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`IPR2019-01282
`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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`BLACKBERRY CORP.
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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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`IPR2019-01282
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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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`1
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`IPR2019-01282
`U.S. Patent No. 7,167,487
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`I.
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`INTRODUCTION
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`Petitioner’s two IPRs against the ’487 patent (IPR2019-01282 and IPR2019-
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`01283) are the third and fourth IPRs filed against the same patent. Petitioner’s
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`petitions are cumulative of the first three petitions, filed by Apple Inc. (IPR2019-
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`00222, IPR2019-00252) and Microsoft Corporation (IPR2019-00744, IPR2019-
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`00745). Petitioner challenges the same claims as Apple and Microsoft. Further,
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`Petitioner’s references are identical to those asserted by Apple and, with the
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`exception of the TS23.107 reference asserted by Microsoft for each ground, identical
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`to the references asserted by Microsoft. Patent Owner requests that the Board
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`exercise its discretion under 35 U.S.C. § 325(d) to reject Petitioner’s petitions and
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`joinder motions.1
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`II. ARGUMENT
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`Section 315(c) requires that a petition accompanying a request for joinder
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`“warrants the institution of an inter partes review under section 314.” 35 U.S.C. §
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`315(c). Here, the Board should exercise its discretion under 35 U.S.C. § 325(d) to
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`reject Petitioner’s petitions, and consequently its joinder motions, because the same
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`prior art and arguments are pending before the Board in the Apple IPRs (IPR2019-
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`00222 and IPR2019-00252) and the Microsoft IPRs (IPR2019-00744 and IPR2019-
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`00745). Before Petitioner filed its petitions and joinder motions, the Board had
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`already issued decisions for institution in the Apple IPRs. See IPR2019-00222,
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`1 Patent Owner reserves the right to file a preliminary response more fully
`articulating the reasons for denying the petition. It files this opposition to preserve,
`to the extent necessary, certain arguments it may raise in its preliminary response.
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`2
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`Paper 11 (June 4, 2019); IPR2019-00252, Paper 11 (June 4, 2019). Further, Patent
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`Owner had already filed preliminary responses in the Apple IPRs and the Microsoft
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`IPR2019-01282
`U.S. Patent No. 7,167,487
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`IPRs.
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`Under 35 U.S.C. § 325(d),
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`In determining whether to institute or order a proceeding under . . .
`chapter 31, the Director may take into account whether, and reject the
`petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.
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`In Unified Patents, Inc. v. Personal Web Tech., the Board denied Unified Patents’
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`petitions and joinder motions where there were already “multiple, overlapping
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`petitions, each of which presented grounds of unpatentability based on [the same
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`primary reference] for many of the same claims.” Unified Patents, Inc. v. Personal
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`Web Tech., LLC, IPR2014- 00702, Paper 13, p. 6 (PTAB 7/24/2014). The Board
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`reasoned that the pending outcome of one IPR before the Federal Circuit “may
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`render moot” the need to reach a final written decision regarding certain claims. Id.
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`at 8. It further reasoned that:
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`regardless of the outcome of [the IPR] before the Federal Circuit, each
`of the challenged claims is under review [in another IPR] and, if that
`trial were to proceed to a final written decision, a determination will be
`made as to whether [the claims challenged by Unified] are unpatentable
`as anticipated by, or obvious over, [the reference relied on by Unified].
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`Id. The same reasoning applies here. The Apple IPRs have already been instituted
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`on the same claims challenged and the same references relied on by Petitioner.
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`3
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`IPR2019-01282
`U.S. Patent No. 7,167,487
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`III. CONCLUSION
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`Taking into consideration the efficient administration of the Office under 35
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`U.S.C. § 316(b), the Board should exercise its discretion under 35 U.S.C. § 325(d)
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`and deny Petitioner’s petitions and joinder motions.
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`Date: August 1, 2019
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`Respectfully submitted,
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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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`4
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`IPR2019-01282
`U.S. Patent No. 7,167,487
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`CERTIFICATE OF SERVICE
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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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`Lead Counsel
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`Robert Mattson
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`42850
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`cpdocketmattson@oblon.com
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`Alexander Englehart 62031
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`cpdocketenglehart@oblon.com
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`First Back up
`Counsel
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`Date: August 1, 2019
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`Respectfully submitted,
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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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