throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 9
`Entered: August 9, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`
`Case IPR2019-00744
` Case IPR2019-007451
`Patent 7,167,487 B2
`
`
`
`Before ROBERT J. WEINSCHENK, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`not authorized to use this caption for any subsequent papers
`
`

`

`IPR2019-00744
`IPR2019-00745
`Patent 7,167,487 B2
`
`
`INTRODUCTION
`
`Microsoft Corp. (“Microsoft”) has filed two petitions, IPR2019-00744
`
`and IPR2019-00745 (“the Microsoft IPRs”), respectively challenging claims
`
`1–6 and 11–13 in US Patent No. 7,167,487 B2. See Paper 2.2 Microsoft has
`
`also filed, in each case, a request to respectively join the instituted
`
`proceeding in IPR2019-00222, Apple Inc. v. Uniloc 2017 LLC, Paper 11
`
`(PTAB, June 4, 2019) and IPR2019-00252, Apple Inc. v. Uniloc 2017 LLC,
`
`Paper 11 (PTAB, June 4, 2019) (“the Apple IPRs”). See Paper 7.
`
`On August 5, 2019, Microsoft requested a conference call to discuss
`
`the timely management of the Microsoft and Apple IPRs. On August 8,
`
`2019, Judges Weinschenk, Horvath, and O’Hanlon conducted a conference
`
`call with all of the parties in the Microsoft and Apple IPRs. During the call,
`
`Microsoft was represented by Andrew Mason, Uniloc was represented by
`
`Brett Mangrum, and Apple was represented by Roberto Devoto.
`
`
`
`During the call, we advised the parties that because the Board has not
`
`yet decided the petitions and motions for joinder in the Microsoft IPRs, the
`
`Scheduling Orders in the Apple IPRs remain in effect, and Uniloc’s
`
`responses to the petitions in the Apple IPRs remain due on August 27, 2019.
`
`We further advised the parties that once decisions are made on the petitions
`
`and motions for joinder in the Microsoft IPRs, the Board will reconsider, if
`
`necessary, any changes needed to the Scheduling Orders in the Apple IPRs.
`
`We then asked Mr. Mason, counsel for Microsoft, whether
`
`Microsoft’s joinder motions sought to join Microsoft as a party to the Apple
`
`
`2 Unless otherwise indicated, all citations are to the papers filed in IPR2019-
`00744. Similar papers have been filed in IPR2019-00745.
`
`
`
`2
`
`

`

`IPR2019-00744
`IPR2019-00745
`Patent 7,167,487 B2
`
`IPRs, or to join Microsoft together with the issues challenging the
`
`patentability of claims 1–6 and 11–13 based on the additional TS 23.1073
`
`reference to the Apple IPRs. Mr. Mason replied that the joinder motions
`
`sought to join Microsoft and the additional TS 23.107 issues to the Apple
`
`IPRs. Mr. Mason also explained that Microsoft filed the joinder motions to
`
`promote efficiency, but it would be acceptable to Microsoft to consider the
`
`Microsoft IPRs without joinder to the Apple IPRs. We further asked Mr.
`
`Mason what changes he suggested be made to the trial schedules in the
`
`Apple IPRs in the event we granted Microsoft’s petitions and motions for
`
`joinder. In response, Mr. Mason suggested extending the trial schedules in
`
`the Apple IPRs to track any trial schedules determined for the Microsoft
`
`IPRs pursuant to 35 U.S.C. § 316(a)(11), which permits extending trial
`
`schedules “in the case of joinder under section 315(c).”
`
`We next asked Mr. Devoto, counsel for Apple, whether Apple
`
`objected to joining either Microsoft or Microsoft and the TS 23.107 issues to
`
`the Apple IPRs, and what changes he suggested be made to the trial
`
`schedules in the Apple IPRs in the event we granted Microsoft’s petitions
`
`and motions for joinder. Mr. Devoto indicated that Apple takes no position
`
`on Microsoft’s joinder motions, and that Mr. Devoto would need to consult
`
`with his clients regarding any changes to the trial schedules in the Apple
`
`IPRs.
`
`Lastly, we asked Mr. Mangrum, counsel for Uniloc, the same
`
`questions we asked of Mr. Devoto. Mr. Mangrum objected to joining
`
`
`3 QoS Concept and Architecture, 3rd Generation Partnership Project, 3GPP
`TS 23.107 V3.5.0 (2000–12) (“TS 23.107”).
`
`
`
`3
`
`

`

`IPR2019-00744
`IPR2019-00745
`Patent 7,167,487 B2
`
`Microsoft and the TS 23.107 issues to the Apple IPRs for the reasons
`
`discussed in Uniloc’s oppositions to Microsoft’s motions for joinder. See
`
`Paper 8. Mr. Mangrum further indicated that Uniloc would not object if
`
`Microsoft was simply added as a party to the Apple IPRs without adding any
`
`new issues regarding TS 23.107.
`
`ORDER
`
`Accordingly, for the reasons discussed above, it is hereby:
`
`
`
`ORDERED that the Scheduling Order in IPR2019-00222 remains
`
`pending and in full effect; and
`
`
`
`FURTHER ORDERED that the Scheduling Order in IPR2019-00252
`
`remains pending and in full effect.
`
`
`
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2019-00744
`IPR2019-00745
`Patent 7,167,487 B2
`
`For PETITIONER:
`
`Andrew M. Mason
`Todd M. Siegel
`Joseph T. Jakubek
`John M. Lunsford
`John D. Vandenberg
`andrew.mason@klarquist.com
`todd.siegel@klarquist.com
`joseph.jakubeck@klarquist.com
`john.lunsford@klarquist.com
`john.vandenberg@klarquist.com
`
`
`For PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`
`
`
`
`5
`
`

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