Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Date: January 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., HTC CORPORATION, and HTC
`AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-01458
`Patent 8,712,723 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, 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
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Date: January 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., HTC CORPORATION, and HTC
`AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-01458
`Patent 8,712,723 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, 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
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`
`I. INTRODUCTION
`
`A. Background
`LG Electronics, Inc., HTC Corporation, and HTC America, Inc.
`
`(collectively “Petitioner”) filed a Petition for inter partes review of claims
`1−3, 5−7, and 10−18 of U.S. Patent No. 8,712,723 B1 (Ex. 1001, “the ’723
`patent”). Paper 1 (“Pet.”), 1. Concurrently with its petition, Petitioner filed
`a Motion for Joinder with Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-
`00389 (“the Apple IPR”). Paper 4 (“Motion” or “Mot.”). Petitioner
`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 8 (“Prelim. Resp.”). Patent Owner
`acknowledges the joinder request, but does not state whether it opposes
`joinder. Id. at 1 n.1.
`
`For the reasons explained below, we institute an inter partes review of
`claims 1−3, 5−7, and 10−18 of the ’723 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., LG Electronics MobileComm USA, Inc., HTC
`Corporation, and HTC America, Inc. as the real parties-in-interest. Pet. 2.
`
`2
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`Patent Owner states that its real parties-in-interest are Uniloc 2017 LLC,
`Uniloc USA, Inc., and Uniloc Licensing USA LLC. Paper 7, 2.
`
`C. Related Matters
`The parties indicate that the ’723 patent is involved in Uniloc USA,
`
`Inc. v. HTC Am., Inc., Case No. 2-17-cv-01629 (W.D. Wash), Uniloc USA,
`Inc. v. LG Elecs. USA, Inc., Case No. 4:18-cv-02918 (N.D. Cal.), and other
`proceedings. Pet. 2; Prelim. Resp. 3.
`
`In the Apple IPR, we instituted an inter partes review of claims 1–3,
`5–7, and 10–18 of the ’723 patent on the following ground:
`References
`Basis1
`Challenged Claims
`Fabio2 and Pasolini3
`35 U.S.C. § 103(a)
`1–3, 5–7, and 10–18
`
`Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-00389, slip. op. at 6, 24
`(PTAB June 27, 2018) (Paper 7) (“Apple Decision” or “Apple Dec.”).
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same ground of
`
`unpatentability as the one on which we instituted review in the Apple IPR.
`Compare Pet. 28–68, with Apple Dec. 6, 25. Indeed, Petitioner contends
`that the Petition asserts only the ground that the Board instituted in the
`Apple IPR, there are no new arguments for the Board to consider, and the
`
`
`1 The ’723 patent was filed on January 31, 2011, prior to the date when the
`Leahy-Smith America Invents Act (“AIA”) took effect.
`2 US 7,698,097 B2 (filed Oct. 2, 2006, issued Apr. 13, 2010) (Ex. 1006,
`“Fabio”).
`3 US 7,463,997 B2 (filed Oct. 2, 2006, issued Dec. 9, 2008) (Ex. 1005,
`“Pasolini”).
`
`3
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`Petitioner relies on the same exhibits and expert declaration as in the Apple
`IPR. Mot. 6–8.
`
`We acknowledge Patent Owner’s arguments and evidence supporting
`its position that the claims would not have been obvious. Prelim. Resp. 14–
`31. 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. 14–31, with Apple IPR PO Resp.
`(IPR2018-00389, Paper 11), 9–25). Patent Owner’s arguments and evidence
`will be fully considered in the Apple IPR. Doing so ensures that we review
`Patent Owner’s arguments and evidence in light of a full record, avoids
`premature evaluation of arguments and evidence at issue in the Apple IPR,
`and ensures consistency across proceedings involving the same petitions. In
`sum, 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 the
`Apple IPR.
`
`Additionally, Patent Owner notes that an argument made in an
`unrelated 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. at 30–31.
`
`The Board has previously “declin[ed] to consider [the] constitutional
`challenge as, generally, ‘administrative agencies do not have jurisdiction to
`
`4
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`decide the constitutionality of congressional enactments.’” Square, Inc.
`Unwired Planet LLC, IPR2014-01165, slip op. at 25 (PTAB Oct. 30, 2015)
`(Paper 32) (quoting Riggin v. Office of Senate Fair Emp’t 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 July 27, 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., June 27, 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).
`
`5
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`As noted, the Petition in this case asserts the same unpatentability
`
`ground on which we instituted review in the Apple IPR. See Mot. 6.
`Petitioner 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
`ground 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, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of Apple Petitioner as a
`party. Id. at 6–7. Petitioner agrees to “[a]ssume a second-chair role as long
`as the Apple Petitioner remains in the proceeding.” Id. at 7. Petitioner
`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-
`
`01458;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`00389 is granted, and LG Electronics, Inc., HTC Corporation, and HTC
`America, Inc. are joined as a petitioner in IPR2018-00389;
`
`6
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`FURTHER ORDERED that IPR2018-01458 is terminated under 37
`
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-00389;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-00389 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2018-00389 (Paper 8) remains unchanged;
`
`FURTHER ORDERED that in IPR2018-00389, the Apple Petitioner
`and Petitioner 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 Petitioner
`wishes to file an additional paper to address points of disagreement with the
`Apple Petitioner, Petitioner 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 Petitioner 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 Petitioner, 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 Petitioner 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 IPR2018-00389 shall
`be changed to reflect joinder of LG Electronics, Inc., HTC Corporation, and
`
`7
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`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 IPR2018-00389.
`
`8
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`For PETITIONER (IPR2018-01458):
`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
`
`Todd E. Landis
`Mario A. Apreotesi
`VINSON & ELKINS LLP
`tlandis@velaw.com
`mapreotesi@velaw.com
`
`For PETITIONER (IPR2018-00389):
`
`Andrew Ehmke
`Michael Parsons
`HAYNES AND BOONE LLP
`Andy.ehmke.ipr@haynesboone.com
`Michael.parsons.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
`Sean.burdick@unilocusa.com
`
`
`
`9
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Date: January 25, 2019
`
`
`
`
`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 IPR2018-003894
`Patent 8,712,723 B1
`____________
`
`
`
`4 LG Electronics, Inc., HTC Corporation, and HTC America, Inc., who filed
`a Petition in IPR2018-01458, have been joined as a petitioner in this
`proceeding.
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
