Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 13
`Entered: January 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-01577
`Patent 7,653,508 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 13
`Entered: January 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-01577
`Patent 7,653,508 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`IPR2018-01577
`Patent 7,653,508 B1
`
`
`I. INTRODUCTION
`
`A. Background
`LG Electronics, Inc. (“Petitioner” or “LG”) filed a Petition for inter
`
`partes review of claims 1−4, 6−8, 11−16, and 19 of U.S. Patent No.
`7,653,508 B1 (Ex. 1001, “the ’508 patent”). Paper 1 (“Pet.”), 1.
`Concurrently with its petition, LG filed a Motion for Joinder with Apple Inc.
`v. Uniloc 2017 LLC, Case IPR2018-00387 (“the Apple IPR”). Paper 3
`(“Motion” or “Mot.”). LG represents that the petitioner in the Apple IPR—
`Apple Inc.—does not oppose the Motion for Joinder. Mot. 1. Uniloc 2017
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). Patent Owner acknowledged the joinder request, but did not state
`that it opposes or does not oppose joinder. Id. at 1 n.1.
`
`For the reasons explained below, we institute an inter partes review of
`claims 1−4, 6−8, 11−16, and 19 of the ’508 patent and grant Petitioner’s
`Motion for Joinder.
`
`B. Real Parties-in-Interest
`The statute governing inter partes review proceedings sets forth
`
`certain requirements for a petition for inter partes review, including that “the
`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a)(2); see also
`37 C.F.R. § 42.8(b)(1) (requiring identification of real parties-in-interest in
`mandatory notices). The Petition identifies LG Electronics, Inc., LG
`Electronics U.S.A., Inc., and LG Electronics MobileComm USA, Inc. as the
`real parties-in-interest. Pet. 2. Patent Owner states that its real parties-in-
`interest are Uniloc 2017 LLC, Uniloc USA, Inc., and Uniloc Licensing USA
`LLC. Paper 5, 2.
`
`2
`
`
`
`IPR2018-01577
`Patent 7,653,508 B1
`
`
`C. Related Matters
`The parties indicate that the ’508 patent is involved in Uniloc USA,
`
`Inc. v. LG Elecs. USA, Inc., Case No. 4-17-cv-00832 (N.D. Tex.), Uniloc
`USA, Inc. v. LG Elecs. USA, Inc., Case No. 4:18-cv-02918 (N.D. Cal.), and
`other proceedings. Pet. 2; Prelim. Resp. 2–3.
`
`In the Apple IPR, we instituted an inter partes review of claims 1−4,
`6−8, 11−16, and 19 of the ’508 patent on the following grounds:
`Reference(s)
`Basis1
`Challenged Claims
`Pasolini2
`35 U.S.C. § 103(a)
`1, 2, 11, and 12
`Fabio3
`35 U.S.C. § 103(a)
`6–8, 15, 16, and 19
`Pasolini and Fabio
`35 U.S.C. § 103(a)
`3, 4, 13, and 14
`
`Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-00387, slip. op. at 6, 27
`(PTAB July 23, 2018) (Paper 8) (“Apple Decision” or “Apple Dec.”).
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`
`unpatentability as the ones on which we instituted review in the Apple IPR.
`Compare Pet. 25–73, with Apple Dec. 6, 27. Indeed, Petitioner contends
`that the Petition asserts only the grounds that the Board instituted in the
`Apple IPR, there are no new arguments for the Board to consider, and the
`
`
`1 The ’508 patent was filed on December 22, 2006, prior to the date when
`the Leahy-Smith America Invents Act (“AIA”) took effect.
`2 US 7,463,997 B2 (filed Oct. 2, 2006, issued Dec. 9, 2008) (Ex. 1005,
`“Pasolini”).
`3 US 7,698,097 B2 (filed Oct. 2, 2006, issued Apr. 13, 2010) (Ex. 1006,
`“Fabio”).
`
`3
`
`
`
`IPR2018-01577
`Patent 7,653,508 B1
`
`Petitioner relies on the same exhibits and expert declaration as in the Apple
`IPR. Mot. 6–9.
`
`We acknowledge Patent Owner’s arguments and evidence supporting
`its position that the claims would not have been obvious. Prelim. Resp. 11–
`30. Certain of Patent Owner’s arguments against the merits of the Petition
`have been previously addressed in the Apple Decision, and we need not
`address them here again. Certain other arguments against the merits of the
`Petition closely mirror arguments made in the Patent Owner Response filed
`in the Apple IPR (compare Prelim. Resp. 11–30, with Apple IPR PO Resp.
`(IPR2018-00387, Paper 11), 11–30). Those common arguments will be
`fully considered in the Apple IPR after Apple has replied and with the
`benefit of a complete record. In sum, based on the current record, Patent
`Owner’s arguments made in its Preliminary Response in this case do not
`persuade us that Petitioner has not demonstrated a reasonable likelihood of
`success in prevailing on the same grounds as instituted in IPR2018–00387.
`
`Additionally, Patent Owner notes that an argument made in an appeal
`pending at the U.S. Court of Appeals for the Federal Circuit asserts that “the
`Board’s appointments of administrative patent judges violate the
`Appointments Clause of Article II” of the U.S. Constitution. Prelim. Resp.
`30. “Patent Owner . . . adopts this constitutional challenge . . . to ensure the
`issue is preserved pending the appeal.” Id.
`
`The Board has previously “declin[ed] to consider [the] constitutional
`challenge as, generally, ‘administrative agencies do not have jurisdiction to
`decide the constitutionality of congressional enactments.’” Square, Inc.
`Unwired Planet LLC, IPR2014-01165, Paper 32, 25 (PTAB Oct. 30, 2015)
`(quoting Riggin v. Office of Senate Fair Employment Practices, 61 F.3d
`
`4
`
`
`
`IPR2018-01577
`Patent 7,653,508 B1
`
`1563, 1569 (Fed. Cir. 1995)). We, likewise, decline to consider Patent
`Owner’s constitutionality argument.
`
`III. MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`
`a filing date of August 23, 2018. See Paper 4. Thus, Petitioner’s Motion for
`Joinder is timely because joinder was requested no later than one month
`after the institution date of the Apple IPR, i.e., July 23, 2018. See 37 C.F.R.
`§ 42.122(b).
`
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which states:
`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.
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition;
`(3) explain what impact (if any) joinder would have on the trial schedule for
`the existing review; and (4) address specifically how briefing and discovery
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`As noted, the Petition in this case asserts the same unpatentability
`grounds on which we instituted review in the Apple IPR. See Mot. 6. LG
`also relies on the same prior art analysis and expert testimony submitted by
`the Apple Petitioner. See id. Indeed, the Petition is nearly identical to the
`
`5
`
`
`
`IPR2018-01577
`Patent 7,653,508 B1
`
`petition filed by the Apple Petitioner with respect to the grounds on which
`review was instituted in the Apple IPR. See id. Thus, this inter partes
`review does not present any ground or matter not already at issue in the
`Apple IPR.
`
`If joinder is granted, LG anticipates participating in the proceeding in
`a limited capacity absent termination of Apple Petitioner as a party. Id. at 6–
`7. LG agrees to “[a]ssume a second-chair role as long as the Apple
`Petitioner remains in the proceeding.” Id. at 7. LG further represents that
`“[n]o new grounds of unpatentability are asserted” and that “joinder would
`not adversely impact the trial schedule, briefing, or discovery in the Apple
`IPR.” Id. at 8.
`
`We agree with Petitioner that joinder with the Apple IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that an inter partes review is instituted in IPR2018-
`
`01577;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`00387 is granted, and LG Electronics, Inc. is joined as a petitioner in
`IPR2018-00387;
`
`FURTHER ORDERED that IPR2018-01577 is terminated under 37
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-00387;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-00387 remain unchanged;
`
`6
`
`
`
`IPR2018-01577
`Patent 7,653,508 B1
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`
`Order in place for IPR2018-00387 (Paper 9) remains unchanged;
`
`FURTHER ORDERED that in IPR2018-00387, the Apple Petitioner
`and LG will file each paper, except for a motion that does not involve the
`other party, as a single, consolidated filing, subject to the page limits set
`forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
`consolidated filing;
`
`FURTHER ORDERED that for any consolidated filing, if LG wishes
`to file an additional paper to address points of disagreement with the Apple
`Petitioner, LG must request authorization from the Board to file a motion for
`additional pages, and no additional paper may be filed unless the Board
`grants such a motion;
`
`FURTHER ORDERED that the Apple Petitioner and LG shall
`collectively designate attorneys to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
`by the Apple Petitioner and LG, within the timeframes set forth in 37 C.F.R.
`§ 42.53(c) or agreed to by the parties;
`
`FURTHER ORDERED that the Apple Petitioner and LG shall
`collectively designate attorneys to present at the oral hearing, if requested
`and scheduled, in a consolidated argument;
`
`FURTHER ORDERED that the case caption in IPR2018-00387 shall
`be changed to reflect joinder of LG Electronics, Inc. as a petitioner in
`accordance with the attached example; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-00387.
`
`
`7
`
`
`
`IPR2018-01577
`Patent 7,653,508 B1
`
`For PETITIONER:
`Anand K. Sharma
`Minjae Kang
`Joshua L. Goldberg
`Cory C. Bell
`Bradford C. Schulz
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`anand.sharma@finnegan.com
`minjae.kang@finnegan.com
`joshua.goldberg@finnegan.com
`cory.bell@finnegan.com
`bradford.schulz@finnegan.com
`PETITIONER IPR2018-00387
`Andrew S. Ehmke
`Michael S. Parsons
`Calmann J. Clements
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`calmann.clements.ipr@haynesboone.com
`
`
`For PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Sean Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`8
`
`
`
`IPR2018-01577
`Patent 7,653,508 B1
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-003874
`Patent 7,653,508 B1
`____________
`
`
`
`
`
`4 LG Electronics, Inc., who filed a Petition in IPR2018-01577, has been
`joined as a petitioner in this proceeding.
`
`9
`
`
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