Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: February 1, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-01290
`Patent 10,259,021 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 1, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-01290
`Patent 10,259,021 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–19 of U.S. Patent No. 10,259,021 B2 (Ex. 1001, “the ’021 patent”).
`Paper 3 (“Pet.”). Petitioner also filed a Conditional Motion for Joinder with
`Samsung et al. v. GUI Global Products, Ltd., IPR2021-00336 (“the 336
`IPR” or “the Samsung 336 IPR”). Paper 4 (“Mot.”). GUI Global Products,
`Ltd., d/b/a Gwee (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 10 (“Prelim. Resp.”). Patent Owner also filed an Opposition
`to the Conditional Motion for Joinder. Paper 8 (“Opp.”). Petitioner filed a
`Reply to Patent Owner’s Opposition. Paper 9 (“Reply”). We have authority
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.”
`For the reasons described below, we do not institute an inter partes
`review of the challenged claims and deny Petitioner’s Conditional Motion
`for Joinder.
`
`II. RELATED PROCEEDINGS
`The parties indicate that the ’021 patent is the subject of court
`proceeding GUI Global Products, Ltd. d/b/a Gwee v. Apple, Inc., Civil
`Action No. 4:20-cv-2652 (S.D. Tex.), which has been consolidated with
`Civil Action No. 4:20-cv-2624 (S.D. Tex.). Pet. 77; Paper 6, 2. The parties
`also indicate that the ’021 patent is the subject of the 336 IPR, and IPR2021-
`00471 (“the 471 IPR”), where Petitioner filed a petition challenging claims
`1, 2, 4–10, 12, 14–17, and 19 of the ’021 patent. Pet. 77–78; Paper 6, 2. In
`the 471 IPR, we instituted an inter partes review of claims 1, 2, 4–10, 12,
`
`2
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`14–17, and 19 of the ’021 patent. Apple Inc. v. GUI Global Products, Ltd.,
`D/B/A Gwee, IPR2021-00471, Paper 10 at 7–8, 33 (PTAB Aug. 13, 2021)
`(“471 Decision” or “471 Dec.”). Thus, before us here is Petitioner’s second
`petition for inter partes review. In accordance with the Consolidated Trial
`Practice Guide,1 Petitioner filed a separate paper, identifying a ranking of its
`petitions and explaining the differences between the petitions. Paper 2
`(“Explanation”).
`In the 336 IPR, we instituted an inter partes review of claims 1–19 of
`the ’021 patent on the following grounds:
`
`Claim(s) Challenged
`1–9, 11–15, 19
`10
`16, 17
`18
`
`
`
`35 U.S.C §
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Kim2
`Kim, Koh3
`Kim, Lee4
`Kim, Jiang5
`
`
`1 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`2019), https://www.uspto.gov/TrialPracticeGuideConsolidated, 59–61
`(explaining that the Board may exercise discretion under 35 U.S.C. § 314(a)
`to deny a petition(s) if it determines that more than one petition challenging
`claims of the same patent is not warranted) (“Trial Practice Guide” or
`“TPG”).
`2 U.S. Pat. Appl. Pub. No. US 2010/0227642 A1, published Sept. 9, 2010
`(Ex. 1010, “Kim”).
`3 Korean Pat. Pub. No. 10-2008-0093178, published Oct. 21, 2008 (Ex.
`1012, 16–30, “Koh”). Petitioner provides a certified English-language
`translation of Koh (Ex. 1012, 1–15). Any reference to Koh hereinafter will
`be to the English-language translation.
`4 U.S. Pat. Appl. Pub. No. US 2010/0298032 A1, published Nov. 25, 2010
`(Ex. 1013, “Lee”).
`5 U.S. Pat. No. US 5,946,121, issued Aug. 31, 1999 (Ex. 1014, “Jiang”).
`3
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`Samsung et al. v. GUI Global Products, Ltd., D/B/A Gwee, IPR2021-00336,
`Paper 11 at 8, 38 (PTAB Jul. 2, 2021) (“336 Decision” or “336 Dec.”).
`
`III. DISCUSSION
`The Petition in this proceeding asserts the same grounds of
`unpatentability as those upon which we instituted review in the Samsung
`336 IPR. Compare Pet. 1–3, with 336 Dec. 8, 38. Indeed, Petitioner, Apple,
`contends that the Petition is “substantively equivalent to the petition
`instituted in” the 336 IPR. Pet. 1. Petitioner requests that we institute inter
`partes review and conditionally seeks joinder with the 336 IPR. Mot. 1. In
`the Motion, Petitioner seeks joinder “if, and only if, the Board has
`previously denied institution of Apple Inc., v. GUI Global Products, Ltd.,
`IPR2021-00471 (“the 471 Proceeding”).” Id. at 1; Explanation 1. In its
`Reply, Petitioner revises its request stating, “Apple respectfully requests that
`the Board institute review of IPR2021-01290 and grant Apple’s pending
`Motion if, and only if, the Board will align in time the issuance of final
`written decisions in the 336 Proceeding and the 471 Proceeding.” Reply 2–
`3. Petitioner asserts that it is seeking alignment of the schedules in 336 and
`471 proceedings in order to avoid a potential prejudice from estoppel under
`35 U.S.C. § 315(e)(1). Id. at 3.
`“To join a party to an instituted IPR, the plain language of § 315(c)
`requires two different decisions.” Facebook, Inc. v. Windy City Innovations,
`LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). First, we “determine whether
`the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.”
`Id. Second, if the petition warrants institution, we then “decide whether to
`‘join as a party’ the joinder applicant.” Id. Thus, before determining
`
`4
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`whether to join Petitioner as a party to the 336 IPR, we first determine
`whether the petition warrants institution under § 314(a).
`The Director has discretionary authority under 35 U.S.C. § 314(a) to
`institute inter partes review and has delegated that authority to the Board.
`See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018); 37 C.F.R.
`§ 42.4(a). Patent Owner argues that “the Board should exercise its
`discretion and deny institution of trial,” citing the Board’s precedential
`General Plastic6 and Uniloc7 decisions. Prelim. Resp. 3–4. Petitioner
`argues we should institute an inter partes review of the challenged claims.
`Pet. 73–76. For the reasons set forth below, we exercise our discretion to
`deny institution.
`In General Plastic, the Board articulated a list of non-exclusive
`factors to be considered in determining whether to exercise discretion under
`§ 314(a) to deny a petition:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`
`6 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”).
`7 Apple, Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28,
`2020) (precedential) (“Uniloc”).
`
`5
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings 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.
`General Plastic, Paper 19 at 16 (citing NVIDIA Corp. v. Samsung Elec. Co.,
`IPR2016-00134, Paper 9 at 6–7 (PTAB May 4, 2016)). See also Uniloc at
`4–5 (“before determining whether to join [petitioner] as a party to the
`[instituted] IPR, even though the [p]etition is a ‘me-too petition,’ we first
`determine whether application of the General Plastic factors warrants the
`exercise of discretion to deny the [p]etition under 314(a)”).
`
`Factor 1: “whether the same petitioner previously filed a
`petition directed to the same claims of the same patent”
`As explained above, before us is Petitioner’s second petition
`challenging the claims of the ’021 patent. Pet. 73–74; Prelim. Resp. 6. We
`understand that Petitioner initially filed this Petition in case we did not
`institute review in the 471 IPR. Pet. 74; Explanation 4–5 (Petitioner
`“respectfully requests that the Board institute” review in the 471 IPR, but if
`the Board does not “the next-most efficient course of action would be for the
`Board to institute” in this proceeding). As stated above, we instituted inter
`partes review in the 471 IPR.
`The 471 IPR involves claims 1, 2, 4–10, 12, 14–17, and 19 of the ’021
`patent and the Petition here involves claims 1–19. Thus, more claims are
`challenged here than in the 471 IPR. Nonetheless, Petitioner provides no
`explanation why it is again challenging claims 1, 2, 4–10, 12, 14–17, and 19
`here or why Petitioner needs two instituted inter partes reviews on the
`
`6
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`common claims. Pet. 73–74. In none of its briefs does Petitioner explain
`“why the Board should exercise its discretion to institute additional petitions
`if it [the Board] identifies one petition that satisfies petitioner’s burden under
`35 U.S.C. § 314(a),” short of saying that “Gundlach (471 IPR) and Kim (this
`Petition) offer very different disclosures.” Explanation 3; TPG 60.8
`However, Petitioner does not identify any circumstances identified in the
`Trial Practice Guide supporting a need for a second petition, such as a large
`number of claims in litigation or a potential dispute about priority date. TPG
`59. Accordingly, based on the record before us, we agree with Patent Owner
`(Prelim. Resp. 6) that this General Plastic factor weighs in favor of denying
`institution of the proceeding.
`
`Factor 2: “whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition
`or should have known of it”
`Petitioner argues that it “learned of the prior art in the Samsung
`Petition [in the 336 IPR] around the time that petition was filed.” Pet. 74.
`Petitioner argues that because it filed its petition in the 471 IPR five weeks
`after the petition was filed in the 336 IPR, it “could not have reasonably
`leveraged its knowledge” of the prior art involved in the 336 IPR against
`Patent Owner. Id. Patent Owner argues that because Petitioner admitted
`that it knew of the prior art asserted in the 336 IPR prior to Petitioner filing
`the petition in the 471 IPR, General Plastic factor two weighs in favor of
`
`
`8 As discussed above, in the Explanation, Petitioner requests that we should
`institute inter partes review in the 471 IPR, and if we do not, then we should
`institute here. Explanation 3–5. In the Reply, however, Petitioner requests
`that we institute here, despite having instituted the 471 IPR, without
`explaining why we should do so. Reply 2–3.
`7
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`denying institution of the proceeding. Prelim. Resp. 7. We agree that this
`factor weighs in favor of denying institution of the proceeding because
`Petitioner does not explain sufficiently why it had to file the petition in the
`471 IPR five weeks after the petition was filed in the 336 IPR such that
`Petitioner could not have “leveraged its knowledge” of the prior art involved
`in the 336 IPR against Patent Owner. In other words, Petitioner fails to
`explain sufficiently, for example, why it could not have included the claims
`or prior art it asserts here in the 471 IPR. Accordingly, we determine that
`this second General Plastic factor weighs in favor of denying institution of
`the proceeding.
`
`Factor 3: “whether at the time of filing of the second petition
`the petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition”
`For this factor, Patent Owner argues that by the time Petitioner filed
`the instant Petition, Petitioner had already received Patent Owner’s
`preliminary responses in the 336 and 471 IPRs and the Board’s 336
`Decision. Prelim. Resp. 8. Patent Owner also argues that even though
`Petitioner’s Petition is “styled as a Copycat Petition” that “is of no moment.”
`Id. (citing Uniloc, Paper 9 at 10). Petitioner argues that, unlike the
`petitioners in General Plastic and Uniloc, Petitioner has not received the
`Board’s institution decision on its first petition in the 471 IPR. Pet. 75.
`We determine that Petitioner had access to the preliminary response in
`the 471 IPR, and, therefore, this third General Plastic factor weighs in favor
`of denying institution of the proceeding.
`
`8
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`Factor 4: “the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition”
`
`Factor 5: “whether the petitioner provides adequate
`explanation for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent”
`For the fourth and fifth General Plastic factor, Patent Owner argues
`that Petitioner acknowledges that it knew of the prior art it asserts in this
`proceeding in “late 2020,” but did not file the Petition until July 30, 2021.
`Prelim. Resp. 8 (citing Pet. 77). Patent Owner argues “simply because
`Apple’s second petition is a Copycat Petition that is no excuse for the
`delay.” Id. at 9 (citing Uniloc, Paper 9 at 11).
`Petitioner argues that “this Copycat Petition is within the one-month
`timeline set by the Board’s rules.” Pet. 75–76. Petitioner, however,
`provides no explanation why it could not have included the prior art or
`claims it asserts here in the 471 IPR that was filed several weeks after the
`petition in the 336 IPR, but several months prior to the Petition that was filed
`here. In other words, there was a significant gap between the filing of the
`471 IPR (at which time Petitioner knew about the prior art before us in this
`case) and the filing of the Petition here. Accordingly, we determine that the
`fourth and fifth General Plastic factors weigh in favor of denying institution
`of the proceeding.
`
`Factor 6: “the finite resources of the Board”
`Patent Owner argues that based on Petitioner’s conditional motion to
`join, Petitioner requests “that this inter partes review go forward as an
`independent proceeding, not joined to the earlier 336 Proceeding . . . if the
`471 Proceeding is instituted.” Prelim. Resp. 9–10. Patent Owner argues that
`
`9
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`such a result would require the Board to adjudicate identical issues in two
`separate proceedings and would also harass Patent Owner. Id. at 10.
`Because we instituted review in 471 IPR, the condition upon which
`Petitioner seeks joinder with the 336 IPR has not materialized. See Mot. 1.
`Thus, Patent Owner is correct that the result of no joinder (which Petitioner
`requested in its Conditional Motion) would be to maintain Petitioner’s
`challenge in the 471 IPR, while also adjudicate identical issues in the 336
`IPR and this proceeding. We determine that such a result would be an
`inefficient use of Board resources.9 Accordingly, we determine that the
`sixth General Plastic factor weighs in favor of denying institution of the
`proceeding.
`
`Factor 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”
`Patent Owner argues that like the sixth General Plastic factor, the
`seventh factor is also concerned with efficiency considerations and that here,
`this factor is neutral. Prelim. Resp. 10. Petitioner argues that the Board is
`capable of issuing a final written decision within one year. Pet. 76–77. We
`determine this factor’s weight is neutral.
`
`
`9 Petitioner appears to have changed the condition upon which its motion to
`join should be granted. Reply 2–3. But even if we were to entertain this late
`request, the result would still be burdensome upon the Board, because
`Petitioner requests that we “grant Apple’s pending Motion if, and only if, the
`Board will align in time the issuance of final written decisions in the 336
`Proceeding and the 471 Proceeding.” Id. at 3. Compressing the due date for
`a final written decision in the 471 IPR by six weeks would be burdensome
`on the Board.
`
`10
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`Conclusion
`In light of the General Plastic factors, the Uniloc decision, the
`guidance in the TPG, and the arguments presented for and against the
`exercise of discretionary denial, we conclude that it is appropriate here to
`exercise our discretion under 35 U.S.C. § 314(a).
`
`IV. DENIAL OF MOTION FOR JOINDER
`As stated 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 we exercise discretion to deny institution under § 314, we deny
`Petitioner’s Conditional Motion for Joinder.
`
`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
`denied; and
`FURTHER ORDERED that the Conditional Motion for Joinder is
`denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`
`
`IPR2021-01290
`Patent 10,259,021 B2
`
`PETITIONER:
`
`W. Karl Renner
`Andrew B. Patrick
`Roberto Devoto
`Kenneth Wayne Darby Jr.
`Kim Leung
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`patrick@fr.com
`devoto@fr.com
`kdarby@fr.com
`leung@fr.com
`
`
`
`PATENT OWNER:
`
`John J. Edmonds
`Stephen F. Schlather
`EDMONDS & SCHLATHER, PLLC
`jedmonds@ip-lit.com
`sschlather@ip-lit.com
`
`Tarek N. Fahmi,
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`
`12
`
`
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