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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`_________________
`
`
`Case No. IPR2020-00224
`U.S. Patent No. 7,075,917
`
`REPLY TO PATENT OWNER’S OPPOSITION TO MOTION FOR
`JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22, 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2019-00973
`
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`TABLE OF CONTENTS
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`I. APPLE SEEKS A “COMPLETELY INACTIVE” UNDERSTUDY
`ROLE ............................................................................................................... 1
`II. UNILOC DOES NOT ADDRESS HOW JOINDER NULLIFIES THE
`GENERAL PLASTIC ANALYSIS .................................................................. 3
`III. CONCLUSION ................................................................................................ 5
`
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`ii
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`TABLE OF AUTHORITIES
`
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`Cases:
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`Apple Inc. v. Uniloc 2017 LLC, IPR2018-00580, Paper 13 at 10 (PTAB Aug.
`21, 2018)
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`Celltrion, Inc. v. Genetech, Inc., IPR2019-01019, Paper 11 at 10 (PTAB Oct.
`30, 2018)
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`Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376, Paper 8 (PTAB Jan. 21,
`2020)
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`3
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`3
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`1
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`ii
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`I.
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`APPLE SEEKS A “COMPLETELY INACTIVE” UNDERSTUDY
`ROLE
`
`Uniloc’s primary argument opposing joinder is that the definition for
`
`“understudy” used in the Motion for Joinder (Paper 3) “risk[s] causing undue
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`prejudice to Patent Owner.” (Paper 7 at 4). Uniloc cites a recent Order from the
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`Board in IPR2020-00376, Paper 8. In the cited Order, the Board stated it was
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`“uncertain what is meant by ‘[a]ll filings by [the joinder petitioner] in the joined
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`proceeding shall be consolidated with the filings of [the original petitioner.’”
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`Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376, Paper 8 at 2. The Board provided
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`further guidance on its understanding of an understudy role, stating:
`
`In our view, an “understudy role,” if taken by [joinder petitioner],
`means [joinder petitioner] will not be making any substantive filings
`and will be bound by whatever substantive filings [original
`petitioner] makes, so long as [original petitioner] remains a party in
`the proceeding. The same is true for oral hearing presentations. Also,
`[joinder petitioner] will not seek to take cross examination testimony
`of any witness or have a role in defending the cross-examination of
`a witness, so long as [original petitioner] remains a party in the
`proceeding. Likewise with other discovery matters. If and when
`[original petitioner’s] participation in the proceeding terminates,
`[joinder petitioner] can make its own filings as Petitioner. In short,
`in its “understudy role,” [joinder petitioner] will remain completely
`inactive, but for issues that are solely directed and pertinent to
`[joinder petitioner].
`
`
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`1
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`
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`Ericcson, IPR2020-00376, Paper 8 at 3.
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`
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`Apple submits that it will abide by the “completely inactive” role described
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`by the Board and quoted above in the Ericcson IPR. Apple will, so long as Microsoft
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`remains a party in IPR2019-00973, agree to the following:
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`(i) Apple will not make any substantive filings and will be bound by
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`whatever substantive filings Microsoft makes;
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`(ii) Apple will not present any argument at the oral hearing or make any
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`presentation at the oral hearing;
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`(iii) Apple will not seek to take cross examination testimony of any witness
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`or have a role in defending the cross-examination of a witness;
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`(iv) Apple will not seek any discovery from Uniloc;
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`(v) Apple will not seek to file its own appellate brief (addressing Uniloc’s
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`argument at Paper 7 at 7); and
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`(vi) Apple will otherwise remain completely inactive.
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`The above concessions by Apple should address Uniloc’s concerns regarding
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`any Apple participation. However, to the extent Uniloc still remains unclear about
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`Apple’s participation, Apple submits that it will take no substantive action in
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`IPR2019-00973 so long as Microsoft remains a party to the IPR.
`
`
`
`2
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`
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`II. UNILOC DOES NOT ADDRESS HOW JOINDER NULLIFIES THE
`GENERAL PLASTIC ANALYSIS
`
`Uniloc argues the General Plastic factors weigh against joinder (Paper 7 at 7)
`
`but provides no response to the Board’s repeated finding that a timely-filed joinder
`
`motion “effectively neutralizes” a General Plastic analysis. (Paper 3 at 8); see Apple
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`Inc. v. Uniloc 2017 LLC, IPR2018-00580, Paper 13 at 10 (PTAB Aug. 21, 2018)
`
`(instituting a joinder petition where joinder petitioner previously filed a non-
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`instituted IPR, stating joinder petitioner’s joinder motion agreeing to a passive
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`understudy role “effectively neutraliz[es] the General Plastic factors”); see also
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`Celltrion, Inc. v. Genetech, Inc., IPR2019-01019, Paper 11 at 10 (PTAB Oct. 30,
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`2018) (instituting a joinder petition where joinder petition previously filed a non-
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`instituted IPR, stating the joinder motion “effectively obviates any concerns of serial
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`harassment and unnecessary expenditures of resources”). The same concerns
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`regarding prejudice to the patent owner do not arise in a joinder situation where the
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`joining petitioner is seeking an understudy role. As the Board stated in Celltrion,
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`joinder of a petition similar to the present circumstances will obviate any concerns
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`of harassment or any unnecessary expenditures of resources. Uniloc’s Opposition
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`and discussion regarding the General Plastic factors does not address how Uniloc
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`will allegedly be prejudiced by joinder where Apple takes an understudy role. This
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`is because Uniloc will not, of course, be prejudiced by joinder.
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`
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`3
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`
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`Additionally, Apple’s Motion for Joinder explained why application of the
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`General Plastics analysis would not result in any prejudice to Uniloc. (Paper 3 at
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`9-12). Uniloc provides a factor-by-factor analysis but does not present any
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`arguments weighing in favor of denying joinder. For example, Uniloc notes Apple
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`conferred with Microsoft prior to filing the present joinder petition, seemingly
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`implying this supports factor 1. (Paper 8 at 8). Apple conferred with Microsoft to
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`determine any opposition by Microsoft to the joinder motion. Uniloc does not
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`explain how it is prejudiced by this.
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`Uniloc also does not explain how the second factor of overlapping art
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`prejudices Uniloc or wastes resources. Because Apple’s joinder petition is a
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`copycat petition of Microsoft’s petition, there of course would be overlapping art.
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`Similarly, Apple’s copycat petition does not reflect any potential benefit from
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`studying Uniloc’s patent owner preliminary response, as the substantively exact
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`same petition was filed by Apple as originally filed by Microsoft. Uniloc does not
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`explain how Apple allegedly benefitted from the Uniloc preliminary response.
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`Factors 4 and 5 are inapplicable in a joinder situation, as Apple’s joinder
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`petition and motion were timely filed. Finally, factors 6 and 7 weigh in favor of
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`institution, as the Board’s resources will be the same and the Board will be able to
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`reach a final decision within the statutory deadline, given Apple’s concession as a
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`4
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`understudy that will remain completely inactive as long as Microsoft remains a
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`party in the proceeding.
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`Because of Apple’s status as an understudy in a joinder petition, the General
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`Plastic factors are effectively neutralized and obviated.
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`III. CONCLUSION
`Petitioner Apple respectfully requests that the Board grant the Apple Petition
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`for Inter Partes Review of U.S. Patent No. 7,075,917 and then grant joinder with
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`the Microsoft Corporation v. Uniloc 2017 LLC, IPR2019-00973 proceeding.
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`Respectfully submitted,
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`
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`
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`BY: /s/ Jennifer C. Bailey
`Jennifer C. Bailey, Reg. No. 52,583
`
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`COUNSEL FOR PETITIONER APPLE INC.
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`5
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a true and correct copy of the Reply To Patent
`Owner’s Opposition To Motion For Joinder Under 35 U.S.C. § 315(c) And 37 C.F.R.
`§§ 42.22, 42.122(b) was served on January 24, 2020, via electronic service on the
`following counsel of record for Patent Owner:
`
`
`Ryan Loveless (ryan@etheridgelaw.com)
`Brett Mangrum (brett@etheridgelaw.com)
`James Etheridge (jim@etheridgelaw.com)
`Brian Koide (brian@etheridgelaw.com)
`Jeffrey Huang (jeff@etheridgelaw.com)
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`Respectfully submitted,
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`BY: /s/ Jennifer C. Bailey
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`Jennifer C. Bailey, Reg. No. 52,583
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`COUNSEL FOR PETITIONER APPLE INC.
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`6
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