Trials@uspto.gov
`571-272-7822
`
` Paper 11
`
` Entered: February 3, 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.
`____________
`
`IPR2021-01292
`Patent 10,589,320 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, 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
`
`
`
`
`571-272-7822
`
` Paper 11
`
` Entered: February 3, 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.
`____________
`
`IPR2021-01292
`Patent 10,589,320 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, 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
`
`
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`
`claims 1–13 of U.S. Patent No. 10,589,320 B1 (Ex. 1001, “the ’320 patent”).
`Paper 3 (“Pet.”). GUI Global Products, Ltd., d/b/a Gwee (“Patent Owner”)
`filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Petitioner filed a
`Conditional Motion for Joinder with IPR2021-00338 (“the 338 IPR”). Paper
`4 (“Mot.”). Patent Owner filed a Response to Petitioner’s Conditional
`Motion for Joinder, and Petitioner filed a Reply. Paper 8 (“PO Mot. Resp.”);
`Paper 9 (“Pet. Mot. Reply”). Petitioner also filed a Notice Ranking And
`Explaining Material Differences Between Petitions. Paper 2 (“Not.”).
`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 MATTERS
`The parties indicate this Petition is related to GUI Global Prods, Ltd.
`d/b/a Gwee v. Samsung Elecs. Co., No. 4:20-cv-02624 (E.D. Tex.) and GUI
`Global Prods, Ltd. d/b/a Gwee v. Apple, Inc., No. 4:20-cv-02652 (S.D.
`Tex.). Paper 6, 1–2; see Pet. 72. The parties indicate that the ’320 patent is
`also the subject of the 338 IPR, as well as IPR2021-00473 (“the 473 IPR”),
`where Petitioner filed a petition challenging claims 1–5 and 7–13 of the ’320
`patent. Pet. 73, Paper 6, 2. In the 473 IPR, we instituted an inter partes
`review of claims 1–5 and 7–13 of the ’320 patent. Apple Inc. v. GUI Global
`
`2
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`Products, Ltd., D/B/A Gwee, IPR2021-00473, Paper 9 at 7–8, 39–40 (PTAB
`Aug. 13, 2021) (“473 Decision” or “473 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. See generally Not.
`In the 338 IPR, we instituted an inter partes review of claims 1–13 of
`the ’320 patent on the following grounds:
`
`Claim(s)
`Challenged
`
`1–8
`11
`9, 10, 12, 13
`
`35 U.S.C §
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Kim2
`Kim, Koh3,
`Kim, Lee4
`
`Samsung et al. v. GUI Global Products, Ltd., D/B/A Gwee, IPR2021-00338,
`Paper 11 at 7–8, 42 (PTAB Jul. 2, 2021) (“338 Decision” or “338 Dec.”).
`II. DISCUSSION
`The Petition in this proceeding asserts the same grounds of
`unpatentability as those upon which we instituted review in the 338 IPR.
`
`
`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 September 9,
`2010 (Ex. 1010, “Kim”).
`3 Korean Pat. Pub. No. 10-2008-0093178, published October 21, 2008 (Ex.
`1012, “Koh”).
`4 U.S. Pat. Appl. Pub. No. US 2010/0298032 A1, published Nov. 25, 2010
`(Ex. 1013, “Lee”).
`
`3
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`Compare Pet. 1–2, with 338 Dec. 7–8, 42. Indeed, Petitioner, Apple,
`contends that the Petition is “substantively equivalent to the petition
`instituted in” the 338 IPR. Pet. 1. Petitioner requests that we institute inter
`partes review and conditionally seeks joinder with the 338 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.,
`IPR2021-00473 (“the ’473 Proceeding”).” Id. at 1; see Not. 1. In its Reply,
`Petitioner revises its request stating, “Apple respectfully requests that the
`Board institute review of IPR2021-01292 and grant Apple’s pending Motion
`if, and only if, the Board will align in time the issuance of final written
`decisions in the 338 Proceeding and the 473 Proceeding.” Pet. Mot. Reply
`2–3. Petitioner asserts that it is seeking alignment of the schedules in the
`338 and 473 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
`whether to join Petitioner as a party to the 338 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
`
`4
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`General Plastic5 and Uniloc6 decisions. Prelim. Resp. 3–4. Petitioner
`argues we should institute an inter partes review of the challenged claims.
`Pet. 74–78. 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;
`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
`
`5 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”).
`6 Apple, Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28,
`2320) (precedential) (“Uniloc”).
`
`5
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`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 ’320 patent. Pet. 73; Prelim. Resp. 6. We
`understand that Petitioner filed this Petition in case we did not institute
`review in the 473 IPR. Pet. 73; Not. 1–3 (Petitioner “respectfully requests
`that the Board institute” review in the 473 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
`473 IPR.
`The 473 IPR involves claims 1–5 and 7–13 of the ’320 patent and the
`338 IPR involves claims 1–13. Thus, one more claim is challenged here
`than in the 473 IPR. Nonetheless, Petitioner provides no explanation why it
`is again challenging claims 1–5 and 7–13 here or why Petitioner needs two
`instituted inter partes reviews on the 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 (473 IPR) and Kim (this Petition) offer very different
`disclosures.” Not. 3; TPG 60.7 However, Petitioner does not identify any
`
`7 As discussed above, in the Explanation, Petitioner requests that we should
`institute inter partes review in the 473 IPR, and if we do not, then we should
`institute here. Not. 3–5. In the Reply, however, Petitioner requests that we
`
`6
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`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. See 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 338 IPR] around the time that petition was filed.” Pet. 76.
`Petitioner argues that because it filed its petition in the 473 IPR five weeks
`after the petition was filed in the 338 IPR, it “could not have reasonably
`leveraged its knowledge” of the prior art involved in the 338 IPR against
`Patent Owner. Id. Patent Owner argues that because Petitioner admitted
`that it knew of the prior art asserted in the 338 IPR prior to Petitioner filing
`the petition in the 473 IPR, General Plastic factor two weighs in favor of
`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
`473 IPR five weeks after the petition was filed in the 338 IPR such that
`Petitioner could not have “leveraged its knowledge” of the prior art involved
`in the 338 IPR against Patent Owner. In other words, Petitioner fails to
`explain sufficiently why it could not have included the claims or prior art it
`asserts here in the 473 IPR. Accordingly, we determine that this second
`
`
`institute here, despite having instituted the 473 IPR, without explaining why
`we should do so. Pet. Mot. Reply 2–3.
`
`7
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`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 338 and 473 IPRs and the Board’s 338
`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 had not received the
`Board’s institution decision on its first petition in the 473 IPR. Pet. 76.
`We determine that Petitioner had access to the preliminary response in
`the 473 IPR, and, therefore, this third General Plastic factor weighs in favor
`of denying institution of the proceeding.
`
`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
`
`8
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`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. 77. Petitioner, however, provides no
`explanation why it could not have included the prior art or claims it asserts
`here in the 473 IPR that was filed several weeks after the petition in the 338
`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 473 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 338 Proceeding . . . if the
`473 Proceeding is instituted.” Prelim. Resp. 9–10. Patent Owner argues that
`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 473 IPR, the condition upon which
`Petitioner seeks joinder with the 338 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 473 IPR, while also adjudicate identical issues in the 338
`IPR and this proceeding. We determine that such a result would be an
`
`9
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`inefficient use of Board resources.8 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. 78. We
`determine this factor’s weight is neutral.
`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).
`
`
`8 Petitioner appears to have changed the condition upon which its motion to
`join should be granted. Pet. Mot. 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 338 Proceeding and the 473 Proceeding.” Id. at 3.
`Compressing the due date for a final written decision in the 473 IPR by six
`weeks would be burdensome on the Board.
`
`10
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`
`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
`
`
`
`
`
`IPR2021-01292
`Patent 10,589,320 B1
`
`PETITIONER:
`
`Walter Renner
`Andrew Patrick
`Roberto Devoto
`Kenneth Darby
`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 Edmonds
`Stephen Schlather
`EDMONDS & SCHLATHER, PLLC
`jedmonds@ip-lit.com
`sschlather@ip-lit.com
`
`Tarek Fahmi
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
