Trials@uspto.gov Paper No. 10
`571-272-7822
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` Filed: October 3, 2017
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`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 IPR2017-01636
`Patent 7,535,890 B2
`____________
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
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`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. §§ 42.108, 42.122
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`571-272-7822
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` Filed: October 3, 2017
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`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 IPR2017-01636
`Patent 7,535,890 B2
`____________
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. §§ 42.108, 42.122
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`IPR2017-01636
`Patent 7,535,890 B2
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`Facebook, Inc. and WhatsApp, Inc. (collectively, “Petitioner”) filed a
`Petition requesting inter partes review of claims 1–6, 14, 15, 17–20, 28, 29,
`31–34, 40–43, 51–54, 62–65, and 68 (“the challenged claims”) of
`U.S. Patent No. 7,535,890 B2 (Ex. 1001, “the ’890 patent”). Paper 2
`(“Pet.”). Along with the Petition, Petitioner filed a motion for joinder with
`IPR2017-00221, Apple Inc. v. Uniloc USA, Inc., a pending inter partes
`review involving the same challenged claims of the ’890 patent. Paper 3
`(“Mot.”).
`Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
`Response to the Petition. Paper 8 (“Prelim. Resp.”); see Paper 9 (Notice of
`Patent Owner Preliminary Response).1 Patent Owner, however, did not file
`an opposition to Petitioner’s Motion for Joinder.
`For the reasons given below, we institute inter partes review of
`claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–43, 51–54, 62–65, and 68 of
`the ’890 patent. In addition, we exercise our discretion to join Petitioner as a
`petitioner in IPR2017-00221.
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`In IPR2017-00221, filed by Apple Inc. (“Apple”), we instituted inter
`partes review of the challenged claims—claims 1–6, 14, 15, 17–20, 28, 29,
`31–34, 40–43, 51–54, 62–65, and 68—of the ’890 patent. Apple Inc. v.
`Uniloc USA, Inc., Case IPR2017-00221 (PTAB May 25, 2017) (Paper 9)
`
`
`1 We authorized Patent Owner to file a Notice of Patent Owner Preliminary
`Response and the Preliminary Response filed in IPR2017-00221, which we
`would accept as the preliminary response in the instant proceeding. Paper 7,
`4–5.
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`(“IPR2017-00221 Inst. Dec.”). In addition, the ’890 patent is the subject of
`IPR2017-01523 and IPR2017-01524, which were filed by Petitioner, as well
`as IPR2017-01612 and IPR2017-01802. See Pet. 72; Paper 4, 3. The
`’890 patent also was the subject of IPR2017-00220, in which we denied
`institution of inter partes review. See Apple Inc. v. Uniloc USA, Inc., Case
`IPR2017-00220 (PTAB May 25, 2017) (Paper 9).
`Moreover, Petitioner and Patent Owner represent that the ’890 patent
`is the subject of numerous actions before the U.S. District Court for the
`Eastern District of Texas, including actions filed against Petitioner (Case
`Nos. 2-16-cv-00723 (Facebook, Inc.) and 2-16-cv-00645 (WhatsApp, Inc.)).
`Pet. 68–71; Paper 4, 1–3.
`
`B. THE ’890 PATENT
`The ’890 patent explains that “[v]oice messaging” and “instant text
`messaging” in both the Voice over Internet Protocol (“VoIP”) and public
`switched telephone network environments are known. Ex. 1001, 2:11–35.
`In prior art instant text messaging systems, a server presents a user of a
`client terminal with a “list of persons who are currently ‘online’ and ready to
`receive text messages,” the user “select[s] one or more” recipients and types
`the message, and the server immediately sends the message to the respective
`client terminals. Id. at 2:23–35. According to the ’890 patent, however,
`“there is still a need in the art for . . . a system and method for providing
`instant VoIP messaging over an IP network,” such as the Internet.
`Id. at 1:6–11, 2:36–48, 6:37–39.
`In one embodiment, the ’890 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Id. at 6:12–14.
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`As illustrated in Figure 2, local packet-switched IP network 204, which may
`be a local area network (“LAN”), “interconnects” IVM clients 206, 208 and
`legacy telephone 110 to local IVM server 202. Id. at 6:40–61; see id.
`at 7:13–14, 7:51–55. Local IVM server 202 enables instant voice messaging
`functionality over network 204. Id. at 7:53–55.
`In “record mode,” IVM client 208, exemplified as a VoIP softphone
`in Figure 2, “displays a list of one or more IVM recipients,” provided and
`stored by local IVM server 202, and the user selects recipients from the list.
`Id. at 7:47–49, 7:55–61. IVM client 208 then transmits the selections to
`IVM server 202 and “records the user’s speech into . . . digitized audio
`file 210 (i.e., an instant voice message).” Id. at 7:61–8:1.
`When the recording is complete, IVM client 208 transmits audio
`file 210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Id. at 8:5−19. “[O]nly the available
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`IVM recipients, currently connected to . . . IVM server 202, will receive the
`instant voice message.” Id. at 8:23−25. IVM server 202 “temporarily saves
`the instant voice message” for any IVM client that is “not currently
`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers
`it . . . when the IVM client connects to . . . local IVM server 202 (i.e., is
`available).” Id. at 8:24–29; see id. at 9:7–11. Upon receiving the instant
`voice message, the recipients can audibly play the message. Id. at 8:19–22.
`In another embodiment, the ’890 patent discusses global IVM
`system 500. Id. at 15:24–28, Fig. 5. Global IVM system 500 includes a
`local IVM system, such as local IVM system 200, and global IVM server
`system 502, with global IVM clients 506, 508. Id. at 15:25–33. Both the
`local and global IVM systems are connected to “packet-switched
`network 102 (i.e., Internet)” to enable the local and global IVM clients to be
`able to exchange instant voice messages with one another. Id. at 15:25–38.
`C. ILLUSTRATIVE CLAIMS
`Of the challenged claims, claims 1, 14, 28, 40, 51, and 62 of the
`’890 patent are independent. Claims 1 and 28, reproduced below, are
`illustrative of the recited subject matter:
`1. An instant voice messaging system for delivering instant
`messages over a packet-switched network, the system comprising:
`a client connected to the network, the client selecting one or
`more recipients, generating an instant voice message
`therefor, and transmitting the selected recipients and the
`instant voice message therefor over the network; and
`a server connected to the network, the server receiving the
`selected recipients and the instant voice message therefor,
`and delivering the instant voice message to the selected
`recipients over the network, the selected recipients enabled
`to audibly play the instant voice message, and the server
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`temporarily storing the instant voice message if a selected
`recipient is unavailable and delivering the stored instant
`voice message to the selected recipient once the selected
`recipient becomes available.
`Ex. 1001, 23:55–24:3.
`28. An instant voice messaging system for delivering instant
`messages over a plurality of packet-switched networks, the system
`comprising:
`a client connected to an external network, the client selecting
`one or more recipients connected to a local network,
`generating an
`instant voice message
`therefor, and
`transmitting the selected recipients and the instant voice
`message therefor over the external network; and
`a external server system connected to the external network, the
`external server system receiving the selected recipients and
`the instant voice message, and routing the selected
`recipients and the instant voice message over the external
`network and the local network;
`a local server connected to the local network, the local server
`receiving the selected recipients and the instant voice
`message therefor, and delivering the instant voice message
`to the selected recipients over the local network, the selected
`recipients being enabled to audibly play the instant voice
`message, and the local server temporarily storing the instant
`voice message if a selected recipient is unavailable and
`delivering the stored instant voice message to the selected
`recipient once the selected recipient becomes available.
`Id. at 27:6–28.
`
`II. PETITION FOR INTER PARTES REVIEW
`We first consider the merits of the Petition.
`A. EVIDENCE OF RECORD
`The Petition relies upon the following asserted prior art references:
`U.S. Patent No. 7,123,695 B2 (filed Aug. 19, 2002) (issued Oct. 17,
`2006) (Ex. 1007, “Malik”);
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`International Application Publication No. WO 02/17658 A1 (published
`Feb. 28, 2002) (Ex. 1008, “Väänänen”);
`U.S. Patent Application Publication No. 2003/0046273 A1 (published
`Mar. 6, 2003) (Ex. 1009, “Deshpande”);
`U.S. Patent Application Publication No. 2004/0068545 A1 (filed Dec. 19,
`2002) (published Apr. 8, 2004) (Ex. 1010, “Daniell”); and
`U.S. Patent Application Publication No. 2003/0147512 A1 (published
`Aug. 7, 2003) (Ex. 1015, “Abburi”).
`In addition, Petitioner supports its contentions with the Declaration of
`Leonard J. Forys, Ph.D. (Ex. 1003).
`B. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability under
`35 U.S.C. § 103.2 Pet. 1–2.
`Challenged Claim(s)
`1–3, 5, 14, 15, 17, 19, 28, 29,
`31, 33, 40, 42, 51, 53, 62, 64
`4, 18, 32, 41, 52, 63
`
`References
`Basis
`§ 103 Malik and Väänänen
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`§ 103 Malik, Väänänen, and
`Deshpande
`§ 103 Malik, Väänänen, and
`Abburi
`§ 103 Malik, Väänänen, Abburi,
`and Daniell
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`6, 20, 34, 43, 54, 65
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`68
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`C. CLAIM INTERPRETATION
`The Board interprets claims of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent in
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the patent application resulting in the ’890 patent was filed
`before the effective date of the relevant section of the AIA, we refer to the
`pre-AIA version of § 103 throughout this Decision.
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`which [they] appear[].” 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard). We presume a claim term
`carries its “ordinary and customary meaning,” which is the meaning “the
`term would have to a person of ordinary skill in the art” at the time of the
`invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007) (citation omitted). This presumption, however, is rebutted when the
`patentee acts as lexicographer by giving the term a particular meaning in the
`specification with “reasonable clarity, deliberateness, and precision.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`In the Petition, Petitioner proposes the same construction for the claim
`term “external network,” recited in challenged claims 14, 17, 28, 31, 51, and
`62 of the ’890 patent, as proffered by Apple in IPR2017-00221. See Pet. 7–
`10; IPR2017-00221 Paper 2 (“IPR2017-00221 Pet.”), 9–12. As in
`IPR2017-00221, Patent Owner does not propose any claim terms for
`construction. See generally Prelim. Resp. In our institution decision in
`IPR2017-00221, we determined that no claim terms required an express
`construction to resolve the issues presented by the patentability challenges.
`See IPR2017-00221 Inst. Dec. 7–8; Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that
`“are in controversy” need to be construed and “only to the extent necessary
`to resolve the controversy”). Having reviewed the record in the present
`proceeding, we again conclude that we need not construe any claim terms
`for purposes of this Decision.
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`D. ASSERTED OBVIOUSNESS GROUNDS
`Petitioner asserts the same grounds of unpatentability challenging
`claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–43, 51–54, 62–65, and 68 of
`the ’890 patent as asserted by Apple in IPR2017-00221. See Pet. 1–2 & n.6;
`IPR2017-00221 Inst. Dec. 6–7. Moreover, Petitioner supports these
`assertions with the same arguments and evidence proffered by Apple in
`IPR2017-00221, including identical declaration testimony of Dr. Forys. See
`Pet. 1–2 & n.1; Mot. 1, 5–7; compare Pet., with IPR2017-00221 Pet.;
`compare Ex. 1003, with IPR2017-00221 Ex. 1003. In addition, Patent
`Owner, in contesting Petitioner’s obviousness assertions, filed the same
`Preliminary Response in this proceeding as it filed in IPR2017-00221. See
`Prelim. Resp.; Paper 9.
`In our institution decision in IPR2017-00221, we determined that the
`argument and evidence of record supported institution of inter partes review
`on the following grounds of unpatentability:
`References
`Instituted Claim(s)
`Basis
`1–3, 5, 6, 14, 15, 17, 19, 20,
`§ 103 Malik and Väänänen
`28, 29, 31, 33, 34, 40, 42,
`43, 51, 53, 54, 62, 64, 65
`4, 18, 32, 41, 52, 63
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`6, 20, 34, 43, 54, 65
`68
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`§ 103 Malik, Väänänen, and
`Deshpande
`§ 103 Malik, Väänänen, and Abburi
`§ 103 Malik, Väänänen, Abburi,
`and Daniell as well as Malik,
`Väänänen, and Daniell
`IPR2017-00221 Inst. Dec. 10–39; see Pet. 1–2 & n.6. Having considered
`anew the identical arguments and evidence presented in the instant Petition
`and Preliminary Response, we determine that Petitioner has shown a
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`reasonable likelihood of establishing that claims 1–6, 14, 15, 17–20, 28, 29,
`31–34, 40–43, 51–54, 62–65, and 68 of the ’890 patent are unpatentable, and
`institute inter partes review of these claims on the same grounds for the
`same reasons given in our institution decision in IPR2017-00221. We
`incorporate our analysis from our institution decision in IPR2017-00221 into
`this Decision. IPR2017-00221 Inst. Dec. 10–39.
`III. MOTION FOR JOINDER
`In the Motion for Joinder, Petitioner seeks joinder with
`
`IPR2017-00221. Mot. 1, 10. Petitioner filed the present Motion on June 16,
`2017—within one month of our decision instituting inter partes review in
`IPR2017-00221, which was entered on May 25, 2017. See IPR2017-00221
`Inst. Dec.; Mot. 3–5, 10. Therefore, the Motion is timely under 37 C.F.R.
`§ 42.122(b).3 See 37 C.F.R. § 42.122(b) (“Any request for joinder must be
`filed, as a motion under § 42.22, no later than one month after the institution
`date of any inter partes review for which joinder is requested.”).
`The Board, acting on behalf of the Director, has the discretion to join
`a party to a pending inter partes review where the conditions of 35 U.S.C.
`§ 315(c) are met. See 35 U.S.C. § 315(c); see also 37 C.F.R. § 42.4(a) (“The
`
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`3 We note that Petitioner filed the instant Petition less than one year after
`Petitioner was served with a complaint alleging infringement of the
`’890 patent and, thus, before the expiration of the one-year time limitation of
`35 U.S.C. § 315(b). See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b); Mot. 2–
`3, 5 & n.1; Pet. 68–69, 74. Accordingly, we need not apply the exception to
`this one-year bar, which is stated in the last sentence of § 315(b) and is
`applicable to motions for joinder. See 35 U.S.C. § 315(b) (“The time
`limitation set forth in the preceding sentence shall not apply to a request for
`joinder under subsection (c).”); 37 C.F.R. § 42.122(b).
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`Board institutes the trial on behalf of the Director.”). Specifically, 35 U.S.C.
`§ 315(c) provides:
`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 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 partes
`review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is entitled
`to joinder. See 37 C.F.R. § 42.20(c).
`As noted above, we instituted inter partes review of the challenged
`claims of the ’890 patent in IPR2017-00221. See generally IPR2017-00221
`Inst. Dec. In addition, we determine above that, based on our review of the
`instant Petition and Preliminary Response, the Petition warrants institution
`of inter partes review of the same claims. Thus, the conditions of 35 U.S.C.
`§ 315(c) are satisfied.
`Accordingly, we consider whether to exercise our discretion to join
`Petitioner as a petitioner in IPR2017-00221. To start, neither party to
`IPR2017-00221 has opposed Petitioner’s request for joinder. Petitioner
`represents in its Motion that Apple, the petitioner in IPR2017-00221, “does
`not oppose” or “object” to Petitioner’s request. Mot. 2, 9. In addition,
`Patent Owner did not file an opposition to Petitioner’s Motion within the
`time allotted under the Board’s rules. See 37 C.F.R. § 42.25(a)(1) (setting
`the default deadline for an opposition to a motion as “one month after the
`service of the motion”). Patent Owner has indicated, in an email
`communication to the Board, that it understands Petitioner’s motion in this
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`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, 1–2.
`Moreover, we agree with Petitioner that joinder would not introduce
`any new patentability issues into IPR2017-00221. See Mot. 1, 5–7; see also
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-2321,
`slip op. at 2–3 (Fed. Cir. Aug. 22, 2017) (Dyk, J. and Wallach, J.,
`concurring) (explaining that, under our governing statutes, joinder is plainly
`permitted where it “would not introduce any new patentability issues”). The
`instituted grounds in this case and IPR2017-00221 are identical—relying on
`the same prior art, same arguments, and same evidence, including an
`identical expert declaration. See Mot. 1, 5–7; see generally Pet.;
`IPR2017-00221 Inst. Dec.; IPR2017-00221 Pet.
`In addition, based on the identicality of the issues presented in this
`case and IPR2017-00221, as well as Petitioner’s requested “understudy” role
`in IPR2017-00221, we are persuaded that joinder would have minimal, if
`any, impact on the procedural aspects of IPR2017-00221. See Mot. 1–2, 5,
`7–10. Petitioner agrees to take an “understudy role” in IPR2017-00221 “so
`long as [Apple] remains a participating party” in the case. Id. at 5; see id.
`at 8–9. Specifically, Petitioner agrees that all of its filings will be
`consolidated with those of Apple “unless a filing solely concerns issues that
`do not involve [Apple].” Id. at 8–9. Petitioner also agrees to be “bound by
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`any agreement between Patent Owner[] and [Apple] concerning discovery
`and/or depositions.” Id. at 9. Further, Petitioner represents that it will not
`“introduce any argument or discovery not already introduced by [Apple]” or
`be accorded any deposition time beyond that to which Apple is entitled,
`pursuant to the Board’s rules or any agreement between Patent Owner and
`Apple. Id. Given that Petitioner has agreed to such an “understudy” role
`and that the instituted grounds in this case and IPR2017-00221 are the
`same—including the same supporting prior art, arguments, evidence, and
`expert testimony—joinder should not necessitate any additional briefing or
`discovery from Patent Owner beyond that already required in
`IPR2017-00221. See id. at 1, 5–7. Accordingly, we do not anticipate any
`changes to the schedule of the ongoing trial in IPR2017-00221 to be
`necessary in order to accommodate Petitioner’s participation in that case.
`For the foregoing reasons, Petitioner has met its burden to
`demonstrate that joinder with IPR2017-00221 is warranted under the
`circumstances. We exercise our discretion to join Petitioner as a petitioner
`in IPR2017-00221.
`We impose the following conditions on Petitioner’s participation in
`IPR2017-00221 to promote the just and efficient administration of the
`ongoing trial and to balance the interests of Petitioner, Apple, and Patent
`Owner. As a petitioner in IPR2017-00221, Petitioner shall adhere to the
`existing schedule of IPR2017-00221 and the understudy role it has agreed to
`assume. See id. at 8–10. More specifically, so long as Apple is a party to
`IPR2017-00221, all filings by Petitioner in IPR2017-00221 shall be
`consolidated with the filings of Apple, and Petitioner shall not file any
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`separate paper or briefing without prior authorization from the Board. See
`id. at 8–9. 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 and shall not seek any discovery beyond that sought by
`Apple. See id. at 9. Patent Owner shall not be required to provide any
`additional discovery or deposition time as a result of joinder. See id. In
`addition, if an oral hearing is requested and scheduled in IPR2017-00221,
`the petitioners in IPR2017-00221 shall collectively designate attorneys to
`present at the oral hearing in a consolidated argument.
`The Board expects Petitioner to resolve any disputes among the
`entities in IPR2017-00221 and to contact the Board only if such matters
`cannot be resolved.
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`IV. ORDER
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`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–43, 51–54, 62–65,
`and 68 of U.S. Patent No. 7,535,890 B2 is instituted on the following
`grounds of unpatentability:
`Claims 1–3, 5, 6, 14, 15, 17, 19, 20, 28, 29, 31, 33, 34, 40, 42, 43, 51,
`53, 54, 62, 64, and 65 under 35 U.S.C. § 103 as obvious over
`Malik and Väänänen;
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`Claims 4, 18, 32, 41, 52, and 63 under 35 U.S.C. § 103 as obvious
`over Malik, Väänänen, and Deshpande;
`Claims 6, 20, 34, 43, 54, and 65 under 35 U.S.C. § 103 as obvious
`over Malik, Väänänen, and Abburi, and
`Claim 68 under 35 U.S.C. § 103 as obvious over Malik, Väänänen,
`Abburi, and Daniell, as well as over Malik, Väänänen, and
`Daniell;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-00221 is granted;
`FURTHER ORDERED that Petitioner is joined as a petitioner in
`IPR2017-00221;
`FURTHER ORDERED that the instant proceeding, IPR2017-01636,
`is terminated under 37 C.F.R. § 42.72, and all further filings shall be made
`only in IPR2017-00221;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which a trial was instituted in IPR2017-00221 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2017-00221
`(Paper 10), as modified by stipulation of the parties (Paper 11), shall
`continue to govern IPR2017-00221;
`FURTHER ORDERED that absent prior authorization from the
`Board, all filings by Petitioner in IPR2017-00221 shall be consolidated with
`the filings of Apple, and the consolidated filings shall comply with the page
`limits set forth in 37 C.F.R. § 42.24;
`
`
`
`
`15
`
`
`
`IPR2017-01636
`Patent 7,535,890 B2
`
`
`FURTHER ORDERED that Petitioner is bound by any discovery
`agreements between Patent Owner and Apple in IPR2017-00221 and that
`Petitioner shall not seek any discovery beyond that sought by Apple;
`FURTHER ORDERED that if an oral hearing is requested and
`scheduled in IPR2017-00221, the petitioners in IPR2017-00221 shall
`collectively designate attorneys to present at the hearing in a consolidated
`argument;
`FURTHER ORDERED that the case caption in IPR2017-00221 shall
`be changed to reflect the joinder of Petitioner in accordance with the
`attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2017-00221.
`
`
`
`
`
`
`
`16
`
`
`
`IPR2017-01636
`Patent 7,535,890 B2
`
`For PETITIONER:
`Heidi L. Keefe
`Phillip E. Morton
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`FB_Uniloc2_890_PTAB_IPR@cooley.com
`
`For PATENT OWNER:
`
`Brett Mangrum
`Sean D. Burdick
`UNILOC USA, INC.
`brett.mangrum@unilocusa.com
`sean.burdick@unilocusa.com
`
`Ryan Loveless
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`
`
`
`
`
`
`
`
`17
`
`
`
`
`
`
`
`Example Case Caption for IPR2017-00221
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SNAP INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-002211
`Patent 7,535,890 B2
`____________
`
`
`
`
`1 Snap Inc., who filed a petition in IPR2017-01612, as well as Facebook, Inc.
`and WhatsApp, Inc., who filed a petition in IPR2017-01636, have been
`joined as petitioners in this proceeding.
`
`
`
`
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