`
`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
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2019-00973
`
`
`
`
`
`
`TABLE OF CONTENTS
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`I. STATEMENT OF THE PRECISE RELIEF REQUESTED ............................ 1
`II. STATEMENT OF MATERIAL FACTS ............................................................ 1
`III. STATEMENT OF THE PRECISE RELIEF REQUESTED ........................... 2
`A. Legal Standard ............................................................................................... 2
`B. Petitioner’s Motion for Joinder is Timely .................................................... 3
`C. Each Factor Weighs in Favor of Joinder ...................................................... 3
`1. Joinder Is Appropriate with the Microsoft IPR ............................................. 4
`2. Petitioner Proposes No New Grounds of Unpatentability ............................. 5
`3. Joinder Will Not Unduly Burden or Negatively Impact the Microsoft IPR
`Trial Schedule ...................................................................................................... 5
`4. Procedures to Simplify Briefing and Discovery ............................................ 6
`INAPPLICABILITY OF GENERAL PLASTIC ........................................... 8
`IV.
`V. CONCLUSION .............................................................................................. 12
`
`
`
`
`
`
`ii
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`
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`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Apple Inc. (“Petitioner”) respectfully submits this Motion for Joinder with a
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`concurrently-filed Petition for Inter Partes Review of U.S. Patent No. 7,075,917 (the
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`“Apple Petition”). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b),
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`Petitioner requests institution of an inter partes review and joinder with the inter
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`partes review in Microsoft Corporation v. Uniloc 2017 LLC, IPR2019-00973 (the
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`“Microsoft IPR”), which the Patent Trial and Appeal Board (the “Board”) instituted
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`on November 19, 2019. Petitioner’s request for joinder is timely under 37 C.F.R. §§
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`42.22 and 42.122(b), as it is submitted no later than one month after the November
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`19, 2019, institution date of the Microsoft IPR. The Apple Petition is also narrowly
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`tailored to the same claims, prior art, and grounds for unpatentability that are the
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`subject of the Microsoft IPR. In addition, Petitioner is willing to streamline discovery
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`and briefing.
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`Petitioner submits that joinder is appropriate because it will not unduly
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`burden or prejudice the parties to the Microsoft IPR while efficiently resolving the
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`question of the ’917 Patent’s validity in a single proceeding.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`Petitioner previously filed an IPR against the ’917 Patent challenging
`
`claims 1-3 and 9-10, for which institution was denied. See Apple Inc. v. Uniloc 2017
`
`LLC, IPR2019-00259, Paper 7 (PTAB Jun. 27, 2019) (“Apple ’259 IPR”).
`
`
`
`1
`
`
`
`2.
`
`On April 19, 2019, Microsoft filed a petition for inter partes review
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`challenging claims 1-3 and 9-10 (the “Challenged Claims”) of the ʼ917 Patent. See
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`Microsoft IPR, IPR2019-00973, Paper 2 at 1.
`
`3.
`
`On November 19, 2019, the Board instituted Microsoft’s petition for
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`inter partes review on all Challenged Claims. See Microsoft IPR, IPR2019-00973,
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`Paper 7.
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`4.
`
`The ’917 Patent has not and is presently not the subject of any district
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`court litigation.
`
`III. STATEMENT OF THE PRECISE RELIEF REQUESTED
`A.
`Legal Standard
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
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`inter partes review petition to an instituted inter partes review proceeding. See 35
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`U.S.C. § 315(c). A motion for joinder must be filed within one month of the Board
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`instituting an original inter partes review. 37 C.F.R. § 42.122(b). In deciding
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`whether to exercise its discretion and permit joinder, the Board considers factors,
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`including: (1) the reasons why joinder is appropriate; (2) whether the new petition
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`presents any new grounds of unpatentability; (3) what impact, if any, joinder would
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`have on the trial schedule for the existing review; and (4) how briefing and
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`discovery may be simplified. See Kyocera Corporation v. Softview LLC, IPR2013-
`
`00004, Paper 15 at 4 (PTAB Ap. 24, 2013).
`
`
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`2
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`
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`B.
`Petitioner’s Motion for Joinder is Timely
`This Motion for Joinder is timely because it is filed within one month of the
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`November 19, 2019, institution decision of the Microsoft IPR. See 37 C.F.R.
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`§ 42.122(b). Further, the one-year bar set forth in 37 C.F.R. § 42.101(b) does not
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`apply to the Apple Petition because Apple has not been sued in a district court
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`proceeding on the ’917 Patent. 37 C.F.R. § 42.122(b).
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`C.
`Each Factor Weighs in Favor of Joinder
`Each of the four factors considered by the Board weighs in favor of joinder
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`here. Specifically, the Apple Petition does not present any new grounds of
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`unpatentability; rather it is substantively identical to the Microsoft Petition.
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`Further, joinder will have minimal, if any, impact on the trial schedule, as all issues
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`are substantively identical and Petitioner will accept an “understudy” role. See
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`Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 at 5-6
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`(PTAB Oct. 15, 2015) (granting IPR where petitioners requested an “understudy”
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`role); see also id. at Paper 4 at 5-7 (Motion for Joinder discussing “understudy”
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`role). Lastly, the briefing and discovery will be simplified by resolving all issues
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`in a single proceeding.
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`Accordingly, joinder is appropriate here. See id. at Paper 11 at 5-6 (granting
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`institution of IPR and motion for joinder where petitioners relied “on the same
`
`
`
`3
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`
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`prior art, same arguments, and same evidence, including the same expert and a
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`substantively identical declaration.”); see also id. at Paper 4 at 4-5.
`
`1.
`Joinder Is Appropriate with the Microsoft IPR
`Joinder with the Microsoft IPR is appropriate because the Apple Petition
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`involves the same patent, challenges the same claims, relies on the same expert
`
`declaration, and is based on the same grounds and combinations of prior art
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`submitted in the Microsoft Petition. The Apple Petition is substantially
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`substantively identical to the Microsoft Petition, containing only ministerial
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`differences related to formalities of a different party filing the petition. The only
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`change not related to a ministerial difference is at Section III(C). In this section,
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`the Microsoft Petition referenced the previously-filed Apple ’259 IPR. Because
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`referencing the Apple ’259 IPR would be inapplicable to the present Apple
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`Petition, the Petition removes the reference to the “third-party petition,” i.e., the
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`Apple ’259 IPR. A redlined copy of the Microsoft Petition showing the changes of
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`the presently-filed Apple Petition relative to the Microsoft Petition is attached as
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`Exhibit 1012.
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`Other than these mere differences related to formalities, there are no changes
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`in the Apple Petition relative to the facts, citations, evidence, or arguments
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`presented in the Microsoft Petition. Thus, the Apple Petition presents the same
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`grounds of unpatentability as the Microsoft Petition and does not present any new
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`4
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`
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`theories/arguments. Because these proceedings are substantively identical, good
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`cause exists for joining this proceeding with the Microsoft IPR so that the Board
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`can efficiently resolve all grounds in both the Apple and Microsoft Petitions in a
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`single proceeding. Id.
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`2.
`Petitioner Proposes No New Grounds of Unpatentability
`As noted above, the Apple Petition does not present any new grounds of
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`unpatentability. The Apple Petition is substantively identical to the Microsoft
`
`Petition. The Apple Petition presents the unpatentability of the same claims of the
`
`same patent in the same way as the Microsoft Petition.
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`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Microsoft IPR Trial Schedule
`Because the Apple Petition is substantively identical to the Microsoft
`
`Petition, with the same grounds rejecting the same claims as instituted by the
`
`Board, there are no new issues for Patent Owner to address. Due to the same issues
`
`being presented in the Microsoft Petition, Patent Owner will not be required to
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`present any additional responses or arguments. See Sony Corp., IPR2015-01353,
`
`Paper 11 at 6 (granting IPR and motion for joinder where “joinder should not
`
`necessitate any additional briefing or discovery from Patent Owner beyond that
`
`already required in [the original IPR].”); see also id. at Paper 4 at 5-7. Further, the
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`Patent Owner Preliminary Response already filed in the Microsoft IPR addresses
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`any and all issues in the Apple Petition due to the issues being substantively
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`
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`5
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`
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`identical to the issues of the Microsoft Petition. See Microsoft IPR, IPR2019-
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`00973, Paper 6 (Patent Owner Preliminary Response).
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`The Patent Owner Response will also not be negatively impacted because
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`the issues presented in the Microsoft Petition are identical to the issues presented
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`in the Apple Petition. Patent Owner will not be required to provide any additional
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`analysis or arguments beyond what it will already provide in responding to the
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`Microsoft Petition. Also, because the Apple Petition relies on the same expert and
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`a substantively identical declaration, only a single deposition is needed for the
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`proposed joined proceeding.
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`Joinder of this proceeding with the Microsoft IPR does not unduly burden
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`or negatively impact the trial schedule in any meaningful way. Further, even if a
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`small adjustment of the trial schedule was necessary, this is already provided for in
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`the rules and is a routine undertaking by parties in IPR proceedings. See 37 C.F.R.
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`§ 42.100(c). Thus, a slight adjustment in the trial schedule, should one be needed,
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`is not enough of a reason to deny joining the present Apple Petition with the
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`Microsoft IPR.
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`4.
`Procedures to Simplify Briefing and Discovery
`The Microsoft Petition and Apple Petition present substantively identical
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`grounds of rejection, including the same art combinations against the same claims.
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`Additionally, Petitioner explicitly agrees to take a passive “understudy” role, as
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`6
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`
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`described by the Board:
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`“(a) all filings by [Petitioner] in the joined proceeding be consolidated
`with [the filings of the petitioner in the Microsoft IPR], unless a filing
`solely concerns issues that do not involve [the petitioner in the
`Microsoft IPR]; (b) [Petitioner] shall not be permitted to raise any new
`grounds not already instituted by the Board in the [Microsoft IPR], or
`introduce any argument or discovery not already introduced by [the
`petitioner in the Microsoft IPR]; (c) [Petitioner] shall be bound by any
`agreement between [Patent Owner] and [the petitioner in the Microsoft
`IPR] concerning discovery and/or depositions; and (d) [Petitioner] at
`deposition shall not receive any direct, cross-examination or redirect
`time beyond that permitted for [the petitioner in the Microsoft IPR]
`alone under either 37 C.F.R. § 42.53 or any agreement between [Patent
`Owner] and [the petitioner in the Microsoft IPR].”
`
`See Mylan Pharm. Inc. v. Novartis AG and LTS Lohmann Therapie-Systeme AG,
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`IPR2014-00550, Paper 38 at 5 (PTAB Apr. 10, 2015) (emphasis in original).
`
`Petitioner Apple will assume the primary role only if Microsoft ceases to
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`participate in the Microsoft IPR. Petitioner Apple has conferred with counsel for
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`Petitioner Microsoft, and Petitioner Microsoft does not oppose joinder of Petitioner
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`Apple in an “understudy” role.
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`By Petitioner Apple accepting an “understudy” role, Patent Owner and
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`Petitioner Microsoft can comply with the current trial schedule and avoid any
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`duplicative efforts by the Board or the Patent Owner. These steps will minimize
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`7
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`
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`any potential complications or delay that potentially may result by joinder. See
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`Sony Corp., IPR2015-01353, Paper 11 at 6-7 (granting IPR and motion for joinder
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`because “joinder would increase efficiency by eliminating duplicative filings and
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`discovery, and would reduce costs and burdens on the parties as well as the Board”
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`where petitioners agreed to an “understudy” role.); see also id. at Paper 4 at 6-7.
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`IV.
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`INAPPLICABILITY OF GENERAL PLASTIC
`Petitioner respectfully submits application of the General Plastic analysis is
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`inapplicable here. In General Plastic, the Board set forth a series of factors that may
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`be analyzed for follow-on petitions to help conserve the finite resources of the Board.
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`Here, both Apple and Microsoft submitted separate, independent petitions. Apple’s
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`petition (IPR2019-00259) was denied while Microsoft’s petition (IPR2019-00973)
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`was granted. In the current motion, Apple merely seeks to join Microsoft’s petition
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`and does not present any new grounds. As such, Apple respectfully submits that
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`General Plastic does not apply in this circumstance because Apple would be taking
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`an understudy role and the Board’s finite resources would not be impacted.
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`Moreover, a joinder petition in these circumstances is not the type of serial petition
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`to which General Plastic applies. The PTAB has previously stated, under similar
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`facts, that a joinder petition “effectively neutralizes” a General Plastic analysis. See
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`Apple Inc. v. Uniloc 2017 LLC, IPR2018-00580, Paper 13 at 10 (PTAB Aug. 21,
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`2018) (instituting a joinder petition where joinder petitioner previously filed a non-
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`8
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`
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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”).
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`In the event the Board does analyze the General Plastic factors, those factors
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`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co., Ltd.
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`v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16 (PTAB Sept. 6, 2017)
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`(Paper 19) (precedential as to § II.B.4.i).
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`The first General Plastic factor is whether the same petitioner previously filed
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`a petition directed to the same claims of the same patent. While Apple previously
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`did file a petition challenging claims 1-3 and 9-10 of the ’917 Patent, this factor is
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`irrelevant because Apple only seeks to join Microsoft’s petition in an understudy
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`role.
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`The second factor is whether at the time of filing the first petition the petitioner
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`knew or should have known of the prior art asserted in the second petition. This
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`factor is neutral, if not inapplicable, in the General Plastic analysis. Here,
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`Microsoft’s petition and Apple’s petition only share one item of prior art. However,
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`9
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`because Apple is merely seeking to join in an understudy role, the factor is neutral,
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`at best, in determining whether to institute.
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`The third factor is whether at the time of filing of the second petition the
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`petitioner already received the patent owner’s preliminary response to the first
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`petition or received the Board’s decision on whether to institute review in the first
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`petition. This factor weighs against denial of institution. Although the Board ruled
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`to deny institution in the Apple IPR, Apple has not provided any substantive analysis
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`that addresses either patent owner’s Preliminary Response or the Board’s Institution
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`Decision. Indeed, because this is a Motion for Joinder, Apple is submitting a
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`substantively identical petition and has not added to, or changed, any of the
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`substantive arguments in response to either the Patent Owner’s Preliminary
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`Response or the Board’s Institution Decision. Moreover, because the present Petition
`
`is submitted as a joinder and Apple will serve an understudy role, the petition is not
`
`an attempt to harass the Patent Owner or otherwise engage in serial, tactical filings.
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`Thus, this factor weighs against denial of joinder/institution.
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`The fourth factor is the length of time elapsed between the time the petitioner
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`learned of the prior art asserted in the second petition and filing of the second
`
`petition, and the fifth factor is whether the petitioner provides adequate explanation
`
`for the time elapsed between the filings of multiple petitions directed to the same
`
`claims of the same patent. In the context of a joinder motion where Apple will be
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`
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`10
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`
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`taking an understudy role, these factors are inapplicable. Apple filed its own petition
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`that was denied. Microsoft’s petition on the same patent was granted. Apple is
`
`moving to join Microsoft’s petition within the one-month deadline under 37 C.F.R.
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`§ 42.122, and Apple will only serve in a passive understudy role with a substantively
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`identical Petition. Thus, these two factors are inapplicable.
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`The sixth factor is the finite resources of the Board. This factor also weighs
`
`against denial, especially given the Congressional intent of the IPR process.
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`Petitioner appreciates the Board is consistently busy. However, Microsoft’s petition
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`already has been instituted. Allowing Apple’s joinder motion where it will serve in
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`an understudy role will not impact the Board’s resources, especially because
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`Microsoft’s petition already has been instituted.
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`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
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`final determination not later than 1 year after the date on which the Director notices
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`institution of review. This factor weighs in favor of institution, as there is nothing to
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`prevent the Board from issuing a final determination on Microsoft’s petition within
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`one year, even with joinder of Apple and its petition.
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`An eighth factor identified by the Board in Shenzhen is the extent to which the
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`petitioner and any prior petitioner(s) were similarly situated defendants or otherwise
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`realized a similar-in-time hazard regarding the challenged patent. Shenzhen Silver
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`Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898, Paper 9 at 7 (PTAB
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`
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`11
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`
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`Oct. 1, 2018). This factor also weighs in favor of institution. This is not a situation
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`where Petitioner’s challenge to the patentability of the ’917 Patent has changed or
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`shifted due to the prior-filed Microsoft IPR. This is self-evident because this is a
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`motion for joinder where Apple is submitting a substantively identical petition to
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`that submitted by Microsoft.
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`Thus, none of the General Plastic factors weighs against institution and
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`joinder in this situation.
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`V. CONCLUSION
`Based on the factors discussed above, Petitioner Apple respectfully requests
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`that the Board grant the Apple Petition for Inter Partes Review of U.S. Patent No.
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`7,075,917 and then grant joinder with the Microsoft Corporation v. Uniloc 2017
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`LLC, IPR2019-00973 proceeding.
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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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`12
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of the Motion for Joinder
`has been served on the Patent Owner December 18, 2019 via Federal Express or by
`means at least as fast and reliable as Federal Express on the below date, at the
`following address:
`
`Philips Intellectual Property & Standards
`465 Columbus Avenue, Suite 340
`Valhalla, NY 10595
`Further, a courtesy copy of this Petition for Inter Partes Review was sent via
`Federal Express to Patent Owner’s litigation counsel:
`Feinberg Day Kramer Alberti Lim Tonkovich and Belloli
`LLP
`577 Airport Blvd., Suite 250
`Burlingame, CA 94010
`Finally, Petitioner has sent Email to the Board and parties listed in IPR2019-
`00973 notifying of the filing of the Motion for Joinder and Petition for Inter Partes
`Review as follows:
`
`Andrew M. Mason (andrew.mason@klarquist.com)
`Joseph M. Jakubek (joseph.jakubek@klarquist.com)
`Todd M. Siegel (todd.siegel@klarquist.com)
`John D. Vandenberg (john.vandenberg@klarquist.com)
`KLARQUIST SPARKMAN, LLP
`
`Ryan Loveless (ryan@etheridgelaw.com)
`Brett Mangrum (brett@etheridgelaw.com)
`James Etheridge (jim@etheridgelaw.com)
`Jeffrey Huang (jeff@etheridgelaw.com)
`ETHERIDGE LAW GROUP
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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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`COUNSEL FOR PETITIONER APPLE INC.
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`14
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