Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 14
`Date: March 16, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`VOIP-PAL.COM, INC.,
`Patent Owner.
`
`IPR2022-01391
`Patent 8,630,234 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, TERRENCE W. McMILLIN, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`I. INTRODUCTION
`
`A. Background
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a petition (Paper 1,
`“Pet.”) to institute an inter partes review of claims 30–33, 35, 37–40, 43,
`45–48, 51, 53, 54, 61, 62, 64, 65, 67, 69, 70, 72, and 75 (the “challenged
`
`
`Tel: 571-272-7822
`
`
`
`Paper 14
`Date: March 16, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`VOIP-PAL.COM, INC.,
`Patent Owner.
`
`IPR2022-01391
`Patent 8,630,234 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, TERRENCE W. McMILLIN, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`I. INTRODUCTION
`
`A. Background
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a petition (Paper 1,
`“Pet.”) to institute an inter partes review of claims 30–33, 35, 37–40, 43,
`45–48, 51, 53, 54, 61, 62, 64, 65, 67, 69, 70, 72, and 75 (the “challenged
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`claims”) of U.S. Patent No. 8,630,234 B2 (Ex. 1001, “the ’234 patent”). 35
`U.S.C. § 311. VoIP-Pal.com, Inc. (“Patent Owner”) timely filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”). With our prior
`authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
`Response (Paper 9) and Patent Owner filed a Sur-reply in Support of its
`Preliminary Response (Paper 10).
`Concurrently with the Petition, Petitioner filed a Motion for Joinder in
`which it sought to join IPR2022-01232 (the “Meta IPR”) as a party if we
`were to institute review in the Meta IPR. Paper 3, 1 (“Mot.” or “Motion”).
`Patent Owner also opposed the Motion. Paper 5 (“Opp.” or “Opposition”).
`Petitioner filed a reply in support of the Motion. Paper 7.
`Petitioner challenges the patentability of claims on the same basis
`advanced in the Meta IPR as follows:
`Claims challenged
`30–33, 35, 38–40, 43, 45–48, 51, 54,
`61, 62, 64, 65, 67, 70, 72, 75
`38, 39, 54, 70
`30–33, 35, 37–40, 43, 45–48, 51, 53,
`54, 61, 62, 64, 65, 67, 69, 70, 72, 75
`
`35 U.S.C. §1
`
`Reference(s)
`
`Buckley2
`
`103
`
`103
`
`103
`
`Buckley, Ejzak3
`
`Buckley, Bates4
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective March 16, 2013. Because
`the application for the ’234 patent was filed on July 28, 2009, we apply the
`pre-AIA versions of §§ 102, 103.
`2 U.S. Patent No. 7,668,159 B2 (Ex. 1005, “Buckley”).
`3 U.S. Patent No. 6,954,654 B2 (Ex. 1007, “Ejzak”).
`4 U.S. Patent No. 8,731,163 B1 (Ex. 1009, “Bates”).
`
`2
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`
`Claims challenged
`
`35 U.S.C. §1
`
`38, 39, 54, 70
`
`103
`
`Reference(s)
`Buckley, Bates,
`Ejzak
`
`Petitioner files the Declaration of Dr. Vijay Madisetti from the Meta
`IPR in support of the Petition. Ex. 1003.
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed
`below, we (1) institute inter partes review on the same grounds instituted in
`the Meta IPR, and (2) grant the Motion, subject to the conditions set forth
`below.
`B. Related Proceedings
`Both parties identify the following active district court proceedings
`involving the ’234 patent and related U.S. Patent No. 10,880,721 B2 (“the
`’721 patent”) as being related to this proceeding: VoIP-Pal.com, Inc. v. Meta
`Platforms, Inc. et al., 3-22-03202 (N.D. Cal.) (the “Litigation”); VoIP-Pal v.
`Google, No. 3:22-cv-03199 (N.D. Cal.); VoIP-Pal v. Amazon, No. 6-21-cv-
`00668 (W.D. Tex.); VoIP-Pal v. Verizon, No. 6-21-cv-00672 (W.D. Tex.);
`VoIP-Pal v. T-Mobile, No. 6-21-cv-00674 (W.D. Tex.); VoIP-Pal v.
`Samsung, No. 6-21-cv-01246 (W.D. Tex.); VoIP-Pal v. Huawei, No. 6-21-
`cv-01247 (W.D. Tex.); Verizon v. VoIP-Pal, No. 3-21-cv-05275 (N.D. Cal.);
`and Twitter v. VoIP-Pal, No. 3-21-cv-09773 (N.D. Cal.). Pet. 2; Paper 4, 2.
`Petitioner further identifies a number of completed district court
`proceedings involving the ’234 patent that it contends to be related,
`
`3
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`including: VoIP-Pal v. Apple, No. 6-21-cv-00670 (W.D. Tex.); Apple v.
`VoIP-Pal, No. 3:21-cv-05110 (N.D. Cal.); VoIP-Pal v. AT&T, No. 6-21-cv-
`00671 (W.D. Tex.); and AT&T v. VoIP-Pal, No. 3-21-cv-05078 (N.D. Cal.).
`Pet. 2–3.
`Petitioner further states it is concurrently filing another petition
`seeking inter partes review of other claims of the ’234 patent5 and petitions
`seeking inter partes review of claims of the ’721 patent.6 Pet. 3.
`II. INSTITUTION OF INTER PARTES REVIEW
`Petitioner contends that the Petition is “substantively identical to the
`corresponding petition filed in the Meta [IPR].” Pet. 7. Patent Owner does
`not address whether Petitioner’s contention is accurate. See generally
`Prelim. Resp. Based on our comparison of the Petition in this proceeding to
`the petition filed in the Meta IPR, we agree with Petitioner. Compare
`Pet. 24–78, with IPR2022-01232, Paper 3, 23–77. Additionally, based on
`our comparison of Patent Owner’s preliminary responses filed in this
`proceeding and the Meta IPR, we discern no material difference between the
`arguments raised in those respective preliminary responses. Compare
`Prelim. Resp. 25–58 (addressing merits of Petitioner’s unpatentability
`challenges), with IPR2022-01232, Paper 9, 25–57 (addressing merits of
`unpatentability challenges in Meta IPR). Accordingly, for the reasons
`expressed in our Decision Instituting Review in IPR2022-01232 (Paper 12),
`
`
`5 Claims of the ’234 patent are challenged in three other currently co-
`pending IPRs, including: IPR2022-01231, IPR2022-01232, and
`IPR2022-01390.
`6 Claims of the ’721 patent are challenged in four pending IPRs, including:
`IPR2022-01234, IPR2022-01235, IPR2022-01392, IPR202-01393.
`
`4
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`we find that the Petition in this proceeding also warrants institution of inter
`partes review.
`
`III. MOTION FOR JOINDER
`Petitioner requests joinder pursuant to 35 U.S.C. § 315(c), which
`provides as follows:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of
`two proceedings” and “does not authorize the joined party to bring new
`issues from its new proceeding into the existing proceeding.” Facebook,
`Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020).
`Here, Petitioner’s Motion requests no more than the statute allows.
`Petitioner represents that the current “Petition and the . . . Petition [in the
`Meta IPR] challenge the same claims, on the same grounds, and rely on the
`same prior art and evidence, including an identical declaration from the
`same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a
`party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not
`assume an active role unless Meta ceases to participate” in the Meta IPR,
`“Meta will maintain the lead role in the proceeding so long as it is a party to
`the proceeding,” and that “Petitioner will not seek additional depositions or
`deposition time.” Mot. 2.
`Patent Owner opposes the Motion for the four reasons discussed
`below, none of which is persuasive.
`
`5
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`A. Whether Petitioner’s Motion Complies with Rule 42.122
`First, Patent Owner argues that “[c]oncurrent filing of a motion for
`joinder is permitted under the specific condition that the underlying IPR
`petition was filed more than one year after being served with a complaint
`alleging infringement of the patent. Petitioners do not fall within that
`specific condition.” Opp. 5. Patent Owner cites Rules 42.122(b) and
`42.101(b) as support for its argument. Id. at 6. However, Patent Owner
`misapprehends the requirements set forth in these Rules.
`Rule 42.122(b) sets the expiration of the time period by which a
`petitioner may request joinder as “one month after the institution date of any
`inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
`We instituted review in the Meta IPR on January 31, 2023, and Petitioner
`filed the Petition and the Motion on August 23, 2022, long before the
`expiration of time period set forth in Rule 42.122(b). Petitioner thus
`complies with this aspect of Rule 42.122(b). Although Rule 42.122(b) also
`cross-references Rule 42.101(b), that cross-reference does not set the
`beginning of the time period during which a person may file a request for
`joinder as Patent Owner contends.
`Instead, Rule 42.101(b) bars a petitioner from filing a petition more
`than one year after that petitioner (or certain related entities) have been
`served with a complaint alleging infringement of the patent for which review
`is sought. 37 C.F.R. § 42.101(b). Rule 42.122(b) sets forth an exception to
`the one-year bar set forth in Rule 42.101(b) by stating that the “time period
`set forth in § 42.101(b) shall not apply when the petition is accompanied by
`a request for joinder.” Patent Owner’s argument that the combined effect of
`Rules 42.101(b) and 42.122(b) requires a petitioner to wait until “one year
`
`6
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`after being served with a complaint alleging infringement of the patent” to
`concurrently file a petition and request for joinder is simply incorrect.
`We find that Petitioner’s Motion complies with the requirements of
`Rules 42.101 and 42.122.
`B. Whether the Petition Should Be Denied in Discretion Under Apple v.
`Fintiv
`Patent Owner argues that we should deny the Petition under Apple
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 2–3 (PTAB Mar. 20, 2020)
`(precedential). Opp. 7–12. Patent Owner points to the Litigation. See supra
`Part I.B.
`We decline to exercise our discretion under Fintiv to deny institution
`of inter partes review. On June 21, 2022, the Director of the USPTO issued
`an Interim Procedure for Discretionary Denials in AIA Postgrant
`Proceedings with Parallel District Court Litigation, available at:
`https://www.uspto.gov/sites/default/files/documents/interim_proc_
`discretionary_denials_aia_parallel_district_court_litigation_memo_
`20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides
`that “the PTAB will not discretionarily deny institution of an IPR or PGR in
`view of parallel district court litigation where a petitioner stipulates not to
`pursue in a parallel district court proceeding the same grounds as in the
`petition or any grounds that could have reasonably been raised in the
`petition.” Interim Procedure 7. Here, Petitioner stipulates that it “will not
`pursue the grounds raised, or that reasonably could have been raised, in this
`IPR in the parallel litigation if IPR is instituted.” Pet. 9; Reply 1. We
`therefore adhere to the Interim Procedure in this Decision and decline to
`exercise our discretion to deny institution of inter partes review upon this
`basis.
`
`7
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`C. Whether the Petition Must Set Forth “Compelling Evidence of
`Unpatentability” Under the Interim Procedure
`Patent Owner argues by implication that the Petition must set forth
`“compelling evidence of unpatentability” to avoid analysis of the Fintiv
`factors for deciding whether to exercise discretion to deny a petition.
`Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we
`discuss immediately above, even applying the Fintiv framework for deciding
`whether to discretionarily deny the Petition, we decline to exercise such
`discretion. Second, the Interim Procedure does not impose a requirement
`that a petition must always present compelling evidence of unpatentability to
`warrant institution. Rather, the Interim Procedure merely indicates that
`whenever a petitioner adduces compelling evidence of unpatentability,
`panels will not discretionarily deny the petition under Fintiv. Interim
`Procedure 2.
`D. Whether a Potential Denial of the Petition in the Meta IPR Justifies
`Denying the Petition in this Proceeding
`Patent Owner argues that if we were to “discretionarily deny the Meta
`Platforms IPRs . . . there is nothing for Petitioners to join.” Opp. 13–14.
`The factual predicate for Patent Owner’s argument fails because we have
`instituted review in the Meta IPR. IPR2022-01232, Paper 12. Thus, a
`proceeding (the Meta IPR) does exist for Petitioner to join as a party. For all
`the reasons expressed above, we find that Petitioner has persuaded us to
`exercise discretion and grant its Motion to join the Meta IPR as a party.
`E. Conclusion
`Based on our review of the before us, we find that Petitioner
`demonstrates that allowing it to join the Meta IPR as a party will not
`materially lengthen the schedule, increase cost, or add to the complexity of
`
`8
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`briefing or discovery in the Meta IPR. Accordingly, we grant Petitioner’s
`Motion and add it as a party to the Meta IPR.
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review of claims 30–33, 35, 37–40, 43,
`45–48, 51, 53, 54, 61, 62, 64, 65, 67, 69, 70, 72, and 75 of U.S. Patent No.
`8,630,234 B2 is instituted with respect to all grounds of unpatentability set
`forth in the Petition;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of U.S. Patent No. 8,630,234 B2 is instituted commencing on
`the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is given of the institution of a trial; and
`FURTHER ORDERED that the Motion for Joinder is granted, and
`Samsung Electronics Co., Ltd. is hereby joined as a petitioner in IPR2022-
`01232;
`FURTHER ORDERED that the grounds on which trial was instituted
`in IPR2022-01232 are unchanged, and no other grounds are added;
`FURTHER ORDERED that Samsung Electronics Co., Ltd.’s role in
`IPR2022-01232 shall be limited as stated in the Motion for Joinder
`(Paper 3), unless and until Meta Platforms, Inc. is terminated from that
`proceeding;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2022-01232 (Paper 13) shall continue to govern the proceeding after the
`joinder of Samsung Electronics Co., Ltd. as a petitioner;
`FURTHER ORDERED that all future filings are to be made only in
`IPR2022-01232;
`
`9
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`FURTHER ORDERED that the case caption in IPR2022-01232 shall
`be changed to reflect the joinder of Samsung Electronics Co., Ltd. in
`accordance with the example below; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2022-01232.
`
`10
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`
`Example Caption
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`META PLATFORMS, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners,
`v.
`VOIP-PAL.COM, INC.,
`Patent Owner.
`
`IPR2022-012327
`Patent 8,630,234 B2
`
`
`
`
`
`
`
`
`
`
`7 Samsung Electronics Co., Ltd., which filed a petition and a motion for
`joinder in IPR2022-01391, has been joined as a petitioner in this proceeding.
`
`11
`
`
`
`IPR2022-01391
`Patent 8,630,234 B2
`PETITIONER:
`W. Todd Baker
`Ellisen Shelton Turner
`Joshua Popik Glucoft
`KIRKLAND & ELLIS LLP
`todd.baker@kirkland.com
`ellisen.turner@kirkland.com
`josh.glucoft@kirkland.com
`
`PATENT OWNER:
`Lewis Hudnell, III
`Nicolas Gikkas
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`nsg@gikkaslaw.com
`
`12
`
`
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