IN THE 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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`
`
`Case No. IPR2019-01283
`Patent No. 7,167,487
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.122(b) TO
`RELATED INTER PARTES REVIEW IPR2019-00252
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BLACKBERRY CORP.
`
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
`
`
`Case No. IPR2019-01283
`Patent No. 7,167,487
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.122(b) TO
`RELATED INTER PARTES REVIEW IPR2019-00252
`
`
`
`
`
`TABLE OF CONTENTS
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`
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`Statement of Precise Relief Requested ................................................ 1
`I.
`II. Background and Related Proceedings ................................................. 2
`III. Statement of Reasons for Relief Requested ........................................ 3
`A.
`Legal Standard ............................................................................ 3
`B.
`Petitioner’s motion for joinder is timely. ................................... 4
`C. Each factor weighs in favor of joinder. ....................................... 5
`1.
`Joinder with the Apple IPR is appropriate. ...................... 5
`2.
`Petitioner proposes no new grounds of
`
`unpatentability. ................................................................. 6
`3.
`Joinder will not unduly burden or negatively
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`impact the Apple IPR trial schedule ................................. 7
`4.
`Petitioner proposes procedures to simplify
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`briefing and discovery. ....................................................... 8
`IV. Conclusion ........................................................................................... 10
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`i
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Kyocera Corp. v. Softview LLC,
` Case No. IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ................ 4
`Mylan Pharmaceuticals Inc. v. Dr. Falk Pharma GmbH,
`Case No. IPR2016-01386, Paper 9 (PTAB Nov. 30, 2016) ................ 11
`Mylan Pharms. Inc. v. Novartis AG,
`Case No. IPR2015-00268, Paper 17 (PTAB Apr. 10, 2015) .............. 10
`Samsung Elecs., Co., Ltd., et al. v. Raytheon Co.,
`Case No. IPR2016-00962, Paper 12 (PTAB Aug. 24, 2016) ................ 4
`Sony Corp. v. Memory Integrity, LLC,
`IPR2015-01353, Paper 11 (PTAB Oct. 15, 2015) ......................... 7, 10
`
`
`
`Rules
`37 C.F.R. § 42.122(b) .......................................................................... 1, 4, 5
`37 C.F.R. § 42.53 ....................................................................................... 10
`
`
`Statutes
`35 U.S.C. § 315........................................................................................ 1, 4
`
`
`
`
`ii
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`
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`I.
`
`
`Statement of Precise Relief Requested
`
`BlackBerry Corp. (“BlackBerry” or “Petitioner”) respectfully
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`submits this Motion for Joinder together with a Petition for Inter Partes
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`Review of U.S. Patent No. 7,167,487 (“BlackBerry Petition”) filed
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`contemporaneously herewith. The Board instituted inter partes review
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`of claims 11–13 of the ’487 Patent in Apple, Inc. et al. v. Uniloc 2017
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`LLC, Case No. IPR2019-00252 on June 4, 2019 (“Apple IPR”). Pursuant
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`to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), BlackBerry requests
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`institution of inter partes review for claims 11–13 of the ’487 Patent and
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`requests joinder with IPR2019-00252.
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`BlackBerry’s request for joinder is timely because it is made no
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`later than one month after the June 4, 2019 institution date of the
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`Apple IPR. The BlackBerry Petition is substantively identical to the
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`petition resulting in the Apple IPR (“the Apple Petition”), and
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`BlackBerry only seeks institution on the same claims, prior art, and
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`grounds for unpatentability that were instituted in the Apple IPR.
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`Therefore, the BlackBerry IPR warrants institution for at least the
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`same reasons that the Board instituted the Apple IPR. In addition,
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`BlackBerry proposes to streamline discovery and briefing by taking an
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`
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`1
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`
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`“understudy role.”
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`Petitioners in the Apple IPR do not oppose BlackBerry’s instant
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`motion.
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`Joinder is appropriate here because it will not unduly burden or
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`prejudice the parties to the Apple IPR and will efficiently resolve the
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`question of the ’487 Patent’s validity, based on the grounds raised in
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`both the Apple IPR and the BlackBerry IPR, in a single proceeding.
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`II. Background and Related Proceedings
`
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`The ’487 patent has been asserted in the following litigations:
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`Uniloc 2017 LLC v. BlackBerry Corp., Civil Action No. 3:18-cv-03069-N
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`(N.D. Tex. 2018); Uniloc USA, Inc. et al. v. BlackBerry Corp., Case No.
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`3:18-cv-01886-N (N.D. Tex. 2018); Uniloc Luxembourg SA et al. v.
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`Samsung Group et al., Case No. 2:18-cv-00044 (E.D. Tex. 2018); Uniloc
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`Luxembourg SA et al. v. LG Corp., Case No. 3:18-cv-00561 (N.D. Tex.
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`2018); Uniloc 2017, LLC v. HTC Corp., Case No. 2:18-cv-01731 (W.D.
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`Wash. 2018); Uniloc 2017, LLC v. ZTE et al., Case No. 3:18-cv-03070
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`(N.D. Tex. 2018); Uniloc 2017, LLC v. Motorola Mobility et al., Case No.
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`1:18-cv-01843 (D. Del. 2018); Uniloc Lexembourg SA et al. v. Huawei
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`Techs., Co., Ltd. et al., Case No. 2:18-cv-00072 (E.D. Tex. 2018); Uniloc
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`2
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`
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`2017, LLC et al. v. ZTE et al., Case No. 2:18-cv-00308 (E.D. Tex. 2018);
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`Uniloc Licensing USA, LLC et al. v. Microsoft Corp., Case No. 8:18-cv-
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`01279 (C.D. Cal. 2018); Uniloc Luxembourg SA et al. v. LG Corp., Case
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`No. 3:18-cv-006740 (N.D. Cal. 2018); Uniloc 2017, LLC et al. v. ZTE et
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`al., Case No. 3:18-cv-02837 (N.D. Tex. 2018); Uniloc 2017, LLC v.
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`Microsoft Corp., Case No. 8:19-cv-00428 (C.D. Cal. 2019); Uniloc 2017,
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`LLC v. AT&T, Inc., Case No. 2:19-cv-00102 (E.D. Tex. 2019); Uniloc
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`Luxembourg SA et al. v. Apple Inc., Case No. 4:19-cv-01693 (N.D. Cal.
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`2019); Uniloc Luxembourg SA et al. v. Apple Inc., Case No. 1:18-cv-
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`00161 (W.D. Tex. 2018).
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`In addition to the Apple IPR, the ’487 patent is also the subject of
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`IPR2019-00222, filed by Apple, Inc., LG Electronics Inc., Samsung
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`Electronics Co., Ltd., and Samsung Electronics America, Inc.
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`BlackBerry is also filing a second petition for inter partes review of the
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`’487 patent that is substantially identical to IPR2019-00222. Further,
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`the ’487 patent has been targeted by two petitions filed by Microsoft
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`Corp., IPR2019-00744 and IPR2019-00745.
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`III. Statement of Reasons for Relief Requested
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`A. Legal Standard
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`3
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`
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`The Board may join as a party to an instituted inter partes review
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`a person who has properly filed a petition for inter partes review that
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`warrants institution. 35 U.S.C. § 315(c). A motion requesting joinder
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`must be filed no later than one month after the date of institution for
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`the inter partes review to which the person seeks joinder. 37 C.F.R. §
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`42.122(b). In addition, a petition for inter partes review is not subject to
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`the one-year statutory time bar when the petition is accompanied by a
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`request for joinder. 35 U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
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`A motion for joinder should (1) set forth reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in
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`the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule for the existing review; and (4) address specifically how
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`briefing and discovery may be simplified. Samsung Elecs., Co., Ltd., et
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`al. v. Raytheon Co., Case No. IPR2016-00962, Paper 12 at 5 (PTAB Aug.
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`24, 2016) (citing Kyocera Corp. v. Softview LLC, Case No. IPR2013-
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`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)).
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`
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`B. Petitioner’s motion for joinder is timely.
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`The Motion for Joinder is timely because it is filed within one
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`month of the June 4, 2019 institution of the Apple IPR. See 37 C.F.R. §
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`
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`4
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`
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`42.122(b).
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`C. Each factor weighs in favor of joinder.
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`1.
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`Joinder with the Apple IPR is appropriate.
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`Joinder with the Apple IPR is appropriate because the BlackBerry
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`Petition involves the same patent, challenges the same claims, relies on
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`declarations from the same experts, and is based on the same grounds
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`and combinations of prior art submitted in the Apple Petition. 1
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`Further, the BlackBerry Petition relies solely on the grounds from the
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`Apple IPR that the Board instituted on June 4, 2019. The BlackBerry
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`Petition is substantively identical to the Apple Petition, containing only
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`minor differences related to the formalities required by a different party
`filing the petition and the updated claim construction standard. Other
`than these minor differences, the BlackBerry Petition includes no
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`changes to the facts, citations, evidence, or arguments from those
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`presented in the Apple IPR. Therefore, the BlackBerry Petition
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`1 While the claim construction standard changed on November 13, 2018,
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`this does not impact any of the substantive analysis in the petition. In
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`this regard, Patent Owner did not explicitly construe any claim terms in
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`its Patent Owner Preliminary Response.
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`
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`5
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`
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`warrants institution for at least the same reasons that the Board
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`instituted the Apple IPR. Because these proceedings are substantively
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`identical, good cause exists for joinder with the Apple IPR so that the
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`Board can effectively resolve all grounds in a single proceeding.
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`In addition, the substantial questions of invalidity as to the ’487
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`Patent are of interest to BlackBerry, which stands accused of infringing
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`the ’487 Patent, as well to the broader public interest in the likely
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`invalidity of an issued patent. Joinder is therefore appropriate for the
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`additional reason that the invalidity grounds as to the challenged and
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`joined claims can be resolved through the participation of BlackBerry
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`even if the original petitioners in IPR2019-00252 were to reach a
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`settlement with Patent Owner, or otherwise cease to participate in the
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`proceeding.
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`2.
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`Petitioner proposes no new grounds of unpatentability.
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`As discussed above, the BlackBerry Petition does not present any
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`new grounds of unpatentability, and is substantively identical to the
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`Apple Petition. This factor weighs in favor of granting joinder because
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`the Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in
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`
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`6
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`
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`the existing proceeding.” Samsung Elecs. Co., Paper 12 at
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`9 (internal quotations and citations omitted) (emphases in the original).
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`3.
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`Joinder will not unduly burden or negatively impact the
`Apple IPR trial schedule
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`
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`Because the BlackBerry Petition is substantively identical to the
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`Apple Petition, with the same grounds challenging the same claims, as
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`instituted by the Board, there are no new issues for Patent Owner to
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`address. Due to the same issues being presented in the Apple IPR,
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`Patent Owner will not be required to present any additional responses
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`or arguments. See Sony Corp. v. Memory Integrity, LLC, IPR2015-
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`01353, Paper 11 at 6 (PTAB Oct. 15, 2015) (granting IPR and motion for
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`joinder where “joinder should not necessitate any additional briefing or
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`discovery from Patent Owner beyond that already required in [the
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`original IPR].”).
`
`Without any new issues present, there is no reason to delay or
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`alter the trial schedule already present in the Apple IPR, and
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`BlackBerry explicitly consents to the existing trial schedule. Further,
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`the Patent Owner Preliminary Response already filed in the Apple IPR
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`addresses the BlackBerry Petition because the issues presented are
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`substantively identical to the issues of the Apple Petition. See Patent
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`
`
`7
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`
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`Owner’s Preliminary Response, Case No. IPR2019-00252 (Paper 9).
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`Also, because the BlackBerry Petition relies on the same experts
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`and substantively identical declarations, only a single deposition is
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`needed for the joined proceeding.
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`4.
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`Petitioner proposes procedures to simplify briefing and
`discovery.
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`Additionally, BlackBerry agrees to take an “understudy” role in
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`
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`the joined proceeding, absent termination of the original petitioners,
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`Apple, Inc., LG Electronics Inc., Samsung Electronics Co., Ltd., and
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`Samsung Electronics America, Inc. as parties. In particular,
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`BlackBerry agrees that, in the joined proceeding, the following
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`conditions shall apply so long as Apple, Inc., LG Electronics Inc.,
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`Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
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`remain active parties, as previously approved by the Board in similar
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`circumstances:
`
`(a)
`
`all filings by BlackBerry in the joined proceeding be
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`consolidated with the filings of Apple, Inc., LG Electronics
`
`Inc., Samsung Electronics Co., Ltd., and Samsung
`
`Electronics America, Inc. unless a filing solely concerns
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`issues that do not involve Apple, Inc., LG Electronics Inc.,
`
`
`
`8
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`
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`Samsung Electronics Co., Ltd., and Samsung Electronics
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`America, Inc.
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`(b) BlackBerry shall not be permitted to raise any new grounds
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`not already instituted by the Board, or introduce any
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`argument or discovery not already introduced by Apple, Inc.,
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`LG Electronics Inc., Samsung Electronics Co., Ltd., and
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`Samsung Electronics America, Inc.
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`(c) BlackBerry shall be bound by any agreement between
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`Patent Owner and Apple, Inc., LG Electronics Inc., Samsung
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`Electronics Co., Ltd., and Samsung Electronics America, Inc.
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`concerning discovery and/or depositions; and
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`(d) BlackBerry at deposition shall not receive any direct, cross
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`examination, or redirect time beyond that permitted from
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`Apple, Inc., LG Electronics Inc., Samsung Electronics Co.,
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`Ltd., and Samsung Electronics America, Inc. in this
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`proceeding alone under either 37 C.F.R. § 42.53 or any
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`agreement between Patent Owner and Apple, Inc., LG
`
`Electronics Inc., Samsung Electronics Co., Ltd., and
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`Samsung Electronics America, Inc.
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`
`
`9
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`
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`See Mylan Pharms. Inc. v. Novartis AG, Case No. IPR2015-00268,
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`Paper 17 at 5–6 (PTAB Apr. 10, 2015) (finding that same proposed
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`limitations “are consistent with the ‘understudy’ role that Petitioner
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`agrees to assume, as well as Petitioner’s assertion that its presence
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`would not require introducing any additional arguments, briefing, or
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`discovery.”). BlackBerry would assume a primary role only if Apple,
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`Inc., LG Electronics Inc., Samsung Electronics Co., Ltd., and Samsung
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`Electronics America, Inc. ceased to participate in the proceeding. The
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`Board has consistently found that the acceptance of an “understudy”
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`role removes any undue complications or delay that might allegedly
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`result from joinder. See, e.g., Sony Corp. v. Memory Integrity, LLC,
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`Case No. IPR2015-01353, Paper 11 at 7 (PTAB Oct. 15, 2015); see also
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`Mylan Pharmaceuticals Inc. v. Dr. Falk Pharma GmbH, Case No.
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`IPR2016-01386, Paper 9 at 6 (PTAB Nov. 30, 2016).
`
`Petitioners in the Apple IPR do not oppose BlackBerry’s instant
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`motion.
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`IV. Conclusion
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`For the reasons stated above, BlackBerry respectfully requests
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`that the Board (1) institute BlackBerry’s concurrently filed Petition for
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`
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`10
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`
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`Inter Partes Review of U.S. Patent No. 7,167,487, and (2) grant joinder
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`with Apple, Inc. et al. v. Uniloc 2017 LLC, Case No. IPR2019-00252.
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`
`
`
`Date: July 2, 2019
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`
`
`Customer Number 22850
`Tel. (703) 413-3000
`Fax. (703) 413-2220
`
`Respectfully submitted,
`
`By:
`
`/Robert C. Mattson/
`Robert C. Mattson
`Reg. No. 42,850
`Lead Counsel for BlackBerry Corp.
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`
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`11
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e)
`
`and 42.105(b) on the Patent Owner on July 2, 2019 by filing a copy of
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`this MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c), 37 C.F.R. §
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`42.122(b) TO RELATED INTER PARTES REVIEW IPR2019-00252
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`through the Patent Trial and Appeal Board End to End and sending of
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`a copy of the same via pre-paid, UPS overnight delivery at the
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`correspondence address of record for U.S. Patent 7,167,487:
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`Phillips Intellectual Property & Standards
`465 Columbus Avenue, Suite 340
`Valhalla, NY 10595
`With a courtesy copy to the following counsels of record in the
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`related Inter Partes Review IPR2019-00252:
`
`Petitioners’ Counsel
`
`W. Karl Renner
`Roberto Devoto
`Ayan Roy-Chowdhury
`Fish & Richardson, P.C.
`3200 RBC Plaza,
`60 South Sixth Street
`Minneapolis, MN 55402
`
`
`Patent Owner’s Counsel
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd.,
`Ste. 120-324
`Southlake, TX 76092
`
`
`By: /Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
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`
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