NITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`_________________
`
`IPR2019-00745
`Patent 7,167,487
`_________________
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION FOR JOINDER WITH CASE IPR2019-00252
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`_________________
`
`IPR2019-00745
`Patent 7,167,487
`_________________
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS
`MOTION FOR JOINDER WITH CASE IPR2019-00252
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`LIST OF EXHIBITS ................................................................................................ iii
`I.
`UNILOC’S CLAIMS OF UNDUE PREJUDICE LACK MERIT .................. 1
`II.
`THE GENERAL PLASTIC FACTORS DO
`NOT WEIGH IN FAVOR OF DENIAL IN THIS CASE .............................. 3
`III. MICROSOFT FACES PREJUDICE IF JOINDER
`IS DENIED AND ITS CHALLENGES ARE NOT
`SEPARATELY CONSIDERED BY THE BOARD ....................................... 4
`IV. CONCLUSION ................................................................................................ 5
`
`
`
`PETITIONER’S REPLY ISO MOTION FOR JOINDER
`
`Page i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Facebook, Inc. v. Windy City Innovations, LLC,
`CAFC-18-1400 (Fed. Cir. argued August 7, 2019) ................................................ 2
`Board Decisions
`General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357 (PTAB Sept. 6, 2017) .......................................................... 3
`Valve Corp. v. Elec. Scripting Prods., Inc.,
`Case IPR2019-00062 (PTAB Apr. 2, 2019) .......................................................3, 4
`Rules
`37 C.F.R. 316 .........................................................................................................2, 3
`
`
`
`
`
`
`
`PETITIONER’S REPLY ISO 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 REPLY ISO 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 REPLY ISO 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 REPLY ISO MOTION FOR JOINDER
`
`Page v
`
`
`
`IPR2019-00745
`Patent 7,167,487
`Petitioner Microsoft hereby submits this Reply to Uniloc’s Opposition to
`
`Motion for Joinder. See Paper 8.
`
`I.
`
`UNILOC’S CLAIMS OF UNDUE PREJUDICE LACK MERIT
`
`Uniloc’s claims of undue prejudice are meritless for several reasons. First, any
`
`delay caused here is a result of Uniloc’s serial litigation campaign, which has
`
`resulted in Apple, Microsoft, and other defendants being sued in numerous courts
`
`over the course of more than a year. See Paper 7, 3-4 and 18-19. Uniloc sued
`
`Microsoft for infringement five months after it filed separate complaints against
`
`Apple. See id. These temporally staggered filings drove the timeline in which Apple
`
`and Microsoft independently entered the IPR process. Given PTAB precedent that
`
`tends to disfavor same-patent petitions filed after a POPR or institution decision,
`
`Microsoft had to promptly file its own petition, and could not wait to see if Apple’s
`
`petition would be instituted. However, once Apple’s petition was instituted,
`
`Microsoft timely filed its motion for joinder. Thus, the timing of Microsoft’s filings
`
`are a result of Uniloc’s decisions about whom to sue and when to sue them. Uniloc
`
`can hardly complain about any delay caused by its own conduct.
`
`Also, Uniloc’s assertion that it would not have sufficient time to prepare a
`
`POR is overblown. The arguments raised in Uniloc’s POPR confirm that Uniloc has
`
`already analyzed Microsoft’s arguments, including those relating to TS23.107. See
`
`Paper 6 at 20-21 and 24-28. In fact, Uniloc contended that Microsoft’s petition was
`
`PETITIONER’S REPLY ISO MOTION FOR JOINDER
`
`Page 1
`
`
`
`IPR2019-00745
`Patent 7,167,487
`“nearly identical” to Apple’s petition. Id. at 23. After contending that the petitions
`
`are so similar, Uniloc cannot now seriously maintain that they are so different that
`
`joinder would not afford sufficient time to prepare a response. See Paper 8, 5.
`
`Moreover, Microsoft has agreed to defer to the arguments and evidence
`
`presented by the Apple IPR on all common issues and to limit any deposition of
`
`Microsoft’s expert to issues surrounding TS23.107. This would reduce Uniloc’s
`
`burden, not force it to “prepare a response to a distinct petition” as it contends. Paper
`
`8, 6. In fact, when compared to an alternative of separate IPR proceedings, joining
`
`the IPRs offers significant efficiencies for both the Board and the Patent Owner.
`
`Furthermore, should the Board conclude that additional time is warranted, it can
`
`extend the one-year deadline. 37 C.F.R. 316(a)(11). Uniloc stated that the three
`
`months it had to prepare a response to Apple’s petition was sufficient. Id. The Board
`
`could therefore address Uniloc’s concerns by providing a two- or three-month
`
`extension.1
`
`
`1 The Fed. Cir. has noted that joinder is traditionally limited to joinder of persons.
`
`See Oral Argument at 30:00-31:46, Facebook, Inc. v. Windy City Innovations, LLC,
`
`CAFC-18-1400
`
`(Fed. Cir.
`
`argued August
`
`7,
`
`2019), available
`
`at
`
`http://www.cafc.uscourts.gov/node/25082. However,
`
`the Board’s holding
`
`in
`
`Proppant that new issues can be joined has not been reversed. Also, even if it were,
`
`PETITIONER’S REPLY ISO MOTION FOR JOINDER
`
`Page 2
`
`
`
`IPR2019-00745
`Patent 7,167,487
`Thus, Uniloc’s claims of undue prejudice, baseless as they are, can be
`
`addressed by an adjustment to the scheduling order.2
`
`II. THE GENERAL PLASTIC FACTORS DO
`NOT WEIGH IN FAVOR OF DENIAL IN THIS CASE
`Uniloc argues that the General Plastic factors weigh against institution and
`
`joinder. Paper 8, 8. However, Uniloc has not shown that there is any significant
`
`relationship between Apple and Microsoft that would warrant a denial under the
`
`General Plastic factors. Although the General Plastic factors can apply in cases
`
`where petitions are filed by separate petitioners, the relationship, if any, between the
`
`petitioners is highly relevant to the determination. Valve Corp. v. Elec. Scripting
`
`Prods., Inc., Case IPR2019-00062, Paper 11, 9 (PTAB Apr. 2, 2019) (precedential).
`
`In Valve Corp., petitioners Valve and HTC had a significant relationship: they were
`
`co-defendants and HTC’s accused products incorporated Valve’s technology. Id. at
`
`10. Uniloc has not shown that there is any such relationship between Apple and
`
`Microsoft. Uniloc asserts that a significant relationship exists, but it does not explain
`
`what that relationship is or why it rises to the level of significance outlined in Valve
`
`
`the Board could consolidate the issues of the related IPRs and join Microsoft as a
`
`party for the purposes of a final decision (thus allowing the Board to extend the
`
`deadline under 37 C.F.R. 316(a)(11)).
`
`2 Apple has indicated that it does not oppose such a scheduling adjustment.
`
`PETITIONER’S REPLY ISO MOTION FOR JOINDER
`
`Page 3
`
`
`
`IPR2019-00745
`Patent 7,167,487
`Corp. See Paper 8, 9. The only relationship alluded to by Uniloc is that it has sued
`
`both petitioners. Id. However, the fact that two petitioners happen to be sued by a
`
`patent owner in different courts, and at different times, is not sufficient to show that
`
`a significant relationship, of the sort contemplated by Valve Corp., exists between
`
`the petitioners. In Valve Corp. the petitioners were intertwined in a business venture
`
`and co-defendants in a lawsuit. Here, no such intertwining or common litigation
`
`exists.
`
`Furthermore, other factors weigh heavily in favor of joinder. Joinder would
`
`conserve significant resources on issues that directly overlap with the Apple IPR and
`
`would aid the Board in resolving issues of clear dispute in the Apple IPR. See Paper
`
`7, 5-9.
`
`III. MICROSOFT FACES PREJUDICE IF JOINDER
`IS DENIED AND ITS CHALLENGES ARE NOT
`SEPARATELY CONSIDERED BY THE BOARD
`Microsoft filed this motion, in part, to inform the Board of areas of overlap
`
`and distinction between the Microsoft IPR and the Apple IPR, thereby providing the
`
`Board with an opportunity to join the proceedings. However, if the Board prefers not
`
`to take that course of action, then it should institute the present IPR and separately
`
`consider Microsoft’s petition. To do otherwise would prejudice Microsoft and
`
`reward Uniloc for its wasteful litigation strategy.
`
`PETITIONER’S REPLY ISO MOTION FOR JOINDER
`
`Page 4
`
`
`
`IPR2019-00745
`Patent 7,167,487
`The effect of Uniloc’s serial litigation has been to maximize the burden on the
`
`defendants, as well as minimize Uniloc’s exposure to IPR petitions. See Paper 7, 18-
`
`19. This is apparent from Uniloc’s contradictory arguments in the present IPR. In its
`
`POPR, Uniloc argued that institution is inappropriate due to “the near identical
`
`nature” of the grounds of Microsoft’s petition and Apple’s petition. Paper 6, 24. Yet
`
`in its Opposition, Uniloc urges that joinder is inappropriate because these same
`
`grounds are so different that joinder will cause Uniloc undue prejudice. Paper 8, 5.
`
`In sum, Uniloc wishes to have it both ways: the petitions are too similar to warrant
`
`institution but too different to justify joinder. By asserting the ’487 patent in a
`
`temporally staggered litigation, Uniloc effectively ensured that the responsive IPR
`
`petitions would also be temporally staggered. If the Board denies joinder of the two
`
`proceedings, and then also denies institution of the present IPR, Microsoft will be
`
`severely prejudiced and Uniloc will be rewarded for its wasteful litigation practices.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Microsoft respectfully requests that the Board
`
`determine that institution of trial is warranted and join the present proceeding into
`
`the Apple IPR (IPR2019-00252).
`
`
`
`Respectfully submitted,
`
`Dated: August 15, 2019
`
`By: /Andrew M. Mason/
`Andrew M. Mason (Reg. No. 64,034)
`
`PETITIONER’S REPLY ISO MOTION FOR JOINDER
`
`Page 5
`
`
`
`IPR2019-00745
`Patent 7,167,487
`andrew.mason@klarquist.com
`Todd M. Siegel (Reg. No. 73,232)
`todd.siegel@klarquist.com
`Joseph T. Jakubek (Reg. No. 34,190)
`joseph.jakubek@klarquist.com
`John M. Lunsford (Reg. No. 67,185)
`john.lunsford@klarquist.com
`John D. Vandenberg (Reg. No. 31,312)
`john.vandenberg@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`PETITIONER’S REPLY ISO MOTION FOR JOINDER
`
`Page 6
`
`
`
`IPR2019-00745
`Patent 7,167,487
`
`CERTIFICATE OF SERVICE
`IN COMPLIANCE WITH 37 C.F.R. § 42.6(e)(4)
`The undersigned certifies that on August 15, 2019, a complete copy of
`
`Petitioner’s Reply in Support of its Motion for Joinder with Case IPR2019-
`
`00252 was served on counsel for Patent Owner via PRPS email notification:
`
`Email Addresses Provided In Uniloc 2017 Mandatory Notices:
`
`Ryan Loveless - ryan@etheridgelaw.com
`Brett Mangrum - brett@etheridgelaw.com
`James Etheridge - jim@etheridgelaw.com
`Jeffrey Huang - jeff@etheridgelaw.com
`
`
`By: /Andrew M. Mason/
`Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`Todd M. Siegel (Reg. No. 73,232)
`todd.siegel@klarquist.com
`Joseph T. Jakubek (Reg. No. 34,190)
`joseph.jakubek@klarquist.com
`John M. Lunsford (Reg. No. 67,185)
`john.lunsford@klarquist.com
`John D. Vandenberg (Reg. No. 31,312)
`john.vandenberg@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`
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