`571-272-7822
`
`Paper 12
`Entered: September 7, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`
`____________
`
`IPR2018-00747 (Patent 7,535,890 B2)
`IPR2018-00748 (Patent 8,199,747 B2)
`
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Terminating Proceeding
`37 C.F.R. § 42.71(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00747 (Patent 7,535,890 B2)
`IPR2018-00748 (Patent 8,199,747 B2)
`
`
`
`
`
`In each of the captioned proceedings, Facebook, Inc. and WhatsApp, Inc.
`(“Petitioner”) filed a Petition and a Motion for Joinder under 35 U.S.C. § 315(c).
`IPR2018-00747, Papers 2, 3; IPR2018-00748, Papers 2, 3. Patent Owner filed a
`Preliminary Response. IPR2018-00747, Paper 8; IPR2018-00748, Paper 8. In
`each case, Petitioner seeks to join ongoing inter partes reviews (i.e., IPR2017-
`01802 and IPR2017-01799, respectively) by challenging the unpatentability of less
`than all the claims currently on trial in those inter partes reviews.
`In view of SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) and the
`Board’s guidance on the impact of SAS on AIA trial proceedings,1 we held a
`conference call with the parties to discuss the unobtainability of joinder to an
`ongoing inter partes review by challenging less than all the claims in that inter
`partes review. See, e.g., 35 U.S.C. § 315(c) (giving Director discretion to “join as
`a party to that inter partes review any person who properly files a petition”
`(emphasis added)); SAS, 138 S. Ct. at 1355 (“[I]n an inter partes review the
`petitioner is master of its complaint.”). We gave Petitioner the opportunity to
`amend its joinder requests by challenging all the claims in the ongoing inter partes
`reviews. See IPR2018-00747, Paper 10; IPR2018-00748, Paper 10. Petitioner
`elected not to join the inter partes reviews and requested a dismissal of its
`petitions. Id. (citing Ex. 3001).
`Out of an abundance of caution, we issued an order in each case, instructing
`the parties to show cause why the Petitions should not be dismissed under
`37 U.S.C. § 42.71(a). Id.; see also Samsung Elecs. Co. v. NVIDIA Corp., Case
`IPR2015-01270 (PTAB Dec. 9, 2015) (Paper 11). Id. Having not heard from the
`
`
`1 https://www-cms.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial
`2
`
`
`
`
`
`
`IPR2018-00747 (Patent 7,535,890 B2)
`IPR2018-00748 (Patent 8,199,747 B2)
`
`
`parties by the given deadline to show cause, we hereby dismiss the Petitions and
`terminate the proceedings in accordance with § 42.71(a).
`ORDER
`It is hereby ORDERED that the Petitions filed in IPR2018-00747 and
`IPR2018-00748 are dismissed; and
`FURTHER ORDERED that these proceedings are terminated.
`
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Lisa Schwier
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`lschwier@cooley.com
`zpatdcdocketing@cooley.com
`
`
`
`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
`
`
`
`
`
`
`3
`
`
`
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