throbber
Paper No. 7
`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
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket