`Trials@uspto.gov
`571-272-7822 Entered: April 7, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00315
`Patent 7,075,917 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2020-00315
`Patent 7,075,917 B2
`
`I. INTRODUCTION
`Ericsson Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–3, 9, and 10 of U.S. Patent No. 7,075,917 B2 (Ex. 1001, “the
`’917 patent”). Paper 2 (“Pet.”). Petitioner also filed a Motion for Joinder
`with Microsoft Corporation v. Uniloc 2017 LLC, Case IPR2019-00973 (“the
`973 IPR”). Paper 3 (“Mot.”). Uniloc 2017 LLC (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 9 (“Prelim. Resp.”). Patent
`Owner also filed an Opposition to the Motion for Joinder. Paper 7 (“Opp.”).
`Petitioner filed a Reply to Patent Owner’s Opposition. Paper 8 (“Reply”).
`We have authority under 35 U.S.C. § 314(a), which provides that an inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons described below, we institute an inter partes review of
`the challenged claims and grant Petitioner’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`The parties indicate that the ’917 patent is the subject of several court
`proceedings and the 973 IPR. Pet. vii; Paper 5, 2. The ’917 patent also was
`the subject of IPR2019-00259, where a decision to not institute inter partes
`review was rendered. Id. The ’917 patent also is the subject of IPR2020-
`00224.
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`IPR2020-00315
`Patent 7,075,917 B2
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`In the 973 IPR, we instituted an inter partes review of claims 1–3, 9,
`and 10 of the ’917 patent on the following ground:
`
`Claims Challenged
` 1–3, 9, 10
`
`35 U.S.C. §
` 103(a)
`
`References
` TR25.8251 and Abrol2
`
`Microsoft Corporation v. Uniloc 2017 LLC, IPR2019-00973, Paper 7 at 5,
`28 (PTAB Nov. 19, 2019) (“973 Decision” or “973 Dec.”).
`
`III. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same ground of
`unpatentability as the one on which we instituted review in the 973 IPR.
`Compare Pet. 3, with 973 Dec. 5, 28. Indeed, Petitioner contends that the
`Petition “is substantively identical to the Microsoft Petition. The only minor
`changes reflect changes necessary for proper identification of the party filing
`the petition and corresponding documents.” Mot. 3–4. Petitioner further
`explains that it relies on the same technical expert and a substantively
`identical declaration from that expert. Id. at 6. Petitioner does rely on a
`different “3GPP expert” as the one in the 973 IPR, but contends that its
`3GPP expert declaration “is substantially identical as Mr. Rodermund’s
`declaration in the Microsoft IPR.” Id. at 7 n.2.
`We have considered Patent Owner’s Preliminary Response. Prelim.
`Resp. 1–41. Certain of Patent Owner’s arguments and evidence supporting
`its position that claims 1–3, 9, and 10 would not have been obvious were
`previously addressed in the 973 Decision, and we need not address them
`
`1 3G TR 25.835 V1.0.0 (2000-09) – 3rd Generation Partnership Project;
`Technical Specification Group Radio Access Network; Report on Hybrid
`ARQ Type II/III (Release 2000) (Ex. 1005, “TR25.835”).
`2 US 6,507,582 B1, issued Jan. 14, 2003 (Ex. 1007, “Abrol”).
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`Patent 7,075,917 B2
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`here again. Certain other arguments against the merits of the Petition closely
`mirror arguments made in the Patent Owner Response filed in the 973 IPR
`(compare Prelim. Resp. 27–30, with 973 IPR Paper 9, 28–31). Those
`common arguments will be fully considered in the 973 IPR after Microsoft
`has filed its Reply and Patent Owner has filed its Sur-Reply, and with the
`benefit of a complete record. Based on the record before us, Patent Owner’s
`Preliminary Response arguments do not persuade us that Petitioner has not
`demonstrated a reasonable likelihood of success in prevailing on the same
`ground as instituted in the 973 IPR.
`Accordingly, we institute an inter partes review on the same ground
`as the one on which we instituted review in the 973 IPR.
`
`IV. GRANT OF MOTION FOR JOINDER
`The Petition in this proceeding was accorded a filing date of
`December 18, 2019. See Paper 4. The 973 IPR was instituted on November
`19, 2019. Petitioner filed a Motion for Joinder on December 18, 2019.
`Paper 3. Thus, Petitioner’s Motion for Joinder is timely because joinder was
`requested no later than one month after the November 19, 2019 institution
`date of the 973 IPR. See 37 C.F.R. § 42.122(b).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
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`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition;
`(3) explain what impact (if any) joinder would have on the trial schedule for
`the existing review; and (4) address specifically how briefing and discovery
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`The Petition in this case asserts the same unpatentability ground on
`which we instituted review in the 973 IPR. See Mot. 5. Petitioner further
`explains that it relies on the same prior art analysis and declaration from the
`same technical expert and a nearly identical 3GPP declaration. Id. at 6–7.
`Thus, this inter partes review does not present any ground or matter not
`already at issue in the 973 IPR.
`If joinder is granted, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of the petitioner
`(Microsoft) in the 973 IPR as a party. Id. at 8–9. Petitioner agrees to
`assume an “understudy” role in the 973 IPR, unless “Microsoft ceased
`participation in the proceeding.” Id. at 9. Petitioner further represents that it
`will not “raise any new grounds not already instituted by the Board in the
`Microsoft IPR, or introduce any argument or discovery not already
`introduced by Microsoft.” Id. at 8. Because Petitioner expects to participate
`only in a limited capacity, Petitioner submits that joinder will not impact the
`trial schedule for the 973 IPR. Id. at 6.
`Patent Owner argues that “Ericsson purports to reserve . . . rights” by
`its definition for “understudy” which risks causing undue prejudice to Patent
`Owner. Opp. 2. Patent Owner further argues that a true “understudy role” is
`one in which the petitioner remains “completely inactive.” Id. at 4.
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`Petitioner responds that it agrees to a complete understudy role (e.g.,
`inactive role) so long as Microsoft remains a party in the 973 IPR. Reply 3–
`4. Thus, Patent Owner’s concerns appear moot. Lastly, Patent Owner
`argues that Petitioner’s Joinder Motion is silent as to whether Petitioner will
`seek to file its own appeal briefing, separate and apart from Microsoft,
`should Ericsson eventually seek appellate review. Id. at 5. Patent Owner
`has failed to explain why matters before a different tribunal are relevant to
`whether we should grant the Motion for Joinder. For this reason, we are not
`persuaded by Patent Owner’s argument.
`We agree with Petitioner that joinder with the 973 IPR is appropriate
`under the circumstances. Accordingly, we grant Petitioner’s Motion for
`Joinder.
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`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–3, 9, and 10 of the ’917 patent is instituted in IPR2020-
`00315;
`FURTHER ORDERED that the Motion for Joinder with IPR2019-
`00973 is granted, and Petitioner is joined as a party to IPR2019-00973;
`FURTHER ORDERED that all further filings shall be made only in
`IPR2019-00973;
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`FURTHER ORDERED that, subsequent to joinder, the ground for
`trial in IPR2019-00973 remains unchanged;
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`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2019-00973 (Paper 8) remains unchanged;
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`FURTHER ORDERED that, throughout the trial, all filings in
`IPR2019-00973 will be consolidated, and no filing by Petitioner alone will
`be considered without prior authorization by the Board;
`FURTHER ORDERED that counsel for Microsoft will conduct the
`cross-examination of any witness produced by Patent Owner and the
`redirect of any witness produced by Microsoft in IPR2019-00973, within
`the time frames set forth in 37 C.F.R. § 42.53(c) or agreed to by the
`parties;
`FURTHER ORDERED that the case caption in IPR2019-00973 shall
`be changed in accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2019-00973.
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`Patent 7,075,917 B2
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`PETITIONER:
`
`Andrew Lowes
`Clint Wilkins
`Angela Oliver
`HAYNES AND BOONE, LLP
`andrew.lowes.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`angela.oliver.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Brian Koide
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`brian@etheridgelaw.com
`jeff@etheridgelaw.com
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`EXAMPLE CAPTION
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MICROSOFT CORPORATION,
`APPLE INC., and ERICSSON INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-009733
`Patent 7,075,917 B2
`_______________
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`3 Apple Inc., who filed a petition in IPR2020-00224, has been joined as a
`petitioner in this proceeding. Ericsson Inc., who filed a petition in IPR2020-
`00315, has been joined as a petitioner in this proceeding.
`9
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