Paper 10
`Trials@uspto.gov
`571-272-7822 Entered: April 6, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00224
`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)
`
`
`Trials@uspto.gov
`571-272-7822 Entered: April 6, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00224
`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)
`
`
`
`IPR2020-00224
`Patent 7,075,917 B2
`
`I. INTRODUCTION
`Apple 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 1 (“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 Apple Inc. v. Uniloc 2017 LLC, IPR2019-00259 (“the 259
`IPR”) where a decision to not institute inter partes review was rendered. Id.
`The ’917 patent also is the subject of IPR2020-00315. Paper 5, 2.
`
`2
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`
`
`IPR2020-00224
`Patent 7,075,917 B2
`
`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 substantially substantively identical to the Microsoft Petition,
`containing only ministerial differences related to formalities of a different
`party filing the petition.” Mot. 4. Petitioner further explains that it relies on
`the same declaration from the same expert. Id.
`We have considered Patent Owner’s Preliminary Response. Prelim.
`Resp. 1–44. 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
`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. 30–33, with 973 IPR Paper 9, 28–31). Those
`common arguments will be fully considered in the 973 IPR after Microsoft
`
`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”).
`3
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`IPR2020-00224
`Patent 7,075,917 B2
`
`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 on the merits 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.
`Patent Owner also argues that we should exercise our discretion to
`deny institution under 35 U.S.C. § 314(a), citing and discussing the General
`Plastic factors. Prelim. Resp. 14–16; Opp. 7–9 (citing General Plastic
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at
`16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)). Petitioner argues
`that the General Plastic factors do not apply here, where Petitioner seeks to
`join as a party to the 973 IPR and take an inactive or understudy role. Mot.
`8–9 (citing Apple Inc. v. Uniloc 2017 LLC, IPR2018-00580, Paper 13 at 10
`(PTAB Aug. 21, 2018) and Celltrion, Inc. v. Genetech, Inc., IPR2019-
`01019, Paper 11 at 10 (PTAB Oct. 30, 2018)); Reply 3–5.
`In General Plastic, the Board recognized certain goals of the AIA, but
`also “recognized[d] the potential for abuse of the review process by repeated
`attacks on patents.” General Plastic, Paper 19, at 16–17. We agree with
`Petitioner that the General Plastic factors are not particularly pertinent here
`where Petitioner seeks to join the 973 IPR in a “completely inactive” role.
`Reply 2. In general, an identical “me too” or “copycat” petition
`accompanied by a motion to join an earlier proceeding is not a repeated
`attack on a patent. For instance, joinder of Petitioner to the 973 IPR will not
`put additional burden on the Board or interfere with the Board’s ability to
`issue a final written decision in the 973 IPR, where here, Petitioner
`
`4
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`IPR2020-00224
`Patent 7,075,917 B2
`
`represents it will, so long as Microsoft remains a party in the 973 IPR, agree
`to a “completely inactive” role. Reply 2.
`Nor has the Petitioner used prior preliminary responses or decisions of
`the Board to tailor its substantive arguments in the Petition. Rather, the
`arguments are identical to those in the 973 IPR petition. Moreover,
`Petitioner filed its Petition no later than one month after the institution date
`of the 973 IPR in compliance with 37 C.F.R. § 42.122(b) and is timely,
`notwithstanding the General Plastic timing factors. For these reasons, and
`based on the record before us, we determine that instituting review here
`would not result in an abuse of the review process.
`
`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.
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition;
`
`5
`
`
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`IPR2020-00224
`Patent 7,075,917 B2
`
`(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. 4–5. Petitioner further
`explains that it relies on the same prior art analysis and declaration from the
`same expert. Id. at 5–6. 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 6–8. Petitioner agrees to
`assume an “understudy” role in the 973 IPR, unless “Microsoft ceases to
`participate in the Microsoft IPR.” Id. at 7. 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 6–8.
`Patent Owner argues that “Apple purports to reserve rights by its
`definition for ‘understudy’ which risk causing undue prejudice to Patent
`Owner.” Opp. 4. Patent Owner further argues that a true “understudy role”
`is one in which the petitioner remains “completely inactive.” Id. at 6.
`Petitioner responds that it will remain “completely inactive” so long as
`Microsoft remains a party in the 973 IPR. Reply 2. 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 Apple eventually seek
`appellate review. Id. at 7. Patent Owner has failed to explain why matters
`
`6
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`
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`IPR2020-00224
`Patent 7,075,917 B2
`
`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.
`
`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-
`00224;
`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;
`
`FURTHER ORDERED that, subsequent to joinder, the ground for
`trial in IPR2019-00973 remains unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2019-00973 (Paper 8) remains unchanged;
`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
`
`7
`
`
`
`IPR2020-00224
`Patent 7,075,917 B2
`
`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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`8
`
`
`
`IPR2020-00224
`Patent 7,075,917 B2
`
`PETITIONER:
`
`Jennifer C. Bailey
`Adam P. Seitz
`ERISE IP, P.A
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.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
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`
`
`IPR2020-00224
`Patent 7,075,917 B2
`
`EXAMPLE CAPTION
`
`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
`_______________
`
`
`
`
`
`
`
`
`
`
`
`
`
`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.
`10
`
`
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