would reduce costs
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`and burdens on the parties as well as the Board”).
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`Furthermore, Apple stipulates that, should the first Apple Proceeding be
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`instituted and should the instant Motion for Joinder be granted, Apple will request
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`an adjustment of the briefing schedule in the first Apple Proceeding to align the
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`schedules of the first Apple Proceeding and the Samsung Proceeding.
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`Apple is further willing to agree to any other reasonable conditions the
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`Board deems necessary.
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`IV.
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`INSTITUTION IS APPROPRIATE UNDER GENERAL PLASTIC
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`Apple has previously challenged the ’641 Patent. Nevertheless, institution
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`of this second petition is appropriate. See General Plastic Industrial Co., Ltd. v.
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`Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15-19 (PTAB Sept. 6,
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`2017); Apple Inc. v. Uniloc 2017 LLC, IPR2020-00224, Paper 10 at 4-5 (PTAB
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`Apr. 6, 2020).
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`Factor 1: Apple previously filed a petition against the ’641 Patent.
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`However, the Apple Petition and the Joinder Petition are directed to different
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`claims, with the former challenging claims 5-14 and the latter challenging claims
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`1-18. Thus, this factor weighs in favor of institution.
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`Factors 2, 4, and 5: Apple became aware of the prior art relied upon in the
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`Samsung proceeding no later than the filing date of the Samsung Petition, i.e., July
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`21, 2023. However, because the Joinder Petition is substantively the same as the
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`Samsung Petition, Apple’s filing of the Joinder Petition did not unduly benefit
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`from additional time with this art. Thus, these factors are do not weigh in favor of
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`discretionary deial.
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`Factor 3: As of the filing date of the Joinder Petition, Apple received the
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`Patent Owner’s Preliminary Response (“POPR”) in the first Apple Proceeding, but
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`has not yet received an Institution Decision. However, because the Joinder
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`Petition is substantively the same as the Samsung Petition, which was filed before
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`Apple’s receipt of the POPR in the first Apple Proceeding, Apple’s filing of the
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`Joinder Petition did not unduly benefit from receipt of the POPR in the first Apple
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`Proceeding. Thus, this factor does not weigh in favor of discretionary denial.
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`Factors 6 and 7: As stated above, Apple seeks to join the Samsung Petition
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`and is not raising arguments beyond those raised by the Samsung Petition. These
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`factors thus weigh in favor of institution, as there should be no material impact on
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`the Board’s finite resources or its ability to issue a final determination on the
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`Case IPR2024-00597
`Attorney Docket No: 50095-0143IP2
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`Samsung Petition within one year.
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`V. CONCLUSION
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`For the foregoing reasons, Apple respectfully requests that its Petition for
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`Inter partes review of the ’641 Patent be instituted and that Apple be joined to the
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`Samsung IPR proceeding IPR2023-01183.
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`Dated: February 22, 2024
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`Respectfully submitted,
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Hyun Jin In, Reg. No. 70,014
`Gretchen DeVries, Reg. No. 72,505
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 612-335-5070
`F: 612-288-9696
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`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on February 22,
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`2024, a complete and entire copy of this Petitioner’s Motion for Joinder was
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`provided by Federal Express, to the Patent Owner, by serving the correspondence
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`address of record as follows:
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`EDELL, SHAPIRO & FINNAN, LLC
`9801 Washingtonian Blvd., Suite 750
`Gaithersburg, MD 20878
`(301) 424-3640
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`pacheco@fr.com
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