UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.,
`(Alleged) Patent Owner
`
`U.S. PATENT NO. 10,880,721
`
`Case IPR2022-01392
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.,
`(Alleged) Patent Owner
`
`U.S. PATENT NO. 10,880,721
`
`Case IPR2022-01392
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`Motion for Joinder
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner moves
`
`for joinder with any Inter Partes Review instituted in Meta Platforms, Inc. v. VoIP-
`
`Pal, Inc., IPR2022-01234 (“the 1234 proceeding”), filed on June 30, 2022, for U.S.
`
`Patent No. 10,880,721 (“the ’721 patent”). See IPR2022-01234, Paper 3. This
`
`motion is timely because it is being filed before institution of the 1234 proceeding.
`
`Petitioner requests that action on this motion be held in abeyance until, and the
`
`motion be granted only if, an IPR is instituted in the 1234 proceeding. See Central
`
`Security Group-Nationwide, Inc. v. Ubiquitous Connectivity, LP, IPR2019-01610,
`
`Paper 12, at 8-9 (PTAB Feb. 26, 2020) (approving pre-institution joinder motion that
`
`asked that motion be held in abeyance until after institution). Petitioner has consulted
`
`with counsel for the petitioner in the 1234 proceeding (hereinafter “Meta”), and
`
`Meta does not oppose Petitioner’s request for joinder.
`
`Petitioner requests institution of the Petition for Inter Partes Review being
`
`filed concurrently herewith (“Petition”). The Petition is materially the same as the
`
`petition filed in the 1234 proceeding (“Meta’s Petition”). The Petition and the Meta
`
`Petition 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.1
`
`______________________________
`
`1 The declaration is a duplicate of the declaration filed in IPR2022-01234.
`
`1
`
`
`
`Motion for Joinder
`
`Petitioner agrees to proceed solely on the grounds, evidence, and arguments
`
`advanced, or that will be advanced, in the 1234 proceeding as instituted. Thus, the
`
`Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits
`
`Petitioner’s joinder to any IPR instituted in the 1234 proceeding.
`
`Further, upon joining the 1234 proceeding, Petitioner will act as “understudy”
`
`and will not assume an active role unless Meta ceases to participate in the 1234
`
`proceeding. Meta will maintain the lead role in the proceeding so long as it is a party
`
`to the proceeding. These limitations will avoid lengthy and duplicative briefing.
`
`Also, Petitioner will not seek additional depositions or deposition time. Petitioner
`
`agrees to the foregoing conditions even in the event that other IPRs filed by other,
`
`third-party petitioners are joined with the 1234 proceeding. Accordingly, the
`
`proposed joinder will neither unduly complicate the 1234 proceeding nor delay its
`
`schedule.
`
`In fact, joinder will help efficiently resolve the disputes among the parties. By
`
`joinder, a single Board decision may dispose of the issues raised in the 1234
`
`proceeding for all interested parties. Further, joinder will narrow the issues in the co-
`
`pending district court actions. See 35 U.S.C. § 315(e)(2). Finally, joinder would not
`
`complicate or delay the 1234 proceeding and would not adversely affect any
`
`schedule set in that proceeding. In sum, joinder would promote efficient adjudication
`
`in multiple forums.
`
`2
`
`
`
`Motion for Joinder
`
`Joinder will not unduly prejudice any party. Because joinder will not add any
`
`new substantive issues, delay the schedule, burden deponents, or increase needless
`
`filings, any additional costs on the Patent Owner would be minimal. On the other
`
`hand, denial of joinder would prejudice Petitioner. Petitioner’s interests may not be
`
`adequately protected in the 1234 proceeding, particularly if Meta settles with the
`
`Patent Owner. Petitioner should be allowed to join in a proceeding affecting a patent
`
`asserted against it.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`VoIP-Pal.com, Inc. (“Patent Owner”) is the owner of the ’721 patent.
`
`Petitioner is concurrently filing two petitions in Case Nos. IPR2022-01392 and
`
`IPR2022-01393 that challenge non-overlapping sets of claims of the ’721 patent.
`
`These petitions are substantively the same as the petitions filed on June 30, 2022 in
`
`Meta Platforms, Inc. v. VoIP- Pal, Inc., IPR2022-01234 and Meta Platforms, Inc. v.
`
`VoIP- Pal, Inc., IPR2022-01235 (collectively, “the Meta IPRs”). As its basis for
`
`filing multiple petitions challenging claims of the ’721 patent Petitioner adopts the
`
`reasoning as set forth in the Notice Regarding Multiple Petitions filed with the Meta
`
`IPRs. See Meta Platforms, Inc. v. VoIP- Pal, Inc., IPR2022-01234 at Paper 2.
`
`Additionally, the ’721 patent is the subject of the following district court litigation:
`
`Case No.
`VoIP-Pal.com, Inc. v.
`Samsung Electronics Co.,
`
`Jurisdiction
`Western District of
`Texas
`
`Status
`Litigation is pending.
`Originally filed in error
`
`3
`
`
`
`Case No.
`Ltd., et al., Case No. 6:21-cv-
`01246
`
`Jurisdiction
`
`VoIP-Pal.com, Inc. v. Meta
`Platforms, Inc., et al., Case
`No. 3:22-cv-03202
`
`Northern District of
`California
`
`VoIP-Pal.com, Inc. v. Google,
`LLC f/k/a Google Inc., Case
`No. 3:22-cv-03199
`
`Northern District of
`California
`
`Motion for Joinder
`
`Status
`in the Austin division as
`Case No. 1:21-cv-01084
`(W.D. Tex.).
`Litigation is pending.
`Transferred from the
`Western District of
`Texas, Case No. 6:21-
`cv-00665.
`Litigation is pending.
`Transferred from the
`Western District of
`Texas, formerly Case
`No. 6:21-cv-00667.
`Litigation was
`terminated.
`
`Western District of
`Texas
`
`Northern District of
`California
`
`Litigation was
`terminated.
`
`Western District of
`Texas
`
`Litigation is pending.
`
`VoIP-Pal.com, Inc. v. Apple
`Inc., Case No. 6:21-cv-
`00670
`
`VoIP-Pal.com, Inc. v. AT&T
`Corp., et al., Case No. 6:21-
`cv-00671
`VoIP-Pal.com, Inc. v.
`Verizon Communications
`Inc., et al., Case No. 6:21-
`cv-00672
`VoIP-Pal.com, Inc. v.
`Huawei Technologies Co.,
`Ltd., et al., Case No. 6:21-
`cv-01247
`
`Western District of
`Texas
`
`Litigation is pending.
`Transferred from Austin
`division to Waco
`division, formerly Case
`No. 1:21-cv-01085
`(W.D. Tex.).
`Litigation is pending.
`
`Litigation is pending.
`
`VoIP-Pal.com, Inc. v.
`Amazon.com, Inc., et al.,
`Case No. 6:21-cv-00668
`VoIP-Pal.com, Inc. v. T-
`Mobile USA, Inc., Case No.
`6:21-cv-00674
`
`Western District of
`Texas
`
`Western District of
`Texas
`
`4
`
`
`
`Motion for Joinder
`
`Case No.
`AT&T Corp., et al. v. VoIP-
`Pal.com, Inc., Case No.
`3:21- cv-05078
`Apple Inc. v. VoIP-Pal.com,
`Inc., Case No. 3:21-cv-
`05110
`Cellco Partnership d/b/a
`Verizon Wireless Inc., et al.
`v. VoIP-Pal.com, Inc., Case
`No. 3:21-cv-05275
`Twitter, Inc. v. VoIP-
`Pal.com, Inc., Case No.
`3:21-cv-09773
`
`Jurisdiction
`Northern District of
`California
`
`Status
`Litigation was
`terminated.
`
`Northern District of
`California
`
`Litigation was
`terminated.
`
`Northern District of
`California
`
`Litigation is pending.
`
`Northern District of
`California
`
`Litigation is pending.
`
`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`
`A.
`
`Legal Standards and Applicable Rules
`
`The Board has discretion to join a properly filed IPR petition to an IPR
`
`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v. Network-
`
`1 Sec. Solutions, Inc., IPR2013-00385, Paper 17, at 4-6 (PTAB July 29, 2013); Sony
`
`Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326,
`
`Paper 15, at 3-4 (PTAB Sept. 24, 2013); Microsoft Corp. v. Proxyconn, Inc.,
`
`IPR2013-00109, Paper 15, at 3-4 (PTAB Feb. 25, 2013). “The Board will determine
`
`whether to grant joinder on a case-by-case basis, taking into account the particular
`
`facts of each case, substantive and procedural issues, and other considerations.” Dell,
`
`IPR2013-00385, Paper 17, at 3. The movants bear the burden of proof in establishing
`
`5
`
`
`
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
`
`joinder should:
`
`Motion for Joinder
`
`(1) set forth the reasons why joinder is appropriate; (2) identify any
`
`new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the
`
`existing review; and (4) address specifically how briefing and
`
`discovery may be simplified.
`
`Dell, IPR2013-00385, Paper 17, at 4.
`
`B.
`
`Joinder with the 1234 Proceeding Is Appropriate
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper 12,
`
`at 9 (PTAB Aug. 24, 2016) (internal quotations and citations omitted). Here, joinder
`
`with the 1234 proceeding is appropriate because the present Petition introduces
`
`identical arguments and the same grounds raised in the existing 1234 proceeding
`
`(i.e., they contain the same grounds, based on the same prior art combinations and
`
`supporting evidence, against the same claims). Indeed, there are no changes to the
`
`facts, evidence, or arguments used by Meta’s Petition in the 1234 proceeding in
`
`demonstrating satisfaction of the implicated claims by the applied prior art. Because
`
`these proceedings introduce identical arguments and the same grounds, good cause
`
`6
`
`
`
`Motion for Joinder
`
`exists for joining this proceeding with the 1234 proceeding so that the Board,
`
`consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and
`
`inexpensive resolution” of the present and 1234 proceeding.
`
`C.
`
`Joinder Will Not Add Any New Grounds of Unpatentability or Have an
`
`Impact on the Trial Schedule
`
`The Petition is based on the same grounds and combinations of prior art in
`
`Meta’s Petition in the 1234 proceeding. For simplicity and efficiency, Petitioner has
`
`copied the substance of Meta’s Petition and have relied on the same accompanying
`
`declaration. Petitioner does not seek to introduce grounds or claims that are not
`
`in the 1234 proceeding and seeks only to join the proceeding as instituted. Petitioner
`
`is using the same expert and have submitted an identical declaration as in the 1234
`
`proceeding. The Patent Owner should not require any discovery beyond that which
`
`it may need in the 1234 proceeding—nor should the Board permit any. The present
`
`Petition introduces no new substantive issues relative to the 1234 proceeding and
`
`does not seek to broaden the scope of the 1234 proceeding.
`
`Joinder will not impact the 1234 proceeding trial schedule because the present
`
`Petition presents no new issues or grounds of unpatentability. See LG, IPR2015-
`
`01353, Paper 11, at 6 (granting IPR and motion for joinder where “joinder should
`
`not necessitate any additional briefing or discovery from Patent Owner beyond that
`
`already required in [the original IPR]”). Further, Petitioner explicitly consents to any
`
`7
`
`
`
`Motion for Joinder
`
`trial schedule adopted in the 1234 proceeding. There are no new issues for the Board
`
`to address, and Patent Owner will not be required to present any additional responses
`
`or arguments.
`
`The Patent Owner’s Response will also not be negatively impacted because
`
`the issues presented in the present Petition are identical to the issues presented in the
`
`1234 proceeding. Patent Owner will not be required to provide any additional
`
`analysis or arguments beyond what it will already provide in responding to Meta’s
`
`Petition in the 1234 proceeding. Also, because the present Petition relies on the same
`
`expert and the same declaration, only a single deposition is needed for the proposed
`
`joined proceeding.
`
`Accordingly, joinder with the 1234 proceeding does not unduly burden or
`
`negatively impact the trial schedule.
`
`D.
`
`Procedures to Simplify Briefing and Discovery
`
`Petitioner explicitly agrees to take an “understudy” role, which will simplify
`
`briefing and discovery. Specifically, Petitioner explicitly agrees, upon joining the
`
`1234 proceeding, that the following conditions, as previously approved by the Board
`
`in similar circumstances, shall apply so long as Meta remains an active party:
`
`a) all filings by Petitioner in the joined proceeding will be
`
`consolidated with the filings of Meta, unless a filing concerns
`
`issues solely involving Petitioner;
`
`8
`
`
`
`Motion for Joinder
`
`b) Petitioner shall not be permitted to raise any new grounds not
`
`already instituted by the Board in the 1072 proceeding, or
`
`introduce any argument or discovery not already introduced by
`
`Meta;
`
`c) Petitioner shall be bound by any agreement between Patent Owner
`
`and Meta concerning discovery and/or depositions; and
`
`d) Petitioner shall not receive any direct, cross examination, or
`
`redirect time at deposition beyond that permitted under either 37
`
`C.F.R. § 42.53 or any agreement between Patent Owner and Meta.
`
`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper 38, at 5
`
`(PTAB Apr. 10, 2015). Unless and until Meta ceases to participate, Petitioner will
`
`not assume an active role therein.
`
`Thus, by Petitioner accepting an “understudy” role, the parties can comply
`
`with the trial schedule assigned to the 1234 proceeding without needing any
`
`duplicative efforts by the Board or the Patent Owner. These steps minimize the
`
`possibility of any complication or delay from joinder. See LG, IPR2015-01353,
`
`Paper 11, at 6-7 (granting IPR and motion for joinder because “joinder would
`
`increase efficiency by eliminating duplicative filings and discovery, and would
`
`reduce costs and burdens on the parties as well as the Board” where petitioners
`
`9
`
`
`
`Motion for Joinder
`
`agreed to an “understudy” role). Petitioner is further willing to agree to any other
`
`reasonable conditions the Board deems necessary.
`
`IV. GENERAL PLASTIC IS INAPPLICABLE
`
`Petitioner notes that the Board has indicated that the factors outlined by
`
`General Plastic are not relevant “where a different petitioner files a ‘me-too’ or
`
`‘copycat’ petition in conjunction with a timely motion to join.” See, e.g., Celltrion,
`
`Inc. v. Genentech, Inc., IPR2018-01019, Paper 11, at 9-11 (PTAB Oct. 30, 2018);
`
`Pfizer, Inc. v Genentech, Inc., IPR2017-02063, Paper 25, at 7-8 (PTAB Feb. 21,
`
`2018). Through this motion to join and corresponding Petition, Petitioner has not
`
`modified the positions advanced in the 1234 proceeding. See, e.g., Celltrion,
`
`IPR2018-01019, Paper 11, at 10-11 (finding petitioner’s “copycat” petition and
`
`motion to join an instituted IPR to “effectively obviate[] any concerns of serial
`
`harassment and unnecessary expenditure of resources,” even though petitioner
`
`“previously filed two petitions directed to the same claims of the same patent.”).
`
`Rather, through grant of this joinder, Petitioner merely seeks to ensure that the 1234
`
`proceeding is not prematurely terminated based on opportunistic settlement by
`
`Patent Owner with fewer than all parties against which it has asserted the subject
`
`patent. As such, Petitioner respectfully submits that General Plastic does not apply
`
`in this circumstance.
`
`10
`
`
`
`Motion for Joinder
`
`In the event the Board does analyze the General Plastic factors, those factors
`
`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co.,
`
`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 16 (PTAB Sept. 6,
`
`2017) (precedential as to § II.B.4.i).
`
`The first factor is whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent. Petitioner has not previously filed a
`
`petition against the ’721 patent (Petitioner is concurrently filing a second petition on
`
`the ’721 patent following Meta’s own division of the challenged claims across two
`
`separate petitions, which is necessary in view of the number of claims asserted by
`
`Patent Owner). Accordingly, this factor weighs in favor of institution.
`
`The second factor is whether at the time of filing the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition. This
`
`factor is neutral, if not inapplicable, in the General Plastic analysis. Here, Meta’s
`
`Petition and Petitioner’s Petition share the same prior art because Petitioner’s
`
`Petition is a “copy” of Meta’s petition. Because Petitioner is merely seeking to join
`
`in an understudy role, the factor is neutral, at best, in determining whether to
`
`institute.
`
`The third factor is 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
`
`11
`
`
`
`Motion for Joinder
`
`petition. Here, neither has the patent owner’s preliminary responses been received
`
`nor has the Board entered a decision to institute review on the 1234 proceeding. In
`
`addition, because the present Petition is essentially a copy of the prior Meta Petition
`
`and submitted with a motion for joinder stating that Petitioner will serve in an
`
`understudy role, the Petition is not an attempt to harass the Patent Owner or
`
`otherwise engage in serial, tactical filings. Thus, this factor weighs in favor of
`
`joinder.
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second
`
`petition, and the fifth factor is 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. Petitioner filed its Petition and this joinder motion within
`
`weeks of Meta’s Petition and well within the time period allowed under 35 U.S.C. §
`
`315(c) and 37 C.F.R. § 42.122(b). In the context of a joinder motion where Petitioner
`
`will be taking an understudy role, the fourth and fifth factors are therefore
`
`inapplicable.
`
`The sixth factor is the finite resources of the Board. Allowing Petitioner’s
`
`joinder motion where Petitioner will serve in an understudy role will not impact the
`
`Board’s resources beyond those resources the Board dedicates to the instant joinder
`
`motion.
`
`12
`
`
`
`Motion for Joinder
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than one year after the date on which the Director
`
`notices institution of review. As noted above, joining Petitioner should not impact
`
`the schedule, particularly because this motion is filed prior to institution of the 1234
`
`proceeding. Accordingly, this factor weighs in favor of institution.
`
`An eighth factor identified by the Board in Shenzhen is the extent to which
`
`the petitioner and any prior petitioner(s) were similarly situated defendants or
`
`otherwise realized a similar-in-time hazard regarding the challenged patent.
`
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898,
`
`Paper 9, at 7, 13-14 (PTAB Oct. 1, 2018) (noting “the purpose of proposed Factor 8
`
`is to discourage tactical filing of petitions over time by parties that faced the same
`
`threat at the same time” such that earlier petitions are filed as “test case(s)” to gain
`
`“tactical advantage”). Because the Petition does not introduce any new grounds of
`
`unpatentability, was filed within weeks of Meta’s Petition and well before institution
`
`of the 1234 proceeding, and will effectively merge into a single proceeding with the
`
`1234 proceeding, no such tactical advantage is gained here.
`
`Thus, none of the General Plastic factors weighs against institution and
`
`joinder in this situation.
`
`13
`
`
`
`Motion for Joinder
`
`V. CONCLUSION
`
`Joinder will not affect the substance, procedure, or scheduling of the 1234
`
`proceeding. Petitioner files this motion under the statutory joinder provisions as
`
`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
`
`justice, and speed.
`
`For the foregoing reasons, Petitioner respectfully requests inter partes review
`
`of U.S. Patent No. 10,880,721 and joinder with Meta Platforms, Inc. v. VoIP-Pal,
`
`Inc., IPR2022-01234.
`
`Respectfully submitted,
`
`
`
`BAKER BOTTS L.L.P.
`
`Date: August 23, 2022
`
`/s/ Eliot D. Williams
`Eliot D. Williams (Reg. No. 50,822)
`Lead Attorney for Petitioner
`
`14
`
`
`
`CERTIFICATE OF SERVICE
`In accordance with 37 C.F.R. §§42.6(e) and 42.105, the undersigned certifies
`
`Motion for Joinder
`
`that on the 23rd day of August, 2022, a complete and entire copy of the PETITION
`
`FOR INTER PARTES REVIEW (“petition”), Petitioner’s power of attorney, and
`
`related Exhibits were served on Patent Owner at the correspondence address of record
`
`for the subject patent,
`
`Thorpe North & Western, LLP
`8180 South 700 East
`Suite 350
`Sandy, Utah 84070
`via Express Mail or by means at least as fast and reliable as Express Mail, and a
`
`courtesy copy is also being forwarded to Patent Owner’s Litigation Counsel via
`
`electronic mail to:
`
`VoIP-Pal.com, Inc. v. Meta Platforms, Inc. et al., Case No. 3:22-cv-03202
`(N.D. Cal.)
`
`Lewis E. Hudnell, III
`lewis@hudnelllaw.com
`Nicolas S. Gikkas
`nick@hudnelllaw.com
`HUDNELL LAW GROUP P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`
`Sean Franklin Parmenter
`sean@parmenterip.com
`Parmenter Intellectual Property Law, PLLC
`8980 N Pine Hollow Dr
`Cedar Hills, UT 84062
`
`
`
`Respectfully submitted,
`
`Date: August 23, 2022
`
`Motion for Joinder
`
`BAKER BOTTS L.L.P.
`
`/s/ Eliot D. Williams
`Eliot D. Williams (Reg. No. 50,822)
`Lead Attorney for Petitioner
`
`
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