Trials@uspto.gov Paper No. 8
`Tel: 571.272.7822
`Entered: December 12, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC.,
`AMAZON FULFILLMENT SERVICES, INC., HULU, LLC,
`NETFLIX, INC., and GOOGLE LLC
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00948, Patent 8,566,960 B2
`Case IPR2017-01665, Patent 8,566,960 B21
`____________
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 The parties are not authorized to use this caption.
`
`
`Tel: 571.272.7822
`Entered: December 12, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC.,
`AMAZON FULFILLMENT SERVICES, INC., HULU, LLC,
`NETFLIX, INC., and GOOGLE LLC
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00948, Patent 8,566,960 B2
`Case IPR2017-01665, Patent 8,566,960 B21
`____________
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 The parties are not authorized to use this caption.
`
`
`
`IPR2017-00948; IPR2017-01665
`Patent 8,566,960 B2
`
`
`On February 17, 2017, Petitioners Amazon.com, Inc., Amazon Digital
`Services, Inc., Amazon Fulfillment Services, Inc., Hulu, LLC, and Netflix,
`Inc. (“the Amazon Petitioners”) filed a Petition challenging claims 1–25 of
`U.S. Patent No. 8,566,960 B2 (“the ’960 patent”). IPR2017-00948, Paper 1.
`Uniloc Luxembourg, S.A. (“Patent Owner”) filed a Preliminary Response to
`the Amazon Petitioners’ Petition on June 13, 2017. IPR2017-00948,
`Paper 9. We instituted an inter partes review in IPR2017-00948 on August
`14, 2017. IPR2017-00948, Paper 10.
`After Patent Owner filed its Preliminary Response in IPR2017-00948,
`on June 30, 2017, Petitioner Google LLC filed a Petition challenging claims
`1–25 of the ’960 patent. IPR2017-01665, Paper 2. Google did not move to
`join IPR2017-00948. Nevertheless, Google stated that, “[t]o the extent the
`Board determines to institute on both pending petitions and believes
`efficiencies would be served by harmonizing the schedules of the respective
`proceedings, Petitioner here is willing to work with the Patent Owner and
`Board to achieve those efficiencies.” Id. at 14. On October 19, 2017, Patent
`Owner filed a Preliminary Response arguing, inter alia, that Google’s
`Petition should be denied under 35 U.S.C. § 325(d). IPR2017-01665, Paper
`7, 2–8. In response to the above-quoted statement of Google, Patent Owner
`stated that it “does not consent to Petitioner’s tacit suggestion that the
`regulations governing joinder can be ignored here and that this matter could
`somehow be joined together with IPR2017-00948.” Id. at 6 n.6.
`Although Petitioner has not requested joinder and, thus, has not
`satisfied 37 C.F.R. § 42.122(b), we nevertheless have discretion to join
`Google to IPR2017-00948. See 35 U.S.C. §§ 315(c), 325(d); 37 C.F.R.
`§ 42.122(a). Section 325(d) also provides that “the Director may take into
`
`2
`
`
`
`IPR2017-00948; IPR2017-01665
`Patent 8,566,960 B2
`
`account whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office.” We have reviewed Google’s Petition and note the substantial
`similarities between its challenges and those raised in IPR2017-00948. We
`also note Google’s attempts to respond to the arguments raised by Patent
`Owner in its IPR2017-00948 Preliminary Response. Cf. General Plastic
`Indus. Co., LTD. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB
`Sept. 6, 2017) (Paper 19) (precedential), Slip. op. at 17 (“[F]actor 3 is
`directed to Petitioner’s potential benefit from receiving and having the
`opportunity to study Patent Owner’s Preliminary Response, as well as our
`institution decisions on the first-filed petitions, prior to its filing of follow-on
`petitions.”). We also are aware that, should we exercise our discretion to
`dismiss pursuant to Section 325(d), Google, who is not a party to IPR2017-
`00948, would be denied an opportunity to advance prior art and arguments
`that we determined presented a reasonable likelihood of prevailing in
`showing that claims 1–25 are unpatentable. If the Amazon Petitioners were
`to settle, Google would not have the benefit of a ruling on those challenges,
`despite filing a petition reciting such challenges. To be clear, we have not
`yet decided whether to deny Google’s Petition under 35 U.S.C. § 325(d).
`The parties (the Amazon Petitioners, Google, and Patent Owner) are
`directed to meet and confer to ascertain whether they can agree to joinder of
`Google to IPR2017-00948 and, if so, the terms of such joinder (e.g.,
`schedule, Google’s participation). The panel believes that joinder could
`protect Google’s interest in pursing challenges substantially similar to those
`brought in its own Petition in the event of settlement of the Amazon
`Petitioners while protecting Patent Owner from successive challenges to its
`
`3
`
`
`
`IPR2017-00948; IPR2017-01665
`Patent 8,566,960 B2
`
`patent based on similar prior art and arguments. The parties must, by
`Monday, December 18, 2017, state whether they have reached agreement
`and, if so the terms. The parties can do so by sending an email to the Trials
`mailbox listed on the first page of this Order. The panel will take into
`consideration the agreement of the parties in determining the parameters of a
`joined proceeding, if any. If the parties cannot reach agreement, the parties
`must provide several dates and times during the week of December 18 at
`which all parties are available for a teleconference with the Board to discuss
`objections to joinder. Such a teleconference will not be an opportunity to
`reargue the merits of Patent Owner’s Section 325(d) argument.
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00948; IPR2017-01665
`Patent 8,566,960 B2
`
`
`
`PETITIONERS:
`Daniel T. Shvodian
`PERKINS COIE LLP
`dshvodian@perkinscoie.com
`
`W. Karl Renner
`Adam Shartzer
`Matthew Mosteller
`Vivian Lu
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`shartzer@fr.com
`mosteller@fr.com
`vlu@fr.com
`
`PATENT OWNER:
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA
`sean.burdick@unilocusa.com
`
`5
`
`
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