`Trials@uspto.gov
`571-272-7822
` Entered: September 8, 2017
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`Case IPR2017-01611 (Patent 8,995,433 B2)
`Case IPR2017-01612 (Patent 7,535,890 B2)
`____________
`
`FACEBOOK, INC., and WHATSAPP INC.,
`Petitioner,
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`Case IPR2017-01634 (Patent 8,995,433 B2)
`Case IPR2017-01635 (Patent 8,243,723 B2)
`Case IPR2017-01636 (Patent 7,535,890 B2)
`____________
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(c)(1)
`
`
`
`Case IPR2017-01611 (Patent 8,995,433 B2)
`Case IPR2017-01612 (Patent 7,535,890 B2)
`Case IPR2017-01634 (Patent 8,995,433 B2)
`Case IPR2017-01635 (Patent 8,243,723 B2)
`Case IPR2017-01636 (Patent 7,535,890 B2)
`
`
`
`The Board is authorized to set or modify times by order. 37 C.F.R.
`§ 42.5(c)(1). When exercising this authority here, we do so to secure the
`just, speedy, and inexpensive resolution of these proceedings. 37 C.F.R.
`§ 42.1(b). We determine for the reasons set forth below that the deadline for
`the Patent Owner Preliminary Response in each of the captioned
`proceedings is September 20, 2017.
`The patents involved in these proceedings are subject to trial in Cases
`IPR2017-00221, IPR2017-00222, and IPR2017-00225. The Petitions in the
`above-captioned proceedings are each accompanied by a Motion for Joinder
`requesting joinder with one of the three instituted trials, as follows:
`Case No.
`Patent-at-Issue
`Requested Joinder
`IPR2017-01611
`8,995,433
`IPR2017-00225
`IPR2017-01612
`7,535,890
`IPR2017-00221
`IPR2017-01634
`8,995,433
`IPR2017-00225
`IPR2017-01635
`8,243,723
`IPR2017-00222
`IPR2017-01636
`7,535,890
`IPR2017-00221
`
`The deadline for Patent Owner to respond to the Motions for Joinder
`in the instant cases (August 13, at the latest; see 37 C.F.R. § 42.25(a)(1))
`passed without opposition. On August 16, Patent Owner requested a change
`in the deadlines for the Patent Owner Preliminary Responses in the
`captioned cases. Upon assignment to this panel, we asked all parties to
`2
`
`
`
`Case IPR2017-01611 (Patent 8,995,433 B2)
`Case IPR2017-01612 (Patent 7,535,890 B2)
`Case IPR2017-01634 (Patent 8,995,433 B2)
`Case IPR2017-01635 (Patent 8,243,723 B2)
`Case IPR2017-01636 (Patent 7,535,890 B2)
`
`attend a conference call to discuss the requested deadline change. The panel
`held the conference call on September 6. Counsel for Petitioner and Patent
`Owner were present, as well as Judges Quinn, Begley, and Boudreau.
`During the call, Patent Owner argued that consolidating the dates to
`respond, to a later date, would promote efficiency. Petitioner did not object
`to the request. The panel explained the need, not to delay the responses, but
`instead to expedite the resolution of the petitions and motions for joinder in
`the captioned proceedings, which seek joinder with ongoing trials scheduled
`for hearing on February 8, 2018. There are many pending proceedings
`concerning the patents-at-issue, and the deadlines to resolve the joinder in
`the above-captioned cases currently have overlapping deadlines with other
`pending proceedings. In order to manage more effectively these cases given
`that the same panel is assigned to all of these proceedings, and considering
`that the Petitions are identical (or “me too” petitions) to the ongoing trials,
`which were instituted on May 25, 2017 based on petitions filed in
`mid-November 2016, and that Patent Owner did not oppose the motions for
`joinder, the panel proposed an expedited schedule for the Patent Owner
`Preliminary Responses. Specifically, the panel proposed accelerating the
`deadline for the Preliminary Responses in the above-captioned cases to
`September 20. The panel requested that Patent Owner consider the proposal
`and respond to the Board by Friday, September 8.
`The Board received an email communication from Patent Owner as
`follows:
`
`3
`
`
`
`Case IPR2017-01611 (Patent 8,995,433 B2)
`Case IPR2017-01612 (Patent 7,535,890 B2)
`Case IPR2017-01634 (Patent 8,995,433 B2)
`Case IPR2017-01635 (Patent 8,243,723 B2)
`Case IPR2017-01636 (Patent 7,535,890 B2)
`
`
`With the understanding that the Joinder Petitioners have
`stipulated that the Joinder Petitions filed in IPR2017-
`01634, -01635, and -01636 are 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, Patent Owner agrees to an accelerated schedule for
`the preliminary response due date in these three matters.
`We understand the Board will be providing instructions
`and a new deadline for the expected notices that will be
`filed in place of a preliminary response.
`Exhibit 3001.
`Patent Owner later clarified its understanding that the “Joinder
`Petitions” identified in its email include the Petitions in IPR2017-01611 and
`IPR2017-01612. See id.
`As explained on the call, in order to reduce the burden of an expedited
`filing deadline for Patent Owner, the Board is allowing Patent Owner the
`option to file a Notice of Patent Owner Preliminary Response stating that
`Patent Owner, by authorization of the Board, submits a Patent Owner
`Preliminary Response previously filed in the corresponding ongoing trial.
`For example, the Notice for IPR2017-01611 should state that the Patent
`Owner Preliminary Response filed in IPR2017-00225 is submitted as the
`Patent Owner Preliminary Response for IPR2017-01611. The Notice and
`the previously filed Patent Owner Preliminary Response may be filed as
`
`4
`
`
`
`Case IPR2017-01611 (Patent 8,995,433 B2)
`Case IPR2017-01612 (Patent 7,535,890 B2)
`Case IPR2017-01634 (Patent 8,995,433 B2)
`Case IPR2017-01635 (Patent 8,243,723 B2)
`Case IPR2017-01636 (Patent 7,535,890 B2)
`
`papers in the appropriate captioned proceeding. Patent Owner also has the
`option to waive the preliminary response in accordance with Board’s Rules.
`37 C.F.R. § 42.107(b).
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the deadline for filing the Patent Owner Preliminary
`Response in each of the above-captioned proceedings is set for
`September 20, 2017;
`FURTHER ORDERED that Patent Owner is authorized to file a
`Notice and a previously filed Patent Owner Preliminary Response, in each of
`the above-captioned proceedings, consistent with our instructions above; and
`FURTHER ORDERED that no other deadlines are modified and no
`other filings are authorized.
`
`
`
`5
`
`
`
`Case IPR2017-01611 (Patent 8,995,433 B2)
`Case IPR2017-01612 (Patent 7,535,890 B2)
`Case IPR2017-01634 (Patent 8,995,433 B2)
`Case IPR2017-01635 (Patent 8,243,723 B2)
`Case IPR2017-01636 (Patent 7,535,890 B2)
`
`For PETITIONER:
`
`Heidi L. Keefe
`Lisa F. Schwier
`COOLEY LLP
`hkeefe@cooley.com
`lschwier@cooley.com
`
`For PATENT OWNER:
`
`Brett Mangrum
`Sean Burdick
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`sean.burdick@unilocusa.com
`ryan@etheridgelaw.com
`
`
`
`6
`
`