UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`_________________
`
`IPR2019-00744
`Patent 7,167,487
`_________________
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`_________________
`
`IPR2019-00744
`Patent 7,167,487
`_________________
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`TABLE OF CONTENTS
`
`B.
`
`2.
`
`3.
`
`Page
`LIST OF EXHIBITS ................................................................................................ iii
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`LITIGATION HISTORY AND OTHER BACKGROUND .......................... 3
`III. THE BOARD SHOULD GRANT JOINDER FOR SEVERAL REASONS . 4
`A. Overlap In Issues Warrants Joinder, Even Though
`Microsoft Relies On An Additional Reference In Each Ground .......... 5
`The “New” Issues Presented By The Microsoft
`IPR Will Actually Aid In Resolution Of Disputed
`Issues In The Apple IPR, Thus Supporting Joinder .............................. 7
`1.
`The Prior Art Confirms The Relevance Of TS23.107 To
`Understanding The Claimed “minimum bit rate criteria” .......... 8
`The ’487 Patent Itself Confirms The Relevance Of TS23.107
`To Understanding The Claimed “minimum bit rate criteria” ..... 9
`As Explained By The Microsoft Petition,
`TS23.107 Integrates Cleanly With The Other
`References Relied Upon In The Apple IPR ................................ 9
`Joinder Should Not Impact The IPR Trial Schedule ........................... 10
`Joinder Is Appropriate Because Microsoft Agrees To Take A
`Largely “Understudy” Role, Simplifying Briefing And Discovery .... 10
`E. Microsoft’s Petition Is Not Time Barred And
`Itself Independently Establishes At Least A Reasonable
`Likelihood That The Challenged Claims Are Unpatentable ............... 12
`Joinder Would Not Unfairly Prejudice Patent Owner ........................ 16
`1.
`The Need For Joinder Arises From
`Uniloc’s Own District Court Litigation Conduct ..................... 18
`IV. CONCLUSION .............................................................................................. 19
`
`C.
`D.
`
`F.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Board Decisions
`Proppant Express Investments, LLC v. Oren Techs., LLC,
`IPR2018-00914 Paper 38 (PTAB Feb. 13, 2019) ...............................................12
`Rules
`35 U.S.C. § 311 ........................................................................................................12
`35 U.S.C. § 313 ........................................................................................................12
`35 U.S.C. § 314 ........................................................................................... 12, 16, 18
`35 U.S.C. § 315 ....................................................................................................1, 12
`35 U.S.C. § 316 .......................................................................................................... 4
`35 U.S.C. § 325 ........................................................................................................18
`Rules
`37 C.F.R. § 42.1 ......................................................................................................... 4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page ii
`
`
`
`LIST OF EXHIBITS
`
`No. Description
`
`1001 U.S. Patent No. 7,167,487 (“the ’487 Patent”)
`
`1002 File History of U.S. Patent No. 7,167,487
`
`1003 Declaration of Fabio Chiussi, PhD., signed and dated March 1, 2019
`(“Chiussi Decl.” or “Chiussi”)
`
`1004 Declaration of Friedhelm Rodermund, signed and dated February 27,
`2019 (“Rodermund Decl.” or “Rodermund”)
`
`1005 U.S. Patent No. 6,850,540 B1 to Peisa et al. (“Peisa”)
`
`1006 3GPP TS 23.107 V3.5.0 (2000-12), “3rd Generation Partnership
`Project; Technical Specification Group Services and System Aspects;
`QoS Concept and Architecture (Release 1999)” (“TS23.107”)
`
`1007 3GPP TS 25.302 V3.6.0 (2000-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network;
`Services provided by the physical layer (Release 1999)” (“TS25.302”)
`
`1008 3GPP TS 25.321 V3.6.0 (2000-12), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network; MAC
`protocol specification (Release 1999)” (“TS25.321”)
`
`1009 N/A
`
`1010 Mitsubishi Electric Telecom (Trium R&D), R2-010182 “Corrections
`to logical channel priorities in MAC protocol,” Change Request for
`3GPP TS 25.321 V3.6.0, 3GPP TSG-WG2 Meeting #18, Edinburgh,
`Scotland,
`17th-19th
`January
`2001,
`as
`available
`at
`http://www.3gpp.org/ftp/tsg_ran/WG2_RL2/TSGR2_18/Docs/Zips/
`(“R2-010182”)
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page iii
`
`
`
`1011 3GPP TS 25.301 V3.6.0 (2000-09), “3rd Generation Partnership
`Project; Technical Specification Group Radio Access Network, Radio
`Interface Protocol Architecture (Release 1999)” (“TS25.301”)
`
`1012 Kalliokulju, Quality of service management
`in 3rd
`functions
`generation mobile telecommunication, WCNC. 1999 IEEE Wireless
`Communications and Networking Conference, Vol. 3 (1999)
`(“Kalliokulju”)
`
`1013 Garg, et al., Integrated QoS Support in 3G UMTS Networks, 2000 IEEE
`Wireless Communications and Networking Conference. Conference
`Record, Vol. 3 (2000) (“Garg”)
`
`1014 U.S. Patent No. 7,433,334 B2 to Marjelund et al. (“Marjelund”)
`
`1015 Hyman, et al., Real-Time Scheduling with Quality of Service
`Constraints, IEEE Journal on Selected Areas in Communications, Vol.
`9 (1991) (“Hyman”)
`
`1016 Parekh, et al., A Generalized Processor Sharing Approach to Flow
`Control in Integrated Services Networks: The Single-Node Case,
`IEEE/ACM Transactions on Networking, Vol. 1, No. 3 (1993)
`(“Parekh”)
`
`1017 Rexford, et al., Hardware-Efficient Fair Queueing Architectures for
`High-Speed Networks, Proceedings of IEEE INFOCOM
`'96,
`Conference on Computer Communications (1996) (“Rexford”)
`
`1018 Stiliadis, et al., Design and Analysis of Frame-based Fair Queueing: A
`New Traffic Scheduling Algorithm for Packet-Switched Networks,
`ACM SIGMETRICS, Vol. 24 Issue 1 (1996) (“Stiliadis”)
`
`1019 Sachs, et al., Congestion Control in WCDMA with Respect to Different
`Service Classes, Proc. European Wireless ’99 and ITG Fachtagung
`Mobile Kommunikation, (1999) (“Sachs”)
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page iv
`
`
`
`1020 U.S. Patent No. 6,075,791 to Chiussi et al.
`
`1021 R. L. Cruz, Quality of Service Guarantees in Virtual Circuit Switched
`Networks, IEEE Journal Sel. Areas in Comm., Vol. 13, No. 6 (1995)
`(“Cruz”)
`
`1022 D. D. Clark et al., Supporting Real-Time Applications in an Integrated
`Services Packet Network: Architecture and Mechanism, ACM (1992)
`(“Clark”)
`
`1023 M. W. Garrett, A Service Architecture for ATM: From Applications to
`Scheduling, IEEE Network (1996) (“Garrett”)
`
`1024 List of Uniloc Asserted Patents, from Docket Navigator
`
`1025 List of IPRs involving Uniloc Patents, from Docket Navigator
`
`1026 Annotated timeline of cases and IPRs involving Uniloc patent USP
`8,724,622, from Docket Navigator with annotations added to provide
`case details and emphasis.
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page v
`
`
`
`IPR2019-00744
`Patent 7,167,487
`
`I.
`
`INTRODUCTION
`
`Petitioner Microsoft Corporation (“Microsoft”) hereby moves under
`
`35 U.S.C. § 315(c) to join IPR2019-00744 (“Microsoft IPR”), challenging claims 1-
`
`6 of U.S. Patent No. 7,167,487 (the “’487 patent”) with IPR2019-00222 (“Apple
`
`IPR”), which was instituted as to claims 1-6 of the ’487 patent on June 4, 2019.
`
`Microsoft timely files this motion within one month of institution of the Apple IPR.
`
`See IPR2019-00222, Paper 11 (PTAB June 4, 2019). Microsoft previously filed its
`
`petition on March 4, 2019, before Uniloc filed its Patent Owner Preliminary
`
`Response (“POPR”) to the Apple IPR.
`
`Joinder of the two proceedings would preserve Board and party resources
`
`because the patentability challenges presented by the Microsoft IPR overlap with,
`
`while augmenting in important ways, those presented by the Apple IPR. Specifically,
`
`both IPRs rely on largely the same references and combinations, with the Microsoft
`
`IPR relying on an additional reference, TS23.107 (EX-1006), for each ground.
`
`TS23.107 provides additional technical and implementation details that relate to the
`
`“minimum bit rate criteria” term that appears in each challenged claim. Microsoft
`
`expects this claim term to present important issues in each IPR, given that (i) the
`
`Examiner noted this term during prosecution and (ii) Uniloc focused on this term in
`
`its POPR in the Apple IPR. As explained in Section III.B below, the additional
`
`information and teachings of TS23.107 will help the Board understand and resolve
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 1
`
`
`
`IPR2019-00744
`Patent 7,167,487
`critical issues presented by Uniloc in the Apple IPR. Thus, rather than complicate
`
`the Apple IPR, consideration of issues surrounding TS23.107 will actually simplify
`
`that proceeding.
`
`In addition, joinder will not unduly burden Uniloc (indeed it will lessen any
`
`burden on Uniloc vs. independently proceeding on the two petitions) because of the
`
`overlap in issues and evidence. Uniloc already has had over three months to analyze
`
`Microsoft’s petition before filing a preliminary response to that petition on June 28,
`
`2019. Moreover, Microsoft agrees to defer to the arguments and evidence presented
`
`by the Apple IPR and its petitioners on all issues not implicating TS23.107. Joinder
`
`will reduce Uniloc’s burden, as it will not separately have to address those issues in
`
`the Microsoft IPR. For example, any deposition of Microsoft’s expert, Dr. Chiussi,
`
`can be limited to those issues surrounding TS23.107.
`
`Finally, there is no time bar at issue and this joinder motion is not driven by
`
`any previous Microsoft misstep or error. Rather, Microsoft seeks joinder in an
`
`attempt to efficiently resolve the disputes flowing from Uniloc’s temporally
`
`staggered, serial litigation campaign against many defendants. In this sense, Uniloc’s
`
`own conduct created the need for multiple IPRs on this patent, giving rise to this
`
`joinder motion. Thus, joinder imposes no unfair burden on Uniloc.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 2
`
`
`
`IPR2019-00744
`Patent 7,167,487
`The undersigned counsel for Microsoft reached out to counsel for the Apple
`
`IPR Petitioners1 and the Apple IPR Petitioners neither oppose nor agree to joinder.
`
`The undersigned counsel also reached out to counsel for Patent Owner Uniloc, but
`
`did not hear back on whether Uniloc would oppose or support this motion.
`
`II. LITIGATION HISTORY AND OTHER BACKGROUND
`
`In February and March 2018, Uniloc filed separate complaints in three
`
`different Texas courts, alleging infringement of the ’487 patent by each of the
`
`petitioners in the Apple IPR. Uniloc USA, Inc. v. Apple, Inc., Case No. 1:18-cv-
`
`00161 (W.D. Tex.); Uniloc USA, Inc. v. Samsung Electrs. Am., Inc., 2:18-cv-00044
`
`(E.D. Tex.); Uniloc USA Inc. v. LG Electrs. USA Inc., 3:18-cv-00561 (N.D. Tex.).
`
`Over five months later, on July 24, 2018, Uniloc filed a separate complaint in
`
`California, alleging infringement of the ’487 patent by Microsoft. Uniloc 2017 LLC
`
`et al. v Microsoft Corporation, Case No. 8:18-cv-01279 (C.D. Cal.). In August 2018,
`
`Uniloc unilaterally withdrew the ’487 patent from that Microsoft lawsuit without
`
`prejudice and without Microsoft’s consent. Later, in March 2019 (after Microsoft
`
`had filed the instant IPR petition), Uniloc again filed suit against Microsoft on
`
`
`1 The named petitioners in the Apple IPR are Apple Inc., LG Electronics Inc.,
`
`Samsung Electronics Co. Ltd., and Samsung Electronics America, Inc. Unless
`
`otherwise stated, reference to Apple is a reference to all petitioners in the Apple IPR.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 3
`
`
`
`IPR2019-00744
`Patent 7,167,487
`the ’487 patent. Uniloc 2017 LLC v. Microsoft Corporation, Case No. 8:19-cv-
`
`00428 (C.D. Cal.). Uniloc has asserted the ’487 patent against at least six other
`
`defendants, most recently in March 2019 against AT&T. See POPR (Paper 6),2 p.15.
`
`As discussed below in Section III.F.1, this temporally-staggered serial assertion is
`
`consistent with Uniloc’s larger divide-and-conquer litigation strategy.
`
`The Apple IPR petition was filed November 12, 2018, with trial instituted on
`
`June 4, 2019, on challenged claims 1-6.
`
`On March 4, 2019, prior to Uniloc’s POPR in the Apple IPR, Microsoft filed
`
`the present IPR, also challenging claims 1-6 of the ’487 patent. See Paper 2. On
`
`June 28, 2019, Uniloc filed its POPR to the Microsoft petition. See Paper 6.
`
`III. THE BOARD SHOULD GRANT JOINDER FOR SEVERAL REASONS
`Joinder is appropriate because it is the most expedient way to secure the just,
`
`speedy, and inexpensive resolution of the related proceedings. See 35 U.S.C.
`
`§ 316(b); 37 C.F.R. § 42.1(b). This IPR is similar in a number of respects to the
`
`Apple IPR, and thus joinder would avoid unnecessary multiplication of proceedings
`
`before the Board. Moreover, though technically “new,” prior art reference TS23.107
`
`would actually simplify and aid in resolution of the Apple IPR because of its
`
`
`2 Unless otherwise noted, citations to the Petition, exhibits, and other PTAB filings
`
`refer to the papers filed in the present proceeding, IPR2019-00744.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 4
`
`
`
`IPR2019-00744
`Patent 7,167,487
`relevance to key “minimum bit rate criteria” issues in that IPR. Given the overlap in
`
`the grounds presented in these two IPRs, joinder of the related proceedings is
`
`appropriate. Further, Microsoft agrees to consolidated filings and discovery. Finally,
`
`joinder would impose no undue burden on Uniloc.
`
`A. Overlap In Issues Warrants Joinder, Even Though
`Microsoft Relies On An Additional Reference In Each Ground
`This IPR relies on a number of common prior art references, and in that
`
`respect presents issues similar to those in the Apple IPR. This overlap is reflected in
`
`the grounds presented in the respective petitions of the Apple and Microsoft IPRs,
`
`as shown in the following tables excerpted from each petition (yellow highlighting
`
`indicates the additional reference relied on by Microsoft):
`
`Microsoft Petition (Paper 2), p.5 (§ IV.A) (highlighting added).
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 5
`
`
`
`IPR2019-00744
`Patent 7,167,487
`
`IPR2019-00222, Apple Petition (Paper 5), p.4 (§ II.A).
`
`As shown in the preceding tables, the Microsoft IPR applies the same
`
`references to the same claims as the Apple IPR. While Microsoft’s grounds do
`
`include an additional reference (TS23.107), this reference is introduced largely to
`
`address claim elements relating to minimum and maximum bit rates and to help
`
`illustrate how a POSITA would understand the minimum (or “guaranteed”) and
`
`maximum bit rates in the context of prior art references R2-010182 and Peisa. See
`
`Paper 2 §§ VIII.F-G and IX.C-D. Thus, the Microsoft IPR and the Apple IPR have
`
`significant overlap. Compare Paper 2 §§ VIII.F-K, IX.C-D, and X.B-D with
`
`IPR2019-00222 Paper 5 §§ VI.A-C.
`
`In sum, although Microsoft presents the Apple prior art “in a different light
`
`and relies on other art not cited in” the Apple petition (Petition (Paper 2), p.8), there
`
`is significant overlap in issues. See, e.g., POPR (Paper 6), p.21 (Uniloc taking the
`
`position that the Microsoft IPR presents “substantially the same prior art and
`
`arguments” as the Apple IPR). Resolving these overlapping issues in a single joined
`
`proceeding will avoid duplicative efforts by the Board and parties, and avoid
`
`inconsistent outcomes on common issues, thus warranting joinder.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 6
`
`
`
`IPR2019-00744
`Patent 7,167,487
`
`B.
`
`The “New” Issues Presented By The Microsoft
`IPR Will Actually Aid In Resolution Of Disputed
`Issues In The Apple IPR, Thus Supporting Joinder
`Strictly speaking, the Microsoft IPR introduces a new issue, namely that the
`
`teachings of additional prior art reference TS23.107 confirm the obviousness of
`
`claim elements 1.6 and 2.1. See Petition (Paper 2), §§VIII.F-G and IX.C-D. This
`
`“new issue” is not tangential to the Apple IPR, however, but rather bears directly on
`
`a disputed issue in that proceeding: whether the prior art satisfies the “minimum bit
`
`rate criteria” element recited by claim 1. See, e.g., IPR2019-00222, POPR (Paper 9),
`
`§VI.B (raising sole substantive argument alleging “[n]o prima facie obviousness for
`
`‘wherein the selection algorithm uses a minimum bit rate criteria applicable to the
`
`respective logic channel’”). Moreover, TS23.107 is not some stray reference, but
`
`instead integrates cleanly with the art presented by the Apple IPR and is admitted by
`
`the ’487 patent as highly relevant to minimum bit rate characteristics. EX-1001, 2:1-
`
`6. Therefore, rather than complicate the proceedings, joining Microsoft’s analysis
`
`and discussion of TS23.107 will actually simplify the Board’s resolution of the
`
`Apple IPR.
`
`Given TS23.107’s unquestionable relevance to the obviousness of elements
`
`1.6 and 2.1, and its clear relationship to the prior art references relied on by Apple,
`
`joinder with the Apple IPR will be helpful to the Board and will simplify resolution
`
`of issues surrounding use of a “minimum bit rate criteria.”
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 7
`
`
`
`IPR2019-00744
`Patent 7,167,487
`The Prior Art Confirms The Relevance Of TS23.107 To
`Understanding The Claimed “minimum bit rate criteria”
`As discussed above, the additional reference in Microsoft’s grounds,
`
`1.
`
`TS23.107, is used primarily to address claim limitations involving a minimum bit
`
`rate or a maximum bit rate. As part of the 3GPP Technical Specification, TS23.107
`
`specifies quality of service aspects for all 3GPP networks, including minimum and
`
`maximum bit rate criteria. See, e.g., Ex. 1006, pp.5 and 16; Ex. 1003, ¶¶34-35 and
`
`39. In particular, TS23.107 helps to show that the use of a minimum bit rate criteria
`
`in a TFC selection algorithm was obvious to a POSITA.
`
`Furthermore, prior art R2-010182 expressly states that TS23.1073 defines the
`
`maximum and guaranteed (minimum) bitrates which R2-010182 incorporates into
`
`the modified TFC selection algorithm. See Ex. 1010, pp. 1 and 5.
`
`Prior art Peisa also expressly references the 3GPP standard, of which
`
`TS23.107 is a part. Ex. 1005, 1:55-63, 2:9-13, and 6:25-40. Thus, Microsoft’s
`
`grounds are a natural extension of Apple’s and provide helpful clarifications for the
`
`teachings of the other references that are common to both IPRs.
`
`
`3 R2-010182 references an earlier version of TS23.107 (v3.4) than that used in the
`
`Microsoft IPR (v3.5). However, these versions do not differ meaningfully with
`
`respect to the minimum/maximum bit rates. See Ex. 1006, p.36.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 8
`
`
`
`IPR2019-00744
`Patent 7,167,487
`The ’487 Patent Itself Confirms The Relevance Of TS23.107
`To Understanding The Claimed “minimum bit rate criteria”
`The ’487 specification expressly states that TS23.107 defines minimum bit
`
`2.
`
`rates as characteristics of quality of service required by logic channels. Ex. 1001,
`
`1:65-2:6. Although the ’487 patent references TS23.107 (2:1-6), there is no record
`
`showing that the Examiner ever considered it or that the Uniloc ever submitted a
`
`copy of it to the USPTO. Thus, TS23.107 will be useful to the Board in considering
`
`the meaning of the phrase “minimum bit rate criteria applicable to the respective
`
`logic channel,” in claim 1.
`
`3.
`
`As Explained By The Microsoft Petition,
`TS23.107 Integrates Cleanly With The Other
`References Relied Upon In The Apple IPR
`Like TS25.321, R2-010182, and TS25.302, TS23.107 was published by the
`
`3rd Generation Partnership (“3GPP”) as part of its network standardization efforts.
`
`Petition (Paper 2), p.15. For this and other reasons, a POSITA would have naturally
`
`combined the teachings of TS23.107 with those of the three 3GPP references relied
`
`on in the Apple IPR and had a reasonable expectation of success in doing so. Petition
`
`(Paper 2), pp.16-20.
`
`TS23.107 also integrates well with Peisa and its teachings, making it easily
`
`considered in combination with Peisa. Petition (Paper 2), pp.51-52 and 60-63.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 9
`
`
`
`IPR2019-00744
`Patent 7,167,487
`Joinder Should Not Impact The IPR Trial Schedule
`
`C.
`
`Joinder should not require delay of the Apple IPR trial schedule. Because
`
`Microsoft raises overlapping grounds based on much of the same evidence,
`
`Microsoft should be able to join Apple’s proceeding without any change to the trial
`
`schedule. As discussed in the following sections, Microsoft agrees to cooperate with
`
`Apple (assuming Apple consents) and will not seek additional discovery. If the
`
`proceedings are joined, then Uniloc will have ample time to prepare its Patent Owner
`
`Response prior to the August 27 deadline. Thus, joinder would not prevent the Board
`
`from completing proceedings by the statutory deadline. Furthermore, the joint
`
`proceeding would allow the Board and the parties to focus on the merits in one
`
`consolidated proceeding in a timely manner, thereby preserving resources.
`
`Institution and joinder will also promote judicial efficiency. Congress created
`
`these proceedings as a more efficient way to litigate patent validity issues. Instituting
`
`trial and granting joinder will have no negative effect on the Board and Uniloc’s
`
`resources, and will instead promote administrative and judicial economy before the
`
`Board and in district court. Joinder of this proceeding with that of Apple is thus
`
`fundamentally fair to all involved.
`
`D.
`
`Joinder Is Appropriate Because Microsoft Agrees To Take A
`Largely “Understudy” Role, Simplifying Briefing And Discovery
`Should the Board grant joinder, Microsoft agrees to take a largely understudy
`
`role, working with and deferring to Apple counsel on all issues that overlap with the
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 10
`
`
`
`IPR2019-00744
`Patent 7,167,487
`Apple IPR, so long as the Apple petitioners remain parties to the IPR. To the extent
`
`consideration of TS23.107 requires additional briefing or argument, Microsoft
`
`agrees to coordinate with Apple counsel on consolidated filings and argument,4 such
`
`that no additional filings or argument should be necessary. Microsoft further agrees
`
`to work with Apple prior to any hearing to incorporate Microsoft’s positions into
`
`Apple’s presentations, with counsel for Apple responsible for making the
`
`presentation at the hearing, again with attendance by Microsoft’s counsel at any such
`
`hearing. These procedures would remove or minimize any complication,
`
`duplication, or delay caused by joinder. Moreover, Microsoft would defer to the
`
`Apple petitioners on any minor schedule adjustments that might arise during the
`
`course of the IPR. Similarly, Microsoft will coordinate with Apple on discovery, and
`
`agrees to seek no additional discovery itself. To the extent Uniloc seeks to depose
`
`Microsoft’s expert on the limited issues surrounding TS23.107, Microsoft would
`
`coordinate with the other parties to make its expert available at a time convenient to
`
`all parties.
`
`Given Microsoft’s “understudy” role, joinder of these proceedings will not
`
`overly complicate the Apple IPR.
`
`
`4 Again, assuming the consent of the Apple IPR petitioners.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 11
`
`
`
`IPR2019-00744
`Patent 7,167,487
`
`E. Microsoft’s Petition Is Not Time Barred And
`Itself Independently Establishes At Least A Reasonable
`Likelihood That The Challenged Claims Are Unpatentable
`Microsoft filed its petition March 4, 2019, before Uniloc’s POPR to the Apple
`
`IPR, and well before any possible statutory bar.5 Thus, the Microsoft IPR is not time
`
`barred or otherwise deficient from a standing perspective.
`
`Moreover, the Microsoft IPR satisfies the requirement of Section 315(c) that
`
`a petition accompanying a request for joinder must warrant institution under Section
`
`314. See Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2018-00914
`
`Paper 38, p.12 (PTAB Feb. 13, 2019) (precedential). Under Section 314(a), a petition
`
`warrants institution if “the petition filed under Section 311 and any response filed
`
`under Section 313 shows there is a reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a); see also Proppant at p.12.
`
`As discussed in Section III.A above, Microsoft presents arguments that
`
`overlap with arguments presented in Apple’s petition, in which institution was
`
`granted. See IPR2019-00222 Paper 11. The Board found that Apple demonstrated a
`
`reasonable likelihood of showing the combination of TS25.321, R2-010182, and
`
`
`5 Uniloc first asserted the ’487 patent against Microsoft in a lawsuit filed July 24,
`
`2018. Supra II.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 12
`
`
`
`IPR2019-00744
`Patent 7,167,487
`TS25-302 teaches or suggests all limitations of claims 1-6. See id. at pp.40-46. The
`
`Board also found that Apple demonstrated a reasonable likelihood of showing that
`
`Peisa teaches or suggests all limitations of claims 1, 2, and 4-6. See id. at pp.46-58.
`
`Microsoft provides similar arguments for the same claims using the same references,
`
`but also provides enhanced arguments for claim elements 1.6 and 2.1 based on a
`
`combination of these references with TS23.107. Thus, Microsoft’s petition satisfies
`
`the reasonable likelihood standard for at least the same reasons as Apple’s petition
`
`and, if anything, makes a stronger showing with respect to claim elements 1.6 and
`
`2.1.
`
`Furthermore, while the arguments made in the POPR filed in the Microsoft
`
`IPR largely track the arguments made in the POPR filed in Apple’s proceeding
`
`(compare Paper 6, §§ IV, V, VI.B.3-6, VI.C, and VII with IPR2019-00222 Paper 9,
`
`§§ IV, V, VI.B.1-4, VI.C, and VII), any additional arguments made in the POPR
`
`filed in the Microsoft IPR do not rebut the findings of the Board that the arguments
`
`made in Apple’s petition, which overlap with the arguments made in Microsoft’s
`
`petition, satisfy the reasonable likelihood standard.
`
`The POPR’s additional arguments as to TS23.107 fail to rebut Microsoft’s
`
`showing because, at the very least, Uniloc does not contest Microsoft’s reasoning to
`
`combine the teachings of TS23.107 with the teachings of the other references, and
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 13
`
`
`
`IPR2019-00744
`Patent 7,167,487
`provides no arguments asserting that the proposed combination of references do not
`
`teach or suggest the claim limitations. See POPR (Paper 6), §VI.B.
`
`Even the POPR’s arguments as to TS25.302 individually fail. Specifically,
`
`Uniloc argues that TS25.302 is deficient, as allegedly pointing to only changing
`
`Transport Block Set Size and Transport Block Size in connection with minimum bit
`
`rate criteria, and not modifying TFC selection. Id. at pp. 24-25. However, this
`
`argument is meritless. The POPR tries to argue that TS25.302 teaches changing
`
`Transport Block Size and Transport Block Set Size for a transport channel as an
`
`approach that involves “entirely different measures, not involving [Transport Format
`
`Combination (TFC)] selection.” Id. at p. 25. However, this argument ignores the fact
`
`that the Transport Block Size and the Transport Block Set Size are values that are
`
`specified by the Transport Format assigned to the transport channel. This is clear
`
`from TS25.302 itself, which provides a description of a Transport Format:
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 14
`
`
`
`IPR2019-00744
`Patent 7,167,487
`
`
`
`IPR2019-00744 Ex. 1007, p.54 (highlighting added).
`
`Thus, TS25.302 does not point to “entirely different measures” not involving
`
`Transport Format Combination (TFC) selection, as the POPR asserts. Rather, the
`
`values identified by the POPR are clearly values provided by a selected Transport
`
`Format. Furthermore, it is clear that TS25.302 contemplates TFC selection:
`
`The layer 1 multiplexes one or several Transport Channels, and for each
`Transport Channel, there exists a list of transport formats (Transport
`Format Set) which are applicable. Nevertheless, at a given point of time,
`not all combinations may be submitted to layer 1 but only a subset, the
`Transport Format Combination. This is defined as an authorised
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 15
`
`
`
`IPR2019-00744
`Patent 7,167,487
`combination of the combination of currently valid Transport Formats
`that can be submitted simultaneously to the layer 1 for transmission on
`a Coded Composite Transport Channel of a UE, i.e. containing one
`Transport Format from each Transport Channel.
`…
`The Transport Format Combination Set is what is given to MAC for
`control. However,
`the assignment of
`the Transport Format
`Combination Set is done by L3. When mapping data onto L1, MAC
`chooses between the different Transport Format Combinations given in
`the Transport Format Combination Set. Since it is only the dynamic
`part that differ between the Transport format Combinations, it is in fact
`only the dynamic part that MAC has any control over.
`
`Id. at p. 19 (emphasis added). It is this “dynamic part” of a Transport Format which
`
`TS25.302 Appendix A (depicted above) clearly shows to include the Transport
`
`Block Size and Transport Block Set Size identified by the POPR. Thus, these
`
`parameters are part of a Transport Format that is selected by the TFC selection, and
`
`not as part of some separate scheme as the POPR alleges.
`
`For at least these reasons, Microsoft’s petition satisfies the reasonable
`
`likelihood standard and warrants institution under Section 314.
`
`F.
`
`Joinder Would Not Unfairly Prejudice Patent Owner
`
`Joinder with the Apple IPR will not cause any prejudice to Uniloc. If
`
`Microsoft joins the Apple IPR, the additional issues or costs to Uniloc will be
`
`minimal. Since the testimony of Microsoft’s expert declarant overlaps with the
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 16
`
`
`
`IPR2019-00744
`Patent 7,167,487
`testimony of Apple’s expert declarant in a number of respects, any deposition of
`
`Microsoft’s expert declarant can be limited to the additional issues relating to
`
`TS23.107 and its teachings on quality of service in 3GPP networks.6 In a similar
`
`vein, should Uniloc seek to introduce expert testimony regarding TS23.107 with its
`
`Patent Owner Response in the Apple IPR (due August 27, 2019), it will have ample
`
`time to prepare that testimony.
`
`Uniloc has already had significant time to consider the arguments presented
`
`in the March 4 Microsoft Petition. This is confirmed by Uniloc’s POPR in the
`
`Microsoft IPR, filed June 28. The POPR raises substantive arguments reflecting that
`
`Uniloc has already analyzed Microsoft’s arguments, including those relating to
`
`TS23.107. In fact, an entire sub-section of that POPR even focuses on alleged
`
`deficiencies in the teachings of TS23.107 (POPR (Paper 6), pp.26-27), confirming
`
`Uniloc’s contemplation of even the “new” issues in the Microsoft IPR.
`
`
`6 Although the Broadest Reasonable Interpretation (BRI) standard applies to the
`
`Apple IPR, and the Phillips standard applies to the Microsoft IPR, Microsoft is
`
`unaware of any meaningful difference between the BRI standard and the Phillips
`
`standard for the claim terms at issue here. As BRI is typically broader that Phillips,
`
`any showing made by Microsoft under Phillips also applies under BRI.
`
`PETITIONER’S MOTION FOR JOINDER
`
`Page 17
`
`
`
`IPR2019-00744
`Patent 7,167,487
`Moreover, Uniloc’s POPR takes the position that the Microsoft IPR presents
`
`“substantially the same prior art and arguments” as the Apple IPR. POPR (Paper 6),
`
`p.21. If that is true, then Uniloc can hardly argue that joinder will impose any
`
`significant additional burden on it.
`
`1.
`
`The Need For Joinder Arises From
`Uniloc’s Own District Court Litigation Conduct
`Any Uniloc argument of unfair burden further lacks merit here, where
`
`Uniloc’s own litigation conduct gave rise to these multiple IPRs and the subsequent
`
`need for joinder. Uniloc chose to assert this patent against numerous defendants in a
`
`temporally staggered fashion, and the staggered
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
