Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
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` Paper 12
`
`
`
`
` Entered: October 3, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP, INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01635
`Patent 8,243,723 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
` Paper 12
`
`
`
`
` Entered: October 3, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP, INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01635
`Patent 8,243,723 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2017-01635
`Patent 8,243,723 B2
`
`
`I.
`
`INTRODUCTION
`
`Facebook, Inc. and WhatsApp, Inc. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1−3 of U.S. Patent No. 8,243,723
`B2 (Ex. 1001, “the ’723 patent”). Paper 2 (“Pet.”). Petitioner also filed a
`Motion for Joinder seeking joinder of this proceeding with Apple Inc. v.
`Uniloc, Case No. IPR2017-00222 (the “Apple IPR”). Paper 3 (“Mot.”).
`Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”).1 Patent Owner did not file an opposition to the
`Motion for Joinder. For the reasons that follow, we institute inter partes
`review of claims 1−3, and grant Petitioner’s Motion for Joinder.
`
`INSTITUTION OF INTER PARTES REVIEW
`II.
`On May 25, 2017, we instituted inter partes review in IPR2017-00222
`based on the following prior art and grounds of unpatentability (Apple IPR,
`slip op. at 32–34 (PTAB May 25, 2017) (Paper 7):
`
`a) Vuori: U.S. Patent Appl. Pub. No. US 2002/0146097 A1,
`published Oct. 10, 2002, filed in the record as Exhibit 1005;
`
`
`1 The Board authorized Patent Owner to file a Notice of Patent Owner
`Preliminary Response and the Preliminary Response filed in
`IPR2017-00222, which would be accepted as the preliminary response in the
`instant proceeding. Paper 7.
`
`2
`
`
`
`
`
`
`IPR2017-01635
`Patent 8,243,723 B2
`
`b) Malik: U.S. Patent Appl. Pub. No. US 2003/0219104 A1,
`published Nov. 27, 2003, filed in the record as Exhibit 1019;
`
`Challenged
`Claim(s)
`
`1
`2−7
`
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Reference(s)
`
`Vuori
`Vuori and Malik
`
`The Petition in this proceeding asserts the same grounds as those we
`instituted in the Apple IPR, except that Petitioner does not challenge claims
`4−7. Pet. 2−3, n.1. Petitioner also presents testimony from the same
`declarant relied on in the Apple IPR. Ex. 1003 (Declaration of Leonard J.
`Forys, Ph.D.).
`In view of the identicalness of the issues in the instant Petition and in
`the Apple IPR, the already considered arguments from Patent Owner
`proffered in the Apple IPR, and for the same reasons stated in our Decision
`on Institution in the Apple IPR, we institute inter partes review in this
`proceeding on the grounds presented in the Petition.
`
`III. GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`
`§ 315(c):
`(c) JOINDER.—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
`
`3
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`
`
`
`
`IPR2017-01635
`Patent 8,243,723 B2
`
`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
`parties review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`application-process/appealing-patent-decisions/trials/patent-review-
`processing-system-prps-0.
`
`Petitioner asserts it has grounds for standing because, in accordance
`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
`with the Petition and not later than one month after institution of the Apple
`IPR. Mot. 5−6. Patent Owner did not file an opposition to the Motion.
`Patent Owner has indicated, off-the-record, that it understands Petitioner’s
`motion in this case and related cases to involve petitions “identical to their
`respective original Petition submissions (except where they seek review as
`to only a subset of the claims upon which inter partes review has been
`instituted), and that the Joinder Petitioners have stipulated to a circumscribed
`‘understudy’ role without a separate opportunity to actively participate while
`the original petitioner remains active.” Ex. 3001. We find that the Motion is
`
`4
`
`
`
`
`
`
`IPR2017-01635
`Patent 8,243,723 B2
`
`timely. We also find that Petitioner has met its burden of showing that
`joinder is appropriate. For the challenged claims, the Petition here is
`substantively identical to the petition in the Apple IPR. Mot. 5−7. The
`evidence also is identical, including the reliance on the same declaration of
`Dr. Forys. Id. at 6.
`Petitioner further has shown that the trial schedule will not be affected
`by joinder. Mot. 7−8. No changes in the schedule are anticipated or
`necessary, and the limited participation, if at all, of Petitioner will not impact
`the timeline of the ongoing trial.
`Petitioner shall adhere to the existing schedule of IPR2017-00222 and
`the understudy role it has agreed to assume. More specifically, so long as
`Apple is a party to IPR2017-00222, all filings of Petitioner shall be
`consolidated with the filings of Apple Inc., and Petitioner shall not file any
`separate paper or briefing without prior authorization from the Board. The
`page limits set forth in 37 C.F.R. § 42.24 will apply to all consolidated
`filings.
`Petitioner is bound by any discovery agreements between Patent
`Owner and Apple Inc. and shall not seek any discovery beyond that sought
`by Apple Inc. Patent Owner shall not be required to provide any additional
`discovery or deposition time as a result of joinder. In addition, if an oral
`hearing is requested and scheduled, the Petitioner entities shall collectively
`designate attorneys to present at the oral hearing in a consolidated argument.
`
`5
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`IPR2017-01635
`Patent 8,243,723 B2
`
`The Board expects Petitioner to attempt to resolve any disputes among
`the entities involved and to contact the Board only if such matters cannot be
`resolved. This arrangement promotes the just and efficient administration of
`the ongoing trial and the interests of Petitioner and Patent Owner.
`
`IV. ORDER
`In view of the foregoing, it is
`
`ORDERED that IPR2017-01635 is hereby instituted on the following
`
`grounds:
`Challenged
`Claim(s)
`
`Reference(s)
`
`Vuori
`Vuori and Malik
`
`1
`2−3
`
`Basis
`§ 103(a)
`§ 103(a)
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2017-00222 is granted;
`
`FURTHER ORDERED that the grounds on which trial in
`IPR2017-00222 was instituted are unchanged and no other grounds are
`included in the joined proceeding;
`
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-00222 (Paper 8) and schedule changes agreed to by the parties in
`IPR2017-00222 (pursuant to the Scheduling Order) shall govern the
`schedule of the joined proceeding;
`
`FURTHER ORDERED that, throughout the joined proceeding, all
`
`6
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`IPR2017-01635
`Patent 8,243,723 B2
`
`filings in IPR2017-00222 will be consolidated and no filing by Petitioner
`alone will be allowed without prior authorization by the Board;
`FURTHER ORDERED that Petitioner is bound by any discovery
`agreements between Patent Owner and Apple Inc. in IPR2017-00222 and
`that Petitioner shall not seek any discovery beyond that sought by Apple
`Inc.;
`
`FURTHER ORDERED that Petitioners in IPR2017-00222 shall
`collectively designate attorneys to present at the oral hearing in a
`consolidated argument;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2017-00222;
`
`FURTHER ORDERED that IPR2017-01635 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`made in IPR2017-00222; and
`FURTHER ORDERED that the case caption in IPR2017-0222, from
`now on, shall reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`7
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`
`
`IPR2017-01635
`Patent 8,243,723 B2
`
`For PETITIONER:
`
`Heidi L. Keefe
`Phillip Morton
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Sean D. Burdick
`Ryan Loveless
`brett@etheridgelaw.com
`sean.burdick@unilocusa.com
`ryan@etheridgelaw.com
`
`
`
`
`
`8
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`IPR2017-01635
`Patent 8,243,723 B2
`
`
`Example of Case Caption for Joined Proceeding
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-002222
`Patent 8,243,723 B2
`____________
`
`
`
`
`
`
`
`
`
`2 Facebook, Inc. and WhatsApp, Inc., which filed a petition in IPR2017-
`01635, have been joined as petitioners in this proceeding.
`9
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