Trials@uspto.gov
`571-272-7822
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` Paper 30
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` Entered: May 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,1
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01427
`Patent 8,995,433 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Partial Dismissal of Facebook, Inc. and WhatsApp, Inc.
`35 U.S.C. §§ 315(e)(1), 316(b); 37 C.F.R. §§ 42.73(d), 42.5(a)
`
`
`
`
`
`1 LG Electronics, Inc. filed a petition and a motion for joinder in IPR2017-
`02087, which were granted, and, therefore has been joined to this
`proceeding. Paper 9.
`
`
`571-272-7822
`
`
`
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`
`
`
`
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` Paper 30
`
` Entered: May 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,1
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01427
`Patent 8,995,433 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Partial Dismissal of Facebook, Inc. and WhatsApp, Inc.
`35 U.S.C. §§ 315(e)(1), 316(b); 37 C.F.R. §§ 42.73(d), 42.5(a)
`
`
`
`
`
`1 LG Electronics, Inc. filed a petition and a motion for joinder in IPR2017-
`02087, which were granted, and, therefore has been joined to this
`proceeding. Paper 9.
`
`
`
`IPR2017-01427
`Patent 8,995,433 B2
`
`
`INTRODUCTION
`I.
`On May 11, 2017, Facebook, Inc. (“Facebook”) and WhatsApp Inc.
`(“WhatsApp”) filed a Petition, which we granted, requesting inter partes
`review of certain “challenged claims” of U.S. Patent No. 8,966,144 B2 (“the
`’433 patent2”). Paper 2 (“Facebook Petition”); Paper 8 (“Decision on
`Institution” or “Dec.”). A month later, on June 16, 2017, Facebook and
`WhatsApp filed a second Petition for inter partes review of the challenged
`claims with a corresponding Motion for Joinder to IPR2017-00225, in which
`inter partes review of a subset of the claims challenged in this case, claims
`1–6 and 8 of the ’144 patent, was instituted on May 25, 2017. See IPR2017-
`01635, Papers 2−3, 7. We granted that second Petition and Motion for
`Joinder, and, consequently, Facebook and WhatsApp were joined as a
`petitioner to IPR2017-00225. Accordingly, the petitioner entities in both
`IPR2017-00225 and IPR2017-01427 include Facebook and WhatsApp.
`On May 23, 2018, the Board issued a Final Written Decision in
`IPR2017-00225, concluding that the challenged claims of the ’433 patent
`were not shown to be unpatentable. See IPR2017-00225, Paper 29.
`Accordingly, a subset of the claims challenged in the instant proceeding
`have been the subject of a Final Written Decision under 35 U.S.C. § 318(a).
`
`
`2 In IPR2017-01427, the Facebook Petition challenges claims 1−8 of the
`’433 patent, hereinafter “challenged claims.”
`2
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`IPR2017-01427
`Patent 8,995,433 B2
`
`
`The parties have briefed whether Facebook and WhatsApp are
`estopped under 35 U.S.C. § 315(e)(1).3 Dec. 29 (ordering the parties to brief
`estoppel issues); Papers 11 and 12 (briefs concerning estoppel).
`
`II. ANALYSIS
`According to 35 U.S.C. § 315(e)(1),
`[t]he petitioner in an inter partes review of a claim in a
`patent under this chapter that results in a final written
`decision under section 318(a), or the real party in interest
`or privy of the petitioner, may not request or maintain a
`proceeding before the Office with respect to that claim
`on any ground that the petitioner raised or reasonably
`could have raised during that inter partes review.
`By virtue of their joinder to IPR2017-00225, Facebook and WhatsApp
`are petitioners who have obtained a final written decision on claims 1−6 and
`8 the ’433 patent. If estoppel under § 315(e)(1) applies in these
`circumstances, Facebook and WhatsApp may not “maintain” the instant
`proceeding as to those claims. Therefore, we first determine if Facebook
`and WhatsApp seek to maintain this proceeding on “any ground that the
`petitioner raised or reasonably could have raised during” IPR2017-00225,
`
`
`3 See also 35 U.S.C. § 316(b) (“In prescribing regulations under this section,
`the Director shall consider the effect of any such regulation on the economy,
`the integrity of the patent system, the efficient administration of the Office,
`and the ability of the Office to timely complete proceedings instituted under
`this chapter.”; emphasis added); 37 C.F.R. § 42.5(a) (“The Board may
`determine a proper course of conduct in a proceeding for any situation not
`specifically covered by this part and may enter non-final orders to administer
`the proceeding.”).
`
`3
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`IPR2017-01427
`Patent 8,995,433 B2
`
`according to § 315(e)(1). If the answer is yes, and Facebook and WhatsApp
`are estopped, we then determine whether dismissal of these entities is
`appropriate.
`
`A. Estoppel
`
`We have stated that a ground “reasonably could have been raised” if it
`encompasses prior art that a “skilled searcher conducting a diligent search
`reasonably could have been expected to discover.” See Praxair Distribution
`Inc., v. INO Therapeutics, 2016 WL 5105519 (PTAB Aug. 25, 2016)
`(IPR2016-00781) (citing 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011)
`(statement of Sen. Kyl); see id. at S1376 (statement of Sen. Kyl) (“This
`[estoppel] effectively bars such a party or his real parties in interest or
`privies from later using inter partes review . . . against the same patent, since
`the only issues that can be raised in an inter partes review . . . are those that
`could have been raised in [an] earlier post-grant or inter partes review.”);
`157 Cong. Rec. S952 (daily ed. Feb. 28, 2011) (statement of Sen. Grassley)
`(“It also would include a strengthened estoppel standard to prevent
`petitioners from raising in a subsequent challenge the same patent issues that
`were raised or reasonably could have been raised in a prior challenge.”).
`Here, there is no question that Facebook and WhatsApp filed the
`Facebook Petition before the Petition in IPR2017-00225. Therefore, the
`asserted grounds here were known to Facebook and WhatsApp at least one
`month before these entities filed the motion to join IPR2017-00225. As
`such, there is no evidence or argument in the record that the grounds
`
`4
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`IPR2017-01427
`Patent 8,995,433 B2
`
`involved in the instant proceeding were unavailable to these entities before
`they joined IPR2017-00225.
`Facebook and WhatsApp argue that they could not have raised the
`grounds asserted here in IPR2017-00225, because trial had been instituted
`already in that proceeding. Paper 11, 3−4. This is not a fact relevant to our
`inquiry. We focus on whether the parties did raise or reasonably could have
`raised the asserted grounds when it filed the motion to join IPR2017-00225.
`These petitioners chose both to join IPR2017-00225, knowing the limited
`scope of that case, and also to maintain this proceeding, with different prior
`art asserted against all claims, including claim 7. We recognize that trying
`to expand the scope of IPR2017-00225 to include the challenges in this case,
`would substantially decrease the likelihood that the Board would grant the
`joinder request. A petitioner, however, is not required to join another
`petitioner’s case. Nor is a petitioner prevented from requesting to
`consolidate, with an earlier case, a petition including additional challenges.
`Thus, Facebook and WhatsApp had control of how to proceed given the
`institution of IPR2017-00225.
`Accordingly, we do not find persuasive Facebook and WhatsApp’s
`argument that no estoppel arises here merely because they joined a
`previously instituted trial. Further, because the Board has issued a Final
`Written Decision in IPR2017-00225 concerning claims 1−6 and 8, we
`determine that Facebook and WhatsApp are estopped from maintaining the
`instant proceeding under § 315(e)(1) as to those claims. However, because
`this proceeding challenges claim 7, which was not addressed in the Final
`Written Decision in IPR2017-00225, we determine that Facebook and
`5
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`IPR2017-01427
`Patent 8,995,433 B2
`
`WhatsApp are not estopped from maintaining the proceeding with respect to
`claim 7 only. See 35 U.S.C. § 318(e)(1) (stating petitioner “may not request
`or maintain a proceeding before the Office, with respect to that claim on any
`ground that the petitioner raised or reasonably could have raised during” the
`inter partes review that results in a final written decision concerning the
`claim) (emphasis added).
`
`B. Role of Facebook and WhatsApp in This Proceeding
`
`We now turn to the question of what role, if any, Facebook and
`WhatsApp will retain in this proceeding. The issue is complicated
`somewhat, by the fact that LG Electronics (“LG”), who filed a petition and
`joinder motion in IPR2017-02087, was joined to this case on March 6, 2018.
`LG was not a petitioner in IPR2017-00225, and, therefore, is not subject to
`the estoppel issue discussed above. Patent Owner, however, argues that the
`Board should terminate this entire proceeding based on the estoppel of
`WhatsApp and Facebook. Paper 12, 5. According to Patent Owner, LG
`should simply be allowed to file its own petition. Id. Facebook and
`WhatsApp, on the other hand, argue that the Board should proceed to issue a
`Final Written Decision in this proceeding because claim 7, which depends
`from claim 1, avoids estoppel as to that claim, and presenting evidence and
`arguments focusing on claim 1 means that the Board and the parties would
`still need to expend the same effort as that of a full proceeding. Paper 11, 5.
`Facebook and WhatsApp also argue that because LG is a joined petitioner
`here, this proceeding must proceed to final written decision whether or not
`
`6
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`IPR2017-01427
`Patent 8,995,433 B2
`
`Facebook and WhatsApp are estopped, making it improper to “curtail this
`proceeding as to the Petitioners.” Id.
`As discussed above, we agree that Facebook and WhatsApp are not
`estopped as to claim 7. Therefore, we see no cause to dismiss those entities
`from the case as a whole. Moreover, LG, which is not estopped from
`maintaining this proceeding, retains an interest in seeing this proceeding
`resolved regardless of whether Facebook and WhatsApp can participate.
`Accordingly, we decline to terminate this proceeding.
`Moreover, we do not agree that Facebook and WhatsApp may
`participate in all aspects on this proceeding going forward.
`As we have explained, the estoppel statute prohibits Facebook and
`WhatsApp from “maintaining” this proceeding as to claims 1−6 and 8. We
`are persuaded that this means Facebook and WhatsApp, are prohibited from
`participating in further argument regarding 1−6 and 8. We recognize that
`claim 7 depends from claim 1, and, therefore, proof of claim 7’s
`patentability may involve proof concerning limitations recited in claim 1.
`We do not see the dependency of claim 7 from claim 1, however, as opening
`the door for Facebook and WhatsApp to maintain its active participation in
`every part of this proceeding. Facebook and WhatsApp may not participate
`in the proceeding to categorically challenge the unpatentability of claim 1,
`notwithstanding claim 7’s dependence from that claim.
`Accordingly, Facebook and WhatsApp are dismissed from the
`proceeding as to claim 1−6 and 8. The dismissal of Facebook and
`WhatsApp does not limit LG’s participation in any way. Therefore, we
`determine that the most efficient manner of proceeding is for LG to assume
`7
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`IPR2017-01427
`Patent 8,995,433 B2
`
`the role of challenger of all claims, with Facebook and WhatsApp’s
`participation limited as to issues concerning solely claim 7. Further,
`Facebook and WhatsApp shall not file any briefs and evidence or pursue any
`separate discovery in the case without authorization of the Board. This
`arrangement promotes compliance with the statutory estoppel provision,
`while giving the parties an opportunity to continue with the ongoing
`proceeding. See 37 C.F.R. § 42.1(b). The parties are invited to request a
`conference with the Board to request additional guidance concerning this
`order, if such guidance is needed.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 315(e)(1), and 37 C.F.R.
`§§ 42.5(a) and 42.73(d), Facebook and WhatsApp are dismissed as to their
`challenge of claims 1−6 and 8;
`FURTHER ORDERED that LG Electronics shall assume the previous
`role of Facebook and WhatsApp as challenger of claims 1−8, with input
`from Facebook and WhatsApp strictly limited to the challenge of claim 7;
`and
`
`FURTHER ORDERED that Facebook and WhatsApp shall not file
`any additional briefs or evidence concerning claim 7 separate from filings
`from LG Electronics without authorization of the Board.
`
`
`8
`
`
`
`IPR2017-01427
`Patent 8,995,433 B2
`
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`
`Anand Sharma
`Minjae Kang
`Joshua Goldberg
`Bradford Shulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P
`Anand.sharma@finnegan.com
`Minjae.kang@finnegan.com
`Joshua.goldbert@finnegan.com
`Bradford.shulz@finnegan.com
`
`PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`9
`
`
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