Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 9
`Entered: February 27, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-01589
`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)
`
`Granting-in-Part Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 9
`Entered: February 27, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-01589
`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)
`
`Granting-in-Part Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`
`I. INTRODUCTION
`
`A. Background
`HTC Corporation and HTC America, Inc. (“Petitioner” or “HTC”)
`
`filed a Petition for inter partes review of claims 1–4, 6–8, 11–16, 19, and 20
`of U.S. Patent No. 7,653,508 B1 (Ex. 1001, “the ’508 patent”). Paper 1
`(“Pet.”), 1. Concurrently with its petition, HTC filed a Motion for Joinder
`with Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-00387 (“the Apple
`IPR”). Paper 3 (“Motion” or “Mot.”). Uniloc 2017 LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`
`For the reasons explained below, we institute an inter partes review of
`claims 14, 68, 1116, 19, and 20 of the ’508 patent, and grant-in-part and
`deny-in-part 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 HTC Corporation and HTC
`America, 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 6, 2.
`
`2
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`
`C. Related Matters
`The parties indicate that the ’508 patent is involved in Uniloc USA,
`
`Inc. v. HTC Am., Inc., Case No. 2-17-cv-01629 (W.D. Wash) and other
`proceedings. Pet. 2; Prelim. Resp. 3–4.
`
`In the Apple IPR, we instituted an inter partes review of claims 14,
`68, 1116, 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 substantially the same grounds
`
`of unpatentability as the one on which we instituted review in the Apple
`IPR. Compare Pet. 24–72, with Apple Dec. 6, 27. Indeed, Petitioner
`contends that the Petition asserts only the grounds that the Board instituted
`in the Apple IPR, and the Petitioner relies on the same exhibits and expert
`declaration as in the Apple IPR. Mot. 6–12. We note that in this Petition,
`
`
`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
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`Petitioner also asserts a challenge to claim 20, which is further discussed
`below.
`
`We acknowledge Patent Owner’s arguments and evidence supporting
`its position that the claims would not have been obvious. Prelim. Resp. 12–
`33. 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. 12–33, with Apple IPR PO Resp.
`(IPR2018-00387, Paper 11), 11–30). Those common arguments will be
`fully considered in the Apple IPR with the benefit of a complete record.
`
`Regarding claim 20, Petitioner relies on its analysis of claim 3, and
`Patent Owner relies on its arguments regarding claim 6. See Pet. 72–73;
`Prelim. Resp. 31. Patent Owner also argues that the challenge to claim 20 is
`conclusory, asserting that “Petitioner may not rely on conclusory testimony
`of a declarant as to what would have been common knowledge at the time.”
`Prelim Resp. 31–32. This argument is unpersuasive because neither
`Petitioner nor Petitioner’s declarant present an argument based on “common
`knowledge.” Rather, as discussed below, Petitioner relies on prior
`arguments regarding claim 3. See Pet. 72–73.
`
`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
`grounds asserted in the Petition, including the same grounds instituted in
`IPR2018–00387.
`
`4
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`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.
`32–33. “Patent Owner . . . adopts this constitutional challenge . . . to ensure
`the issue is preserved pending the appeal.” Id. at 33.
`
`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
`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 5. 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
`
`5
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`
`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).
`
`1. Claims 1–4, 6–8, 11–16, and 19
`Regarding claims 1–4, 6–8, 11–16, and 19, the Petition in this case
`
`asserts the same unpatentability grounds on which we instituted review in
`the Apple IPR. See Mot. 6. HTC 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 petition filed by the Apple Petitioner with
`respect to the grounds on which review was instituted in the Apple IPR. See
`id. Thus, with respect to these claims, this inter partes review does not
`present any ground or matter not already at issue in the Apple IPR.
`
`If joinder is granted, HTC anticipates participating in the proceeding
`in a limited capacity absent termination of Apple Petitioner as a party. Id. at
`8–9. HTC agrees to “[a]ssume a second-chair role as long as the Apple
`Petitioner remains in the proceeding.” Id. at 9. HTC 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 10.
`
`We agree with Petitioner that, with respect to the claims already at
`issue in the Apple IPR, joinder with the Apple IPR is appropriate under the
`
`6
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`circumstances. Accordingly, we grant-in-part Petitioner’s Motion for
`Joinder regarding claims 1–4, 6–8, 11–16, and 19.
`
`2. Claim 20
`Although the Board routinely grants motions for joinder where the
`
`asserted grounds of unpatentability, and supporting arguments and evidence,
`are the same as in the preceding case, the Motion here seeks to add to the
`Apple IPR a challenge to an additional claim (claim 20) that was not
`previously challenged in the Apple IPR.4 HTC argues, however, that there is
`“substantial similarity between claim 20 and claims 3 and 13,” which were
`previously challenged in the Apple IPR, and, thus, alleges that it “do[es] not
`seek to introduce new grounds or arguments,” given that HTC relies on
`essentially the same arguments and evidence as in the Apple IPR. Mot. 6.
`According to HTC, “the difference between the claim language in claims 3,
`13, and 20 is ‘sufficiently minor such that it would not unduly burden
`[Uniloc] to analyze and address it’” in the Apple IPR. Id. at 11. Further,
`HTC asserts that Patent Owner will not be unduly prejudiced because “[t]he
`Petition raises issues already before the Board and long known to the Patent
`Owner” and “Patent Owner will bear the same burden to defend claims 3
`and 13 as it will defending claim 20.” Id. at 11–12.
`
`
`4 We note that the issue of joining new issues to an existing proceeding is
`currently under review by the PTAB Precedential Opinion Panel. See
`Proppant Express Inv., LLC v. Oren Techs., LLC, IPR2018-00914, Paper 24.
`
`7
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`Patent Owner disputes HTC’s characterization of newly challenged
`
`claim 20, stating that “claim 20 does not have substantially similar
`limitations as dependent claims 3 and 13.” Prelim. Resp. 1.5
`
`Claim 20 depends from claim 19 (which was challenged in the Apple
`IPR) and further requires “wherein the cadence logic adjusts the cadence
`windows based on a measured cadence associated with the periodic human
`motion.” Ex. 1001, 16:54–56. Claim 3 recites, in relevant portion,
`“maintaining a cadence window, wherein the cadence window is
`continuously updated as an actual cadence changes.” Id. at 15:23–25. We
`agree that the language of these claims is similar, as both claims require
`adjusting/updating the cadence window based on a measured/actual cadence.
`HTC relies on arguments made with respect to claims 3 and 19 in the Apple
`Petition in arguing that claim 20 is unpatentable over Pasolini and Fabio.
`Pet. 72–73 (citing Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-00387,
`Paper 2 (“Apple Petition”), 94–95).
`
`Although Patent Owner argues that “claim 20 does not have
`substantially similar limitations as dependent claim[] 3” (Prelim. Resp. 1),
`Patent Owner does not identify any substantial differences between the
`claims. Instead, Patent Owner merely states that the Petition relies on
`conclusory allegations. Id. at 1–2, 31–32. Notably, in arguing against the
`unpatentability of claim 20, Patent Owner relies on its arguments made
`regarding claim 6. Id. at 31–32.
`
`We agree that the differences between claim 20 and claim 3 do not
`seem substantial. However, the claim language differs between these
`
`
`5 We note that Patent Owner did not file an opposition to Petitioner’s Motion
`for Joinder.
`
`8
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`claims, indicating that there is a presumption the claims are of different
`scope. See Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–
`72 (Fed. Cir. 1999) (discussing “the common sense notion that different
`words or phrases used in separate claims are presumed to indicate that the
`claims have different meanings and scope”). Thus, Patent Owner must be
`provided a fair opportunity to respond to the contentions of Petitioner and
`Petitioner’s declarant, including the opportunity to depose Petitioner’s
`declarant or otherwise seek discovery from Petitioner.
`
`Petitioner acknowledges that a motion for joinder should explain what
`impact joinder would have on the trial schedule for the existing review, and
`address specifically how briefing and discovery may be simplified. Mot. 5–
`6. Petitioner asserts that “[j]oinder will simplify briefing and discovery” (id.
`at 9) and “joinder would not adversely impact the trial schedule” (id. at 10).
`
`We do not agree with Petitioner’s conclusory statements regarding the
`impact joinder of claim 20 would have on the schedule of the Apple IPR. In
`that case, Patent Owner filed its Response on October 11, 2018, and Apple
`filed its Reply on January 2, 2019. Thus, there is no opportunity for Patent
`Owner to analyze and address claim 20 in the existing schedule of the Apple
`IPR. Nor is it likely there is sufficient time remaining in the Apple IPR
`schedule to allow discovery and briefing regarding claim 20 were it to be
`added to the Apple IPR.
`
`Due to the advanced state of the Apple IPR, and for the reasons
`discussed above, we deny-in-part Petitioner’s Motion for Joinder regarding
`claim 20. Instead, Petitioner’s challenge to claim 20 will proceed in the
`instant inter partes review.
`
`9
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`
`IV. CONCLUSION
`For the foregoing reasons, we determine that the information
`
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that at least one of claims 1–4, 6–8, 11–16, 19, and 20 of the ’508
`patent is unpatentable. At this preliminary stage, we have not made a final
`determination with respect to the patentability of the challenged claims or
`any underlying factual and legal issues.
`
`Given that Petitioner is being joined as a party to the Apple IPR and
`that “Petitioner[] agree[s] to proceed on the grounds, evidence, and
`arguments advanced, or that will be advanced, in the Apple IPR as
`instituted,” Petitioner is bound by the ultimate determination made in the
`Apple IPR regarding claims 1–4, 6–8, 11–16, and 19. See 35 U.S.C.
`§§ 315(e)(1), 325(d); 37 C.F.R. § 42.73(d)(1). Accordingly, Petitioner shall
`not advance any arguments regarding these claims in this proceeding; all
`grounds raised by Petitioner regarding these claims will be addressed in the
`Apple IPR. The parties are limited to advancing arguments regarding claim
`20 in this proceeding.
`
`V. ORDER
`
`Accordingly, it is:
`
`ORDERED that an inter partes review is instituted in IPR2018-
`
`01589;
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`commences on the entry date of this decision.
`
`10
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`FURTHER ORDERED that the parties are limited to advancing
`
`arguments regarding claim 20 in this proceeding;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`00387 is granted-in-part regarding claims 1–4, 6–8, 11–16, and 19, and
`HTC Corporation and HTC America, Inc. are joined as a petitioner in
`IPR2018-00387;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`00387 is denied-in-part regarding claim 20;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-00387 remain unchanged;
`
`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 HTC 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 in IPR2018-
`00387, if HTC wishes to file an additional paper to address points of
`disagreement with the Apple Petitioner, HTC 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 in IPR2018-00387 the Apple Petitioner
`and HTC shall collectively designate attorneys to conduct the cross-
`examination of any witness produced by Patent Owner and the redirect of
`
`11
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`any witness produced by the Apple Petitioner and HTC, within the
`timeframes set forth in 37 C.F.R. § 42.53(c) or agreed to by the parties;
`
`FURTHER ORDERED that in IPR2018-00387 the Apple Petitioner
`and HTC 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 HTC Corporation and HTC America, 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.
`
`12
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`For PETITIONER:
`Todd E. Landis
`Mario A. Apreotesi
`Jeffrey R. Swigart
`VINSON & ELKINS LLP
`tlandis@velaw.com
`mapreotesi@velaw.com
`jswigart@velaw.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
`
`
`
`
`13
`
`
`
`IPR2018-01589
`Patent 7,653,508 B1
`
`
`EXAMPLE CAPTION
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., LG ELECTRONICS, INC., HTC CORPORATION, and
`HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR 2018-003876
`Patent 7,653,508 B1
`____________
`
`
`
`
`
`6 LG Electronics, Inc., who filed a Petition in IPR2018-01577, and HTC
`Corporation and HTC America, Inc., who collectively filed a Petition in
`IPR2018-01589, have been joined as a petitioner in this proceeding.
`
`14
`
`
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