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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`____________________________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner.
`___________________________________
`
`Case IPR2021-01290
`Patent 10,259,021 B2
`___________________________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`TABLE OF CONTENTS
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`
`INTRODUCTION ........................................................................................... 1
`I.
`BACKGROUND ............................................................................................. 2
`II.
`III. ABSENT JOINDER, DISCRETIONARY DENIAL OF APPLE’S
`COPYCAT PETITION IS APPROPRIATE ................................................... 3
`A. General Plastic Factors .......................................................................... 5
`B. Assessment of the General Plastic Factors ........................................... 6
`1.
`whether the same petitioner previously filed a petition directed
`to the same claims of the same patent ......................................... 6
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`2.
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`3.
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`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 .......................................................................... 7
`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 ............................................. 7
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`4.
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`5.
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`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 ......................................................... 8
`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 ............................................. 9
`the finite resources of the Board ................................................. 9
`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 .......................................10
`Summary ....................................................................................10
`8.
`IV. CONCLUSION ..............................................................................................11
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`6.
`7.
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`TABLE OF AUTHORITIES
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`CASES
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`Apple Inc. v. GUI Global Products Ltd.,
`IPR2020-00471, Paper 3 (PTAB Feb. 19, 2021) ........................................2, 8
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`Apple Inc. v. GUI Global Products Ltd.,
`IPR2020-00471, Paper 10 (PTAB Aug. 13, 2021) .......................................... 2
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`
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`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854 (PTAB Oct. 28, 2020) ................................................ 4, 9, 10
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`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357 (PTAB Sept. 6, 2017) ........................................................4, 6
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`Samsung Electronics Co., Ltd. v. GUI Global Products Ltd.,
`IPR2020-00336, Paper 4 (PTAB Jan. 13, 2021) ............................................. 8
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`
`Samsung Electronics Co., Ltd. v. GUI Global Products Ltd.,
`IPR2020-00336, Paper 11 (PTAB Jul. 2, 2021) .............................................. 8
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`
`
`REGULATIONS
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`37 C.F.R. § 42.1(b) ................................................................................................ 1
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`I.
`
`INTRODUCTION
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`Petitioner, Apple, originally sought joinder with the 336 Proceeding, but if,
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`and only if, the Board has previously denied institution of Apple Inc., v. GUI
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`Global Products, Ltd., IPR2021-00471. Apple Mot. for Joinder at 1. That condition
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`was not met and the 471 Proceeding has been instituted. Now Apple seeks joinder
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`“if and only if the Board will align in time the issuance of final written decisions in
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`the 336 Proceeding and the 471 Proceeding, where alignment is achieved only if
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`the final written decision of the 471 Proceeding issues concurrent with or in
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`advance of the final written decision of the 336 Proceeding.” Apple Reply re Mot.
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`for Joinder at 3. The Board should not countenance such litigation tactics and,
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`unless it joins this proceeding with the 336 Proceeding, the Board should exercise
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`its discretion and deny institution of trial. Proceeding otherwise would both subject
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`Patent Owner to the burden of having to defend two identical proceedings and
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`require to the Board to adjudicate same. Apple has already challenged the claims
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`of the ’021 patent in the 471 Proceeding and offers no good explanation as to why
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`it waited seven-plus months to file the instant petition which is a copycat of that in
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`the 336 Proceeding. Under these circumstances, instituting trial and not joining this
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`proceeding with the 336 Proceeding, involving identical grounds and identical
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`unpatentability arguments, would be contrary to the requirement of ensuring just,
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`speedy, and inexpensive resolution of such matters. 37 C.F.R. § 42.1(b).
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`II. BACKGROUND
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`On February 11, 2021, Petitioner, Apple, filed a petition in IPR2021-00471
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`(“the 471 Proceeding”) challenging claims of U.S. Patent No. 10,259,021 (“the
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`’021 patent”). Apple Inc. v. GUI Global Products Ltd., IPR2020-00471, Paper 3 at
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`1 (PTAB Feb. 19, 2021). Trial in the 471 Proceeding was instituted on August 13,
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`2021. IPR2020-00471, Paper 10 at 2 (PTAB Aug. 13, 2021). Apple has now filed
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`an additional petition (the “Copycat Petition”) in this IPR2021-01290 (“the 1290
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`Proceeding”) challenging claims of the ’021 patent and has concurrently filed a
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`“conditional” motion for joinder with Samsung, et al., v. GUI Global Products,
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`Ltd., IPR2021-00336 (“the 336 Proceeding”), which was instituted on July 2, 2021.
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`The Copycat Petition in this 1290 Proceeding is substantively identical to the
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`petition filed by Samsung in the 336 Proceeding, relies on the same prior art
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`evidence and arguments as in the 336 Proceeding, and is supported by testimony
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`from the same declarant as in the 336 Proceeding, which testimony is substantively
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`identical to that which the declarant provided in the 336 Proceeding. Pet. at 1,
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`Apple Mot. for Joinder at 9.
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`Apple originally styled its motion for joinder as being conditional upon the
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`Board denying institution of the 471 Proceeding. Apple Mot. for Joinder at 1. That
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`condition was not met, as the Board instituted the 471 Proceeding on August 13,
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`2021. IPR2020-00471, Paper 10 at 2. After that institution and after receiving
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`Patent Owner’s response to its joinder motion noting the propriety of joinder if trial
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`is instituted, Apple now conditions its request for joinder on “the Board [aligning]
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`in time the issuance of final written decisions in the 336 Proceeding and the 471
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`Proceeding, where alignment is achieved only if the final written decision of the
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`471 Proceeding issues concurrent with or in advance of the final written decision
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`of the 336 Proceeding.” Apple Reply re Mot. for Joinder at 3.
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`Apple has filed similar “copycat” petitions and “conditional” motions for
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`joinder in each of IPR2021-01289, IPR2021-01291, and IPR2021-01292, with
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`respect to IPR2021-00335, IPR2021-00337, and IPR2021-00338, Pet. at 77-78, all
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`of which have been instituted. Similar to the situation here, the conditions for
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`joinder specified in the motions were not met, because trials with respect to
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`Apple’s earlier petitions in each of IPR2021-00470, IPR2021-00472, and
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`IPR2021-00473 have been instituted.
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`III. ABSENT JOINDER, DISCRETIONARY DENIAL OF APPLE’S
`COPYCAT PETITION IS APPROPRIATE
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`Unless it joins this proceeding based on Apple’s Copycat Petition with the
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`pending 336 Proceeding, the Board should exercise its discretion and deny
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`intuition of trial. Similar to the situation in Apple Inc. v. Uniloc 2017 LLC, this
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`Copycat Petition is a second petition filed by Apple challenging the claims of the
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`’021 patent. As in Uniloc, “This is the kind of serial attack that General Plastic
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`was intended to address.” Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9
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`at 4 (PTAB Oct. 28, 2020) (citing General Plastic Industrial Co., Ltd. v. Canon
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`Kabushiki Kaisha, IPR2016-01357, Paper 19 at 17 (PTAB Sept. 6, 2017)
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`(precedential as to § II.B.4.i)).
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`The Petition in this proceeding asserts the same grounds of unpatentability
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`as those upon which the Board instituted review in the 336 Proceeding. Pet. at 1;
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`and see Apple Mot. for Joinder at 9 (“The Petition is materially the same as the
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`petition filed in the 335 Proceeding[, and] challenge[s] the same claims, on the
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`same grounds and rel[ies] on the same prior art and evidence, including an
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`identical declaration from the same expert.”) (footnote omitted). The Board has
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`already considered the merits of those challenges and evidence and has instituted
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`inter partes review in the 336 Proceeding. Notwithstanding the merits, however,
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`should the Board not join this proceeding with the 336 Proceeding, the Board may
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`well consider whether to exercise its discretion under § 314(a) and deny institution.
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`Uniloc 2017, IPR2020-00854, Paper 9 at 4-5. Under General Plastic, which
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`“recognize[d] the potential for abuse of the review process by repeated attacks on
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`patents,” General Plastic, Paper 19 at 16–17, the Board may deny a petition based
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`on the Director’s discretionary authority of § 314(a). Id. at 15. Here, application of
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`the General Plastic factors warrants the Board’s exercise of its discretion to deny
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`the Petition under § 314(a).
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`A. General Plastic Factors
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`General Plastic discusses a number of factors to be considered by the Board
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`when evaluating whether or not to exercise its discretion under 35 U.S.C. § 314(a)
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`to deny a petition that challenges a previously-challenged patent. They include:
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`1. whether the same petitioner previously filed a petition directed to the
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`same claims of the same patent;
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`2. whether at the time of filing of the first petition the petitioner knew of the
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`prior art asserted in the second petition or should have known of it;
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`3. whether at the time of filing of the second petition the petitioner already
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`received the patent owner’s preliminary response to the first petition or
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`received the Board’s decision on whether to institute review in the first
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`petition;
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`4. the length of time that elapsed between the time the petitioner learned of
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`the prior art asserted in the second petition and the filing of the second
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`petition;
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`5. whether the petitioner provides adequate explanation for the time elapsed
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`between the filings of multiple petitions directed to the same claims of the
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`same patent;
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`6. the finite resources of the Board; and
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`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
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`determination not later than 1 year after the date on which the Director
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`notices institution of review.
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`Id. at 9−10.
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`B. Assessment of the General Plastic Factors
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`1. whether the same petitioner previously filed a petition directed to the
`same claims of the same patent
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`The instant petition is the second petition Apple has filed challenging the
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`claims of the ’021 patent. Apple Mot. for Joinder at 7 (table summarizing Apple’s
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`previous petitions in IPR2021-00470 (U.S. 10,259,020), IPR2021-00471 (U.S.
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`10,259,021), IPR2021-00472 (U.S. 10,562,077), and IPR2021-00473 (U.S.
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`10,589,320)). In the instant petition Apple challenges claims 1-19 of the ’021
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`patent, and its petition in IPR2021-00471 Apple challenged claims 1, 2, 4-10 ,12,
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`14-17, and 18. Pet. at 1; IPR2021-00471, Paper 10 at 2. Claims 3, 11, 13, and 19,
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`which are not challenged in IPR2021-00471, are already the subject of the 336
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`Proceeding on the same grounds asserted in connection with the instant petition.
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`Pet. at 1; Apple Mot. for Joinder at 9. Hence, absent joinder with the 336
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`Proceeding this first General Plastic factor weighs in favor of denying institution
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`of the proceeding.
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`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
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`Apple has provided no indication that it was not aware of the art asserted in
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`the 336 Proceeding (and now in the instant petition) at the time it filed its petition
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`in IPR2021-00471. Indeed, Apple’s petition in IPR2021-00471 acknowledges the
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`earlier filed 336 Proceeding as a “Related Matter,” IPR2021-00471, Paper 2 at 79,
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`and Apple admits it “learned of the prior art in the Samsung Petition around the
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`time that petition was filed.” Pet. at 74. Hence, Apple must have known of not only
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`the prior art asserted in the 336 Proceeding and now in its instant petition at the
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`time it filed its first petition (indeed, based on its admission it was even earlier),
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`but also the grounds of invalidity asserted in connection with that art. Accordingly,
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`absent joinder this second General Plastic factor weighs in favor of denying
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`institution of this proceeding.
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`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
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`The petition in the 336 Proceeding was filed December 29, 2020. Samsung
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`Electronics Co., Ltd. v. GUI Global Products Ltd., IPR2020-00336, Paper 4 at 1
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`(PTAB Jan. 13, 2021). Patent Owner’s preliminary response was filed April 13,
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`2021, and the Board’s Institution Decision was entered July 2, 2021. IPR2020-
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`00336, Paper 11 at 1.
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`The petition in IPR2021-00471 was filed February 5, 2021. IPR2020-00471,
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`Paper 3 at 1. Patent Owner’s preliminary response was filed May 19, 2021, and the
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`Board’s Institution Decision was entered Aug. 13, 2021. IPR2020-00471, Paper 10
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`at 1.
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`The instant petition was filed July 30, 2021. Paper 5 at 1. Hence, at the time
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`Apple filed this second petition and its motion for joinder with the 336 Proceeding,
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`Apple had already received the Patent Owner’s preliminary responses in the 336
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`Proceeding and the 471 Proceeding and had also received the Board’s Institution
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`Decision in the 336 Proceeding. That Apple’s second petition is styled as a
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`Copycat Petition is of no moment, “because the third General Plastic factor
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`addresses whether Apple had access to a Board decision or a preliminary response
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`concerning its first petition, such that Apple would have been in a position to gain
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`a benefit from having that information before filing its second petition.” Uniloc
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`2017 LLC, IPR2020-00854, Paper 9 at 10. Consequently, this third General Plastic
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`factor weighs in favor of denying institution of the proceeding.
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`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
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`As noted in connection with factor 2, Apple’s petition acknowledges Apple
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`knew of the prior art it now asserts in “late 2020.” Pet. at 77. Yet, Apple did not
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`file the instant petition until July 30, 2021. Paper 5 at 1. Apple’s excuse for its
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`delay of some seven months or more to file the instant petition is that it is a
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`Copycat Petition filed within a month of the Board’s Institution Decision in the
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`336 Proceeding. Pet. at 75-76. But, as with factor 3, simply because Apple’s
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`second petition is a Copycat Petition that is no excuse for the delay. Uniloc 2017
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`LLC, IPR2020-00854, Paper 9 at 11 (“The fourth General Plastic factor seeks to
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`address a delay, if any, in filing a second petition.”). Accordingly, absent joinder
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`this fourth General Plastic factor weighs in favor of denying institution of the
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`proceeding.
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`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
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`As noted in connection with factor 4, Apple’s excuse of the instant petition
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`being a Copycat Petition does not excuse the substantial delay in its filing. Id.
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`Accordingly, absent joinder this fifth General Plastic factor weighs in favor of
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`denying institution of the proceeding.
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`6. the finite resources of the Board
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`Apple appears to argue that this General Plastic factor weighs against denial
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`of institution because it provides a single forum for resolution of issues. Pet. at 76.
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`But if Apple were truly concerned with the Board’s resources it would not have
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`styled its motion for joinder as being conditional on the Board instituting the 471
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`Proceeding. Demanding that this inter partes review go forward as an independent
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`proceeding, not joined to the earlier 336 Proceeding, even if the 471 Proceeding is
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`instituted (as it was) demonstrates that Apple is unconcerned with monopolizing
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`the Board’s resources and instead is merely seeking to harass the Patent Owner
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`with having to defend identical proceedings. Acceding to a joinder request is
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`typically an efficient means by which the Board can accommodate multiple
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`interested parties while seeking to conserve its resources, but here Apple has
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`turned such accommodation on its head and instead seeks to have the Board
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`adjudicate the identical issues in two separate proceedings. This is not an
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`appropriate use of the Board’s time and so, absent joinder, this sixth General
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`Plastic factor weighs in favor of denying institution of this proceeding.
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`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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`Like the sixth General Plastic factor, this seventh factor is also concerned
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`with efficiency considerations. Here, this factor is neutral because with or without
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`joinder the Board could complete its review within one year of an Institution
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`Decision in this proceeding.
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`8. Summary
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`Six of the seven General Plastic factors weigh in favor of denial of
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`institution unless the Board joins this proceeding with the 336 Proceeding. In view
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`of the policy goals articulated in General Plastic, it is appropriate here for the
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`Board to exercise its discretion under 35 U.S.C. § 314(a) and, absent joinder, deny
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`institution.
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that if the
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`Board does not join this 1290 Proceeding with the 336 Proceeding,
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`notwithstanding that Apple’s condition for joinder was not met, the Board deny
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`institution of trial. Further, the Board is not required to accede to Apple’s
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`condition in ordering joinder. Shortening proceedings would unfairly prejudice
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`Patent Owner, who is already burdened with eight pending IPRs filed by Apple
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`and Samsung. Further, it is not clear that the Board has statutory authority to delay
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`issuance of a final written decision in another proceeding based upon Apple’s
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`requested condition for joinder for this proceeding, but even if such authority
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`exists, Apple has not shown good cause for extending any proceedings, including
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`in view of Apple’s unjustified delay in filing its copycat petition.
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`Dated: November 16, 2021
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`Respectfully submitted,
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`EDMONDS & SCHLATHER, PLLC
`
`/John J. Edmonds/
`John J. Edmonds, Reg. No. 56,184
`EDMONDS & SCHLATHER, PLLC
`2501 Saltus Street
`Houston, TX 77003
`P: 713-364-5291
`F: 713-224-6651
`E: jedmonds@ip-lit.com
`
`Attorney for Patent Owner
`GUI Global Products, Ltd., D/B/A
`Gwee
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`WORD-COUNT CERTIFICATE
`I certify that the foregoing document complies with the type-volume
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`limitation of 37 C.F.R. § 42.24(a) and (b) and contains 2482 words (including
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`words in drawings created by the Patent Owner or as annotations added by the
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`Patent Owner to images reproduced in this document) based on the word count
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`indicated by Microsoft® Word for Mac v 16.49, excluding those portions
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`exempted by the rule.
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`Dated: November 16, 2021
`
`
`/John J. Edmonds/
`John J. Edmonds
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`POPR Certificates
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`and its accompanying exhibits were served on November 16, 2021, by filing this
`document though the PTAB E2E System as well as by delivering a copy via email
`directed to the attorneys of record for the Petitioner at the following addresses:
`
`W. Karl Renner
`Andrew B. Patrick
`Roberto Devoto
`Kenneth Wayne Darby Jr.
`Kim Leung
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`
`Email:
`IPR50095-0029IP2@fr.com
`PTABInbound@fr.com
`axfptab@fr.com
`patrick@fr.com
`devoto@fr.com
`kdarby@fr.com,
`leung@fr.com
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`The parties have agreed to electronic service in this proceeding.
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`Dated: November 16, 2021
`
`
`
`
`/John J. Edmonds/
`John J. Edmonds
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`POPR Certificates
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