Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 13
`
`
` Entered: August 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,1
`Patent Owner.
`____________
`
`Case IPR2018-00580
`Patent 8,724,622 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder
`35 U.S.C. § 314(a); 37 C.F.R. § 42.122(b)
`
`
`
`
`
` 1
`
` Uniloc Luxembourg S.A., formerly identified as Patent Owner, filed an
`Updated Mandatory Notice pursuant to 37 C.F.R. § 42.8(a)(2) on August 9,
`2018, stating that Uniloc 2017 LLC is now the Patent Owner. Paper 12.
`The caption has been updated accordingly.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 13
`
`
` Entered: August 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,1
`Patent Owner.
`____________
`
`Case IPR2018-00580
`Patent 8,724,622 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder
`35 U.S.C. § 314(a); 37 C.F.R. § 42.122(b)
`
`
`
`
`
` 1
`
` Uniloc Luxembourg S.A., formerly identified as Patent Owner, filed an
`Updated Mandatory Notice pursuant to 37 C.F.R. § 42.8(a)(2) on August 9,
`2018, stating that Uniloc 2017 LLC is now the Patent Owner. Paper 12.
`The caption has been updated accordingly.
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`
`I.
`INTRODUCTION
`Apple Inc. (“Apple” or “Petitioner”) filed a Petition requesting inter
`partes review of claims 4, 5, 12, and 24–26 of U.S. Patent No. 8,724,622 B2
`(Ex. 1101, “the ’622 patent”). Paper 3 (“Pet.”). Petitioner also filed a
`Motion for Joinder, seeking joinder as a petitioner in Facebook, Inc. v.
`Uniloc Luxembourg S.A., Case No. IPR2017-01668 (“the 1668 IPR”).
`Paper 2 (“Mot.”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a
`Preliminary Response (Paper 11, “Prelim. Resp.”), as well as an Objection to
`Petitioner’s Motion for Joinder (Paper 8, “Obj.”).
`We have authority under 35 U.S.C. § 314. Upon considering the
`information presented in the parties’ papers, for reasons discussed below, we
`institute inter partes review of claims 4, 5, 12, and 24–26 of the ’622 patent
`and grant Petitioner’s Motion for Joinder.
`
`II. DISCUSSION
`
`A. Related Matters
`The parties indicate that the ’622 patent is involved in Uniloc USA,
`Inc. v. Apple Inc., No. 2:16-cv-00638-JRG (E.D. Tex.), among numerous
`other actions in the United States District Court for the Eastern District of
`Texas. Pet. 34; Paper 6, 3.
`The ’622 patent also has been the subject of petitions for inter partes
`review in Cases IPR2017-00223, IPR2017-00224, IPR2017-01804, and
`IPR2017-01805 (filed by Apple Inc.), all of which were denied; Cases
`IPR2017-01667 and IPR2017-01668 (filed by Facebook, Inc. and WhatsApp
`Inc.), in which we instituted inter partes review on January 19, 2018; Cases
`IPR2017-01797 and IPR2017-01798 (filed by Samsung Electronics
`
`2
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`America, Inc.), in which we instituted inter partes review on February 6,
`2018; Cases IPR2017-02080 and IPR2017-02081 (filed by Google, Inc.),
`which we denied; and Case IPR2017-02090 (filed by LG Electronics, Inc.
`and Huawei Device Co., Ltd.), in which we instituted inter partes review on
`March 6, 2018, and granted a motion to join LG and Huawei as petitioners
`in IPR2017-01667. In addition, concurrently with the filing of the instant
`Petition, Petitioner filed a petition requesting inter partes review of claims 3,
`6–8, 10, 11, 13–23, 27–35, 38, and 39 of the ’622 patent (Case
`IPR2018-00579) along with a motion for joinder with IPR2017-01667.
`
`B. The ’622 Patent
`The ’622 patent, titled “System and Method for Instant VoIP
`Messaging,” relates to Internet telephony, and more particularly, to instant
`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
`Ex. 1101, [54], 1:18–22. The ’622 patent acknowledges that “[v]oice
`messaging” and “instant text messaging” in both the VoIP and public
`switched telephone network environments were previously known. Id.
`at 2:22–46. In prior art instant text messaging systems, according to the
`’622 patent, a server would present a user of a client terminal with a “list of
`persons who are currently ‘online’ and ready to receive text messages,” the
`user would “select one or more” recipients and type the message, and the
`server would immediately send the message to the respective client
`terminals. Id. at 2:34–46. According to the ’622 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 1:18–22, 2:47–
`59, 6:47–49.
`
`3
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`
`In one embodiment, the ’622 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Ex. 1101,
`6:22–24.
`
`
`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 6:50–7:2; see id. at 7:23–24, 7:61–65. Local IVM server 202 enables
`instant voice messaging functionality over network 204. Id. at 7:61–65.
`In “record mode,” IVM client 208 “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. Ex. 1101, 7:57–59, 7:65–8:4. IVM
`
`4
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`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 8:4–11.
`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. Ex. 1101, 8:1529. “[O]nly the
`available IVM recipients, currently connected to . . . IVM server 202, will
`receive the instant voice message.” Id. at 8:3334. 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 8:34–39; see id. at 9:17–21. Upon receiving the
`instant voice message, the recipients can audibly play the message. Id.
`at 8:29–32.
`
`C. Illustrative Claims
`Of the challenged claims, only claim 24 is independent. Challenged
`claims 25 and 26 depend directly from claim 24, and the remaining
`challenged claims depend directly or indirectly from independent claim 3,
`which is not challenged in the instant proceeding. Unchallenged claim 3 and
`challenged claims 4 and 24 are illustrative and are reproduced below.
`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`
`5
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
`4. The system according to claim 3, wherein the instant voice
`message includes an action field identifying one of a predetermined
`set of permitted actions requested by the user.
`24. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives connection object
`messages from the plurality of instant voice message client
`systems, wherein each of the connection object messages
`includes data representing a state of a logical connection
`with a given one of the plurality of instant voice message
`client systems.
`Ex. 1101, 24:12–30, 25:59–26:8.
`
`III. INSTITUTION OF INTER PARTES REVIEW
`On January 19, 2018, we instituted inter partes review in the 1668 IPR
`based on the following prior art and grounds of unpatentability
`(IPR2017-01668 IPR, slip op. at 29 (PTAB Jan. 19, 2018) (Paper 8)):
`
`6
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`
`Challenged Claim(s)
`
`4, 5, 24–26
`
`12
`
`References
`Basis
`§ 103(a) Zydney,2 Shinder,3 and
`Hethmon4
`§ 103(a) Zydney, Shinder, Microsoft,5
`and Moghe6
`
`The Petition in this proceeding asserts the same grounds as those on
`which we instituted an inter partes review in the 1668 IPR. Pet. 66; see also
`Mot. 1. Petitioner asserts that the Petition relies on the same arguments and
`evidentiary record as in the 1668 IPR, including a Declaration of Tal Lavian,
`Ph.D., filed as Exhibit 1102 (“Lavian Declaration”), previously filed in the
`1668 IPR. Pet. 66; Mot. 1, 4.
`Patent Owner’s instant Preliminary Response differs substantively
`from its preliminary response filed in the 1668 IPR in several regards: First,
`as in its Objection to Petitioner’s Motion for Joinder, Patent Owner points
`out that the Board previously denied institution of another petition that also
`challenged claims of the ’622 patent based on the Zydney reference at issue
`here. Prelim. Resp. 1 (citing IPR2017-02080). Second, Patent Owner adds
`several new arguments as to why it alleges Zydney does not disclose or
`
`
` 2
`
` Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (filed with line
`numbers added by Petitioner as Exhibit 1103).
`3 Excerpts from Debra Littlejohn Shinder, Computer Networking Essentials
`(2002) (Ex. 1114).
`4 Excerpts from Paul S. Hethmon, Illustrated Guide to HTTP (1997)
`(Ex. 1109).
`5 Excerpts from Microsoft Press Computer Dictionary (1991) (Ex. 1118).
`6 Moghe, US 6,173,323 B1, issued Jan. 9, 2001 (Ex. 1119).
`
`7
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`suggest “wherein the instant voice message includes an object field
`including a digitized audio file,” as recited in independent claim 3 and
`Hethmon teaches away from “the instant voice message includ[ing] an
`action field identifying one of a predetermined set of permitted actions
`requested by the user,” as recited in challenged claims 4 and 5. Prelim.
`Resp. 9–16, 19–20.
`We have considered Patent Owner’s newly presented arguments, but
`conclude that they do not compel denial of the Petition under the
`circumstances presented here, where the instant Petition is essentially
`identical to that in the 1668 IPR already instituted, and Petitioner seeks
`joinder as a party to that proceeding. In view of the identicalness of the
`issues in the instant Petition and the petition in the 1668 IPR and the
`already-considered arguments from Patent Owner made in the 1668 IPR, we
`determine that this proceeding warrants institution on the grounds presented
`in the Petition for the same reasons stated in our Decision on Institution in
`the 1668 IPR.
`
`IV. GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`§ 315(c):
`(c) JOINDER.—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
`parties review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`8
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`application-process/appealing-patent-decisions/trials/patent-review-
`processing-system-prps-0.
`We find Petitioner timely filed its motion for joinder concurrently
`with the Petition and not later than one month after institution of the
`1668 IPR, in accordance with 35 U.S.C. § 315(c). We also find that
`Petitioner has met its burden of showing that joinder is appropriate. For the
`challenged claims, the Petition here is substantively identical to the petition
`in the 1668 IPR. The substantive evidence also is identical, including
`reliance on essentially the same Lavian Declaration.7
`Petitioner further has shown that the trial schedule will not be affected
`by joinder. Mot. 5. No changes in the schedule are anticipated or necessary,
`and the limited participation, if at all, of Petitioner will not impact the
`timeline of the ongoing trial.
`In its Objection to Petitioner’s Motion for Joinder, Patent Owner
`contends that the discretionary institution factors set forth in the Board’s
`decision in Blue Coat Systems LLC v. Finjan, Inc., IPR2016-01443 (PTAB
`
`
`
` 7
`
` Petitioner provided, as Exhibit 1121, a “redlined” version of the Lavian
`Declaration, showing differences between the version filed as Exhibit 1102
`and the version filed in the 1668 IPR. Pet. vii. Apart from edits to the case
`caption and page headers, changing the names of the parties where
`applicable, and replacing “Petitioners” in several instances with “Petitioner,”
`there do not appear to be any differences. See, e.g., Ex. 1121, 1, 15, 108.
`9
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`Jan. 23, 2017) (Paper 13) and later precedential decision in General Plastic
`Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6,
`2017) (Paper 19) “weigh heavily against institution and, therefore, joinder.”
`Obj. 1, 6–11. Patent Owner points out that Petitioner has now filed six
`petitions against claims of the ’622 patent, including, inter alia, a petition in
`IPR2017-01805 that relied on the same references as the instant Petition. Id.
`at 1, 5. Patent Owner contends that the Board already agreed in
`IPR2017-01804 that the Blue Coat Systems/General Plastic factors weigh
`against institution, and further contends that “Petitioner should not be able to
`use joinder as an end run around principles designed to prevent abuse of IPR
`proceedings.” Id. at 6.
`We have considered Patent Owner’s arguments but disagree that the
`Blue Coat Systems/General Plastic factors compel denial under the present
`circumstances. Whereas Patent Owner correctly points out that we exercised
`discretion to deny Petitioner’s petition in IPR2017-01804 based, in part, on
`those factors, and we similarly denied the petition in IPR2017-01805,
`essentially identical to the instant Petition, the petition in IPR2017-01805
`was, critically, not accompanied by a motion for joinder. Here, in contrast,
`the Petition is accompanied by a timely filed Motion for Joinder in which
`Petitioner affirmatively agrees to assume a “passive understudy role” and to
`adhere to the existing schedule in the 1668 IPR (see Mot. 6–7), effectively
`neutralizing the General Plastic factors. For example, joinder of Petitioner
`to the 1668 IPR will not put a significant additional burden on the Board or
`jeopardize the Board’s ability to issue a final written decision in the
`1668 IPR, and this is not a case in which a petitioner has used prior
`preliminary responses or decisions of the Board to tailor its substantive
`
`10
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`arguments. We also decline, under the particular circumstances presented,
`to hold against Petitioner the time elapsed between the filing of its petition in
`IPR2017-01805 and the filing of the essentially identical instant Petition,
`where we denied that earlier petition expressly “without prejudice to
`Petitioner’s ability to file a new petition accompanied by a request for
`joinder pursuant to and within the time period permitted by 37 C.F.R.
`§ 42.122(b)” (IPR2017-01805, slip op. 6–7 (Jan. 19, 2018) (Paper 9)), as
`Petitioner has done here. As we explained in our decision granting Huawei
`and LG’s petition and motion for joinder to co-pending IPR2017-01667 in
`IPR2017-02090, “joined cases avoid the multiplicity that Patent Owner
`criticizes.” IPR2017-02090, slip op. at 9 (PTAB Mar. 6, 2018) (Paper 9).
`Going forward, Petitioner shall adhere to the existing schedule of the
`1668 IPR and the “passive understudy role” it has agreed to assume.
`Mot. 6–7. More specifically, so long as any current petitioner in the
`1668 IPR (i.e., Facebook and WhatsApp) is a party to the 1668 IPR, all
`filings of Petitioner in the 1668 IPR shall be consolidated with the filings of
`the current 1668 IPR petitioners. The page limits set forth in 37 C.F.R.
`§ 42.24 will apply to all consolidated filings.
`Petitioner shall be bound by any discovery agreements between Patent
`Owner and the current petitioners in the 1668 IPR and shall not seek any
`additional discovery. Patent Owner shall not be required to provide any
`additional discovery or deposition time as a result of joinder. In addition, all
`petitioners in the 1668 IPR shall collectively designate attorneys to present
`at the oral hearing, currently scheduled for August 30, 2018 (see
`IPR2017-01668, Paper 28), in a consolidated argument.
`
`11
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`
`The Board expects Petitioner to attempt to resolve any disputes among
`the entities involved and to contact the Board only if such matters cannot be
`resolved. This arrangement promotes the just and efficient administration of
`the ongoing trial and the interests of Petitioner and Patent Owner.
`
`V. ORDER
`In view of the foregoing, it is
`ORDERED that an inter partes review is instituted as to claims 4, 5,
`12, and 24–26 of the ’622 patent on the following grounds:
`(1) Claims 4, 5, and 24–26 under 35 U.S.C. § 103(a) as unpatentable
`over Zydney, Shinder, and Hethmon, and
`(2) Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Zydney,
`Shinder, Microsoft, and Moghe;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-01668 is granted, and Apple is hereby joined as a petitioner in
`IPR2017-01668;
`FURTHER ORDERED that IPR2018-00580 is terminated under
`37 C.F.R. § 42.72 and all future filings are to be made only in
`IPR2017-01668;
`FURTHER ORDERED that the grounds on which inter partes review
`was instituted in Case IPR2017-01668 remain unchanged, and no other
`grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Petitioner here (i.e., Apple) will be bound
`in IPR2017-01668 by all substantive and procedural filings and
`representations of current Petitioner in IPR2017-01668 (i.e., Facebook and
`WhatsApp), without a separate opportunity to be heard, whether orally or in
`
`12
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`writing, unless and until the proceeding is terminated with respect to each of
`Facebook and WhatsApp;
`FURTHER ORDERED that Petitioner here is bound by any discovery
`agreements between Patent Owner and the current Petitioner in
`IPR2017-01668, and that Petitioner here shall not seek any additional
`discovery;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-01668 shall remain in effect and govern the proceeding, subject to
`any schedule changes authorized by the Board in IPR2017-01668 pursuant
`to the Scheduling Order;
`FURTHER ORDERED that the Petitioner entities in IPR2017-01668
`shall collectively designate attorneys to present at the oral hearing in a
`consolidated argument;
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2017-01668; and
`FURTHER ORDERED that the case caption in IPR2017-01668, from
`now on, shall reflect joinder of Apple as a party, in accordance with the
`attached example.
`
`
`
`
`13
`
`
`
`IPR2018-00580
`Patent 8,724,622 B2
`
`FOR PETITIONER:
`
`Jason D. Eisenberg
`Michael D. Specht
`Trent W. Merrell
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`tmerrell-PTAB@skgf.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 D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`
`14
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-016688
`Patent 8,724,622 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 8
`
` Apple Inc., which filed a petition in Case IPR2018-00580, has been joined
`as a petitioner in this proceeding.
`
`
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