IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`ERICSSON INC.
`(“Ericsson”),
`
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC
`(“Uniloc”),
`
`Patent Owner.
`
`__________________
`
`
`Case No. IPR2020-00315
`U.S. Patent No. 7,075,917
`
`__________________
`
`
`REPLY TO PATENT OWNER OPPOSITION
`TO PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`ERICSSON INC.
`(“Ericsson”),
`
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC
`(“Uniloc”),
`
`Patent Owner.
`
`__________________
`
`
`Case No. IPR2020-00315
`U.S. Patent No. 7,075,917
`
`__________________
`
`
`REPLY TO PATENT OWNER OPPOSITION
`TO PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`Reply to Opp’n to Mot. for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`
`
`
`Ericsson hereby affirms and clarifies its role as an “understudy” and
`
`continues to respectfully request that the Board grant its Motion for Joinder.
`
`A few days before Uniloc’s deadline to oppose Ericsson’s Motion for
`
`Joinder, a panel in another proceeding involving Ericsson and Uniloc sua sponte
`
`requested “clarification” as to Ericsson’s role as an “understudy” in Ericsson’s
`
`Motion for Joinder in that proceeding. See IPR2020-00376, Paper 8 (PTAB Jan.
`
`21, 2020). Uniloc shortly thereafter filed its opposition to Ericsson’s Motion for
`
`Joinder here, paralleling the Board’s requested clarification to Ericsson’s
`
`“understudy” role.
`
`The ambiguities alleged regarding Ericsson’s “understudy” role are the only
`
`basis on which Uniloc has opposed Ericsson’s joinder motion in this case. Uniloc
`
`has not argued that joinder would negatively impact the timing of the existing trial
`
`schedule in the Microsoft IPR, nor has Uniloc argued that joinder would risk the
`
`possibility of Patent Owner having to address new issues. Those concerns are the
`
`primary focus of the joinder analysis yet are not at issue here.
`
`Finally, Uniloc incorrectly states that “[t]he ’917 has not and is presently not
`
`the subject of any district court litigation.” Opp’n at 1. As Ericsson’s Motion
`
`explained, Uniloc has accused various parties in separate lawsuits of infringing the
`
`’917 Patent, including an Ericsson customer (Ericsson has intervened in that
`
`lawsuit) and Microsoft in pending lawsuits.
`1
`
`
`
`
`Reply to Opp’n to Mot. for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`I. The Board has granted joinder based on conditions similar to Ericsson’s
`originally proposed conditions on its “understudy” role.
`
`Ericsson’s originally proposed conditions on its role as an “understudy”
`
`mimicked prior Board cases in which the Board has granted joinder with a party
`
`acting in an “understudy” capacity. For example, in Blackberry Corp. v. Uniloc
`
`2017 LLC, the Board granted joinder over Uniloc’s opposition where the petitioner
`
`proposed the same conditions on its understudy role. IPR2019-01283, Paper 10 at
`
`6-9 (PTAB Nov. 5, 2019); see also id., Paper 3 at 8-9 (Joinder Mot.) (proposing
`
`the same conditions); see also Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper
`
`9 at 6–8 (PTAB May 30, 2019). Thus, Ericsson was not attempting to engage in
`
`gamesmanship. Nevertheless, Ericsson clarifies its role as an understudy consistent
`
`with the conditions presented in IPR2020-00376, Paper 9.
`
`II. Ericsson further clarified its role as an “understudy” in IPR2020-00376,
`and Ericsson agrees to those conditions in this case.
`
`Uniloc’s opposition focuses on alleged ambiguities in the understudy
`
`limitations proposed by Ericsson, namely, Ericsson’s role in substantive filings and
`
`depositions; and in any appeal to the Federal Circuit. Ericsson’s potential role in
`
`filings and depositions, as well as discovery and oral hearing, are clarified below.
`
`Any potential appeal to the Federal Circuit is also addressed.
`
`2
`
`
`
`
`Reply to Opp’n to Mot. for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`To clarify the “understudy” role, Ericsson agrees to the following conditions
`
`regarding the joined proceeding, which are the same as those set forth by Ericsson
`
`in IPR2020-00376, Paper 9.
`
`So long as Microsoft remains an active party in the joined proceeding:
`
`1. Ericsson will not be making any substantive filings, and Ericsson agrees that
`
`Microsoft alone will be responsible for all substantive petitioner filings in
`
`the joined proceeding;
`
`2. Ericsson agrees to be bound by all filings by Microsoft in the joined
`
`proceeding, except for filings regarding termination and settlement;
`
`3. Ericsson must obtain prior Board authorization to file any paper or to take
`
`any action on its own in the joined proceeding;
`
`4. Ericsson 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 Microsoft;
`
`5. Ericsson shall be bound by any agreement between Patent Owner and
`
`Microsoft concerning discovery and/or depositions;
`
`6. Ericsson will not cross examine or defend any witness at deposition;
`
`7. Microsoft will be responsible for any oral hearing presentation, including the
`
`preparation of demonstrative exhibits.
`
`Only if Microsoft ceases participation in the proceeding:
`
`3
`
`
`
`
`Reply to Opp’n to Mot. for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`8. Ericsson would assume a primary role, meaning it would take over the role
`
`previously filled by Microsoft.
`
`Uniloc has expressed concern regarding whether Ericsson could nevertheless
`
`“participate” in a substantive filing by Microsoft. Opp’n at 3. It is unclear whether
`
`Uniloc seeks to prohibit communication with Microsoft, which would be
`
`unreasonable. Regardless, the provisions above make it clear that Microsoft is in
`
`total control of any substantive filing, deposition and oral hearing, and Microsoft
`
`has not expressed any desire for input from Ericsson.
`
`
`
`Uniloc’s final concern is that Ericsson may “seek to file its own appeal
`
`briefing, separate and apart from Microsoft” in any appeal to the Federal Circuit.
`
`Opp’n at 5. Uniloc’s focus on the procedure of a different tribunal is not only
`
`irrelevant to the joinder analysis, but, more importantly, its implication that
`
`Ericsson should stipulate to no appeal briefing is also unreasonable. It is
`
`unreasonable because Ericsson is not aware of any mechanism in the Federal
`
`Circuit that would allow a party to take a similar “understudy” role in any appeal
`
`as a matter of right, and Uniloc has not cited to any.
`
`For Ericsson to participate in a Federal Circuit appeal, Ericsson needs to file
`
`or join briefing. For example, if Microsoft and Ericsson were to file notices of
`
`4
`
`
`
`
`Reply to Opp’n to Mot. for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`appeal,1 and Microsoft subsequently settled, the appeal would likely be dismissed
`
`if Ericsson had not filed or joined briefing. See Fed. Cir. R. 31(d). Likewise, if
`
`Uniloc were to appeal, and Microsoft subsequently settled, Ericsson could not be
`
`heard at oral argument without court permission if Ericsson had not filed or joined
`
`briefing. See Fed. R. App. P. 31(c). And, while it is typical for the court to
`
`consolidate appeals from the same IPR (which Ericsson would welcome), such
`
`consolidation is ultimately within the Federal Circuit’s discretion and beyond
`
`Ericsson’s control. In sum, if Ericsson did not file an appeal brief during an appeal,
`
`Ericsson could lose the right to maintain an appeal.
`
`III. Conclusion
`Unless Microsoft ceases participation in this IPR, Ericsson intends to assume
`
`a classic “understudy” role. For the reasons above and in Ericsson’s Motion,
`
`Ericsson respectfully requests that the Board (1) institute Ericsson’s Petition for
`
`Inter Partes Review of U.S. Patent No. 7,075,917; and (2) grant joinder with
`
`IPR2019-00973 on the terms set forth above.
`
`
`
`
`
`
`1 In IPR2020-00376, Uniloc clarified that it does not have any concern with
`
`Ericsson’s filing a notice of appeal. See Opp’n to Suppl. Mot. (Paper 11) at 3-4.
`
`5
`
`
`
`
`
`Dated: February 18, 2020
`
`
`
`
`
`
`
`
`
`Reply to Opp’n to Mot. for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`
`Respectfully submitted,
`
`/J. Andrew Lowes/
`J. Andrew Lowes
`Lead Counsel for Petitioner
`Registration No. 40,706
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Phone: (972) 680-7557
`andrew.lowes.ipr@haynesboone.com
`
`Clint Wilkins
`Registration No. 62,448
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Phone: (972) 739-6927
`clint.wilkins.ipr@haynesboone.com
`
`ATTORNEYS FOR PETITIONER
`
`
`
`6
`
`
`
`
`Reply to Opp’n to Mot. for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies that
`
`a true and correct copy of the foregoing “REPLY TO PATENT OWNER
`
`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER” was served on
`
`the February 18, 2020 as detailed below:
`
`Date of service February 18, 2020
`
`Manner of service Electronic Mail to: ryan@etheridgelaw.com;
`brett@etheridgelaw.com; jim@etheridgelaw.com;
`brian@etheridgelaw.com; jeff@etheridgelaw.com
`
`Documents served REPLY TO PATENT OWNER OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`Persons Served Ryan Loveless
`Brett Mangrum
`James Etheridge
`Brian Koide
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`
`
`
`Courtesy copies were also sent by electronic service via email to the following
`
`counsels of record in the related Inter Partes Review IPR2019-00973:
`
`Petitioner’s Counsel
`Andrew M. Mason
`Andrew.mason@klarquist.com
`Joseph T. Jakubek
`joseph.jakubek@klarquist.com
`
`Patent Owner’s Counsel
`Ryan Loveless
`ryan@etheridgelaw.com
`Brett A. Mangrum
`brett@etheridgelaw.com
`
`7
`
`
`
`
`
`
`Todd M. Siegel
`todd.siegel@klarquist.com
`John D. Vandenberg
`john.vandenberg@klarquist.com
`KLARQUIST SPARKMAN, LLP
`121 SW Salmon Street, Suite 1600
`Portland, Oregon, 97204
`
`
`Reply to Opp’n to Mot. for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`James Etheridge
`jim@etheridgelaw.com
`Jeffrey Huang
`jeff@etheridgelaw.com
`ETHERIDGE LAW GROUP
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, Texas 76092
`
`
`
`By: /J. Andrew Lowes/
`J. Andrew Lowes
` Lead Counsel for Petitioner
`Registration No. 40,706
`
`8
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
