IPR2019-00744
`U.S. Patent No. 7,167,487
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-00744
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`U.S. PATENT NO. 7,167,487
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`PATENT OWNER OPPOSITION TO MOTION FOR JOINDER
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`U.S. Patent No. 7,167,487
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-00744
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`U.S. PATENT NO. 7,167,487
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`PATENT OWNER OPPOSITION TO MOTION FOR JOINDER
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`I.
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`INTRODUCTION
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`Table of Contents
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`II. ARGUMENT
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`A.
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`Joinder will cause rather than avoid undue prejudice.
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`1. Joinder will cause undue prejudice to Uniloc.
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`2. Joinder is not necessary to prevent undue prejudice to Microsoft.
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`B.
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`The General Plastic factors weigh against institution and joinder.
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`3
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`3
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`4
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`C. Microsoft is not taking an understudy role and joinder will impact the
`schedule or unduly prejudice Uniloc.
`11
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`D. Microsoft’s joinder motions admit the cumulative nature of
`Microsoft’s petitions.
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`III. CONCLUSION
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`11
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`2
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`I.
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`INTRODUCTION
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`Four months after Apple filed two petitions challenging the ’487 patent on
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`November 12, 2018,1 Microsoft filed two petitions of its own challenging the same
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`patent on March 4, 2019.2 Rather than seeking to join the Apple IPR, Microsoft
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`argued its petitions “present [the] art in a different light and rel[y] on other art not
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`cited in [Apple’s] petitions.” See Petitions at 8. On July 2, 2019, after trial was
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`instituted in the Apple IPRs and after Uniloc filed its preliminary responses in the
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`Apple IPRs and the Microsoft IPRs, Microsoft made an about face – insisting its
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`petitions are not really that different from Apple’s and should be joined to the Apple
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`IPRs even though joinder will add new issues to the Apple IPRs. Microsoft’s wait
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`and see approach is a transparent attempt to game the system. Its joinder motions
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`should be denied because Microsoft fails to show joinder of new issues to the Apple
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`IPR is necessary to avoid prejudice to Microsoft. To the contrary, joinder will
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`unduly prejudice Uniloc.
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`II. ARGUMENT
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`As the moving party, Microsoft has the burden of proof to establish that it is
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`entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). When determining
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`whether to grant a motion for joinder, the Board considers factors including: (1) time
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`and cost considerations, including the impact joinder would have on the trial
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`schedule; and (2) how briefing and discovery may be simplified. See Order
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`1 See IPR2019-00222 and IPR2019-00252 (referred to here as the “Apple IPRs”).
`2 See IPR2019-00744 and IPR2019-00745 (referred to here as the “Microsoft IPRs”).
`3
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`Authorizing Motion for Joinder (Paper 15, 4), Kyocera Corp. v. SoftView, LLC,
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`IPR2013-00004 (PTAB Apr. 24, 2013).
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`Even when a party seeks to join a nearly identical petition, joinder should not
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`be granted as a matter of right. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b); 157
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Director
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`is given discretion . . . over whether to allow joinder. This safety valve will allow
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`the Office to avoid being overwhelmed if there happens to be a deluge of joinder
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`petitions in a particular case.”).
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`And when a party seeks to join new issues, joinder is granted “only in limited
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`circumstances—namely, where fairness requires it and to avoid undue prejudice to
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`a party.” Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-
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`00914, Paper 38, p. 4 (Mar. 13, 2019) (designated: Mar. 13, 2019) (Precedential
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`Opinion Panel decision).
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`Here, Microsoft’s motion should be denied because joinder of new issues will
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`unduly prejudice Uniloc and complicate briefing and discovery. Further, joinder of
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`new issues is not necessary to avoid prejudice to Microsoft. Finally, the General
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`Plastic factors weigh against institution and joinder
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`A.
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`Joinder will cause rather than avoid undue prejudice.
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`Microsoft’s motion should be denied under Proppant because joinder of
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`Microsoft’s new issues will cause rather than avoid undue prejudice to a party.
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`Proppant explains that the Board will exercise discretion to join new issues to an
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`existing proceeding “only in limited circumstances—namely, where fairness
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`4
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`requires it and to avoid undue prejudice to a party.” Proppant, Case IPR2018-00914,
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`Paper 38, p. 4. Circumstances leading to this “narrow exercise of [the Board’s]
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`jurisdiction may include, for example, actions taken by a patent owner in a
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`co-pending litigation such as the late addition of newly asserted claims.” Id. On the
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`other hand, “the Board does not generally expect fairness and prejudice concerns to
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`be implicated by, for example, the mistakes or omissions of a petitioner.” Id.
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`1.
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`Joinder will cause undue prejudice to Uniloc.
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`Joinder of new issues to the Apple IPRs will unduly prejudice Uniloc.
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`Uniloc’s patent owner responses in the Apple IPRs are due August 27, 2019. If
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`Microsoft’s joinder motions are granted, Uniloc will have less than one month to
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`prepare its respective patent owner responses. In each Apple IPR, Uniloc will be
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`required to not only respond to Apple’s petition but Microsoft’s distinct petition
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`containing art presented “in a different light” and new art. As Microsoft
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`acknowledges, this will also require Uniloc to: (1) address an addition expert report;
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`(2) depose an additional expert; and (3) supplement its own expert testimony. See
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`IPR2019-00744, Paper 7, p. 2, 11, 16-17; IPR2019-00745, Paper 7, p. 2, 11, 17.
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`Less than one month is not “ample time” to do this, as Microsoft insists. There is a
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`reason the scheduling orders entered in the Apple IPRs gave approximately three
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`months after institution to accomplish these tasks.
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`Microsoft insists joinder will cause no prejudice because “Uniloc has already
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`had significant time to consider the arguments presented in the March 4, 2019
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`Microsoft Petition[s].” See IPR2019-00744, Paper 7, p. 17; IPR2019-00745, Paper
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`5
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`7, p. 17. This logic would justify allowing less than one month from institution to
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`file a patent owner response in every IPR. Uniloc had significant time to consider
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`arguments presented in the November 12, 2018 Apple petitions before the Apple
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`IPRs were instituted, but this of course does not justify allowing Uniloc less than
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`one month after institution to file responses. Less than one month is not sufficient
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`time for Uniloc to prepare a response to a distinct petition that requires addressing
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`new references, references presented in a “different light,” and a separate expert
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`response.
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`Microsoft also argues that introduction of a new reference in the Apple IPRs
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`will simplify briefing, but what Microsoft really means is that it believes
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`introduction of the new reference will bolster Microsoft’s position. Introducing new
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`art at this stage will not simplify the Apple IPRs; it will prejudice Uniloc.
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`2.
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`Joinder is not necessary to prevent undue prejudice to
`Microsoft.
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`Microsoft’s motion does not attempt to identify any prejudice to Microsoft
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`that joinder will avoid. Microsoft’s failure to allege (much less prove) joinder is
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`necessary to avoid prejudice is alone enough reason to deny Microsoft’s motion
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`under Proppant.
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`Microsoft argues joinder is necessary because Uniloc filed multiple suits on
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`the same patent but identifies no action by Uniloc in co-pending litigation that makes
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`joinder necessary to avoid prejudice to Microsoft. The mere fact that Microsoft and
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`Apple were sued on the same patent in separate suits does not mean Microsoft will
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`be prejudiced unless its IPRs are joined to the Apple IPRs. Further, Uniloc’s second
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`6
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`complaint against Microsoft for infringement of the ’487 patent was not an action in
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`co-pending litigation that created a need for Microsoft to seek joinder. Uniloc filed
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`its first complaint against Microsoft for infringement of the ’487 patent on July 24,
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`2018. It withdrew the ’487 patent from that suit in August 2018. Microsoft filed its
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`petitions against the ’487 patent on March 4, 2019. One day later, Uniloc filed its
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`second complaint against Microsoft on the ’487 patent. The July 2018 and March
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`2019 complaints are identical with respect to the ’487 patent.3 Thus, the March 2019
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`complaint did not create any change in circumstance necessitating joinder. And
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`indeed, Microsoft did not respond to the March 5, 2019 complaint by seeking
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`joinder.
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`Microsoft’s real reason for seeking joinder is evident from the nature and
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`timing of its petitions and joinder motions. In March 2019, Microsoft filed petitions
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`that sought to distinguish Microsoft’s IPRs from Apple’s IPRs, insisting Microsoft
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`presented the art in a different light and relied on art not cited by Apple. This was a
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`transparent attempt to guard against denial if the Apple’s IPRs were denied. Four
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`months later, after Uniloc’s preliminary responses identified omissions in
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`Microsoft’s petitions and after the Board instituted trial in the Apple IPRs, Microsoft
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`made an about face and requested joinder. Microsoft’s desire for joinder was
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`prompted by the institution of the Apple IPRs and concerns about omissions in
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`3 See EX1027 (original complaint filed in Uniloc 2017 LLC et al. v Microsoft
`Corporation, Case No. 8:18-cv-01279 (C.D. Cal.)); EX1028 (original complaint
`filed in Uniloc 2017 LLC v. Microsoft Corporation, Case No. 8:19-cv-
`00428 (C.D. Cal.)).
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`7
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`Microsoft’s petitions identified by Uniloc’s preliminary responses, not any change
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`in circumstances caused by actions of Uniloc in co-pending litigation. Indeed,
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`Microsoft uses its motions for joinder to indirectly reply to Uniloc’s patent owner
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`responses.4 This is precisely the type of circumstance Proppant would not support
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`joinder of new issues. Proppant, Case IPR2018-00914, Paper 38, p. 4 (“the Board
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`does not generally expect fairness and prejudice concerns to be implicated by, for
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`example, the mistakes or omissions of a petitioner”).
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`Microsoft chose to file its own defective petitions fully aware of the pending
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`Apple IPRs. It made a deliberate decision to distinguish its petitions from the Apple
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`petitions. If Microsoft’s petitions are denied as they should be, that will be a result
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`of Microsoft’s own mistakes and omissions. There is no prejudice in requiring
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`Microsoft to accept the consequence of its own strategy.
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`B.
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`The General Plastic factors weigh against institution and joinder.
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`Section 315(c) requires that a petition accompanying a request for
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`joinder “warrants the institution of an inter partes review under section 314.”
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`35 U.S.C. § 315(c). In General Plastic Industrial Co., Ltd. v. Canon Kabushiki
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`Kaisha, Case IPR2016-01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19)
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`(precedential), the Board articulated a non-exhaustive list of factors to be considered
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`in determining whether to exercise discretion under § 314(a) to deny a petition that
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`4 Uniloc’s patent owner responses explain Microsoft’s petitions should be denied
`under Liberty Mutual because it fails to explain why its new references should be
`considered. Microsoft’s joinder motion attempts to cure this deficiency, spending
`significant time arguing why its new reference should be considered in addition to
`the references shared with the Apple IPR.
`8
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`challenges the same patent as a previous petition. Application of the General Plastic
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`factors is not limited solely to instances when multiple petitions are filed by the same
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`petitioner. Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00062, -00063,
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`-00084, Paper 11, p. 2 (Apr. 2, 2019) (designated: May 7, 2019). Rather, when
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`different petitioners challenge the same patent, the Board considers any relationship
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`between those petitioners when weighing the General Plastic factors. Id.
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`Here, the first General Plastic factor weighs against institution because Apple
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`previously filed two petitions directed to the same claims of the same patent. Apple
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`and Microsoft were defendants in district court litigation involving the same patent
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`owner and same patent. As in Valve Corporation, here the complete overlap in the
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`challenged claims and the significant relationship between Apple and Microsoft with
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`respect to the ’487 patent weigh against institution and joinder.
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`The second factor also weighs against institution and joinder of the Microsoft
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`petitions because the new art Microsoft seeks to add could have been found and
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`asserted in the Apple IPRs with reasonable diligence. Microsoft’s joinder motions
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`argue the TS23.107 reference “is not some stray reference, but instead integrates
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`cleanly with the art presented by the Apple IPR[s] and is admitted by the ’487 patent
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`as highly relevant to minimum bit rate characteristics.” See IPR2019-00744, Paper
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`7, p. 7; IPR2019-00745, Paper 7, p. 7.
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`The third factor weighs against institution and joinder because, at the time
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`Microsoft filed its joinder motions, Microsoft had already received Uniloc’s
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`preliminary responses. The third factor is directed to “Petitioner’s potential benefit
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`9
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`from receiving and having the opportunity to study Patent Owner’s Preliminary
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`Response, as well as [the Board’s] institution decisions on the first-filed petitions,
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`prior to filing follow-on petitions.” Valve Corp., Case IPR2019-00062, -00063, -
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`00084, Paper 11, p. 12. While Microsoft did not have the benefit of the Board’s
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`institution decisions in the Apple IPRs or Uniloc’s preliminary responses when it
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`filed its petitions, Microsoft is now seeking to take advantage of the institution
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`decisions and the preliminary responses in its joinder motions. Microsoft’s joinder
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`motions should not be allowed benefit from the preliminary responses and the
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`institution decisions.
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`Factors four and five weigh against institution and joinder because Microsoft
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`provides no adequate explanation for the time elapsed between the filing of the
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`Apple IPRs and Microsoft’s joinder motions, which seek to add new art to the Apple
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`IPRs. The TS23.107 reference was known sometime before Microsoft filed its
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`petitions on March 4, 2019. Microsoft offers no explanation for waiting until July
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`to seek to add the reference to the Apple IPRs.
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`Factors six and seven weigh against institution and joinder because adding
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`Microsoft’s references and arguments to the Apple IPRs will burden the Board’s
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`finite resources and hinder the Board’s ability to issue a final determination not later
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`than 1 year after the date of institution. In Valve, the Board found these factors
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`weighed against institution because Valve waited until after institution to file not
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`one, but three additional petitions. Here, although Microsoft filed its petition before
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`the Apple IPRs were instituted, Microsoft waited until after the institution decisions
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`10
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`in the Apple IPRs to seek joinder of new art to the Apple IPRs. Microsoft’s attempt
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`to take two bites at the apple (by distinguishing its petitions before institution of the
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`Apple IPRs but then minimizing the differences after) implicates the same efficiency
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`concerns underpinning General Plastic that were implicated in Valve Corporation.
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`C. Microsoft is not taking an understudy role.
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`Joinder should also be denied because Microsoft admits it is not taking on a
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`true understudy role. Because Microsoft seeks to add a reference to each ground, it
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`cannot take on a true understudy rule. Microsoft knows this, offering only to take a
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`“largely” understudy role and “deferring to Apple” only where issues overlap.
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`Microsoft clearly intends to take a lead role regarding the new art it seeks to join.
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`D. Microsoft’s motions admit the cumulative nature of its petitions.
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` Finally, Microsoft’s joinder motions admit the cumulative nature of
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`Microsoft’s petitions. As explained in Uniloc’s preliminary responses, the
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`cumulative nature of Microsoft’s petitions is grounds for the Board to deny
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`institution. Doing so will promote efficiency and discourage serial challenges to a
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`patent. Microsoft would have the Board compound the problem of serial challenges
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`to the patent by joining new issues to the already-instituted Apple IPRs. Doing so
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`will only prejudice Uniloc further.
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`III. CONCLUSION
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`For the foregoing reasons, joinder should be denied.
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`11
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`Date: August 2, 2019
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`Respectfully submitted,
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`IPR2019-00744
`U.S. Patent No. 7,167,487
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`By: Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic
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`copy of the foregoing document along with any accompanying exhibits via the
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`Patent Review Processing System (PRPS) and email to Petitioner’s counsel of
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`record at the following address:
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`
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`Lead Counsel
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`Back Up
`Counsel
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`Back Up
`Counsel
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`Back Up
`Counsel
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`Back Up
`Counsel
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`Andrew M.
`Mason
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`Todd M.
`Siegel
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`Joseph T.
`Jakubek
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`64,034
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`andrew.mason@klarquist.com
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`73,232
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`todd.siegel@klarquist.com
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`34,190
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`joseph.jakubek@klarquist.com
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`John Lunsford
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`67,185
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`john.lunsford@klarquist.com
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`John D.
`Vandenberg
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`31,312
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`john.vandenberg@klarquist.com
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`12
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