Paper No. 10
`Trials@uspto.gov
`571-272-7822 Entered: April 7, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00315
`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 7, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00315
`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)
`
`
`
`IPR2020-00315
`Patent 7,075,917 B2
`
`I. INTRODUCTION
`Ericsson 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 2 (“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 IPR2019-00259, where a decision to not institute inter partes
`review was rendered. Id. The ’917 patent also is the subject of IPR2020-
`00224.
`
`2
`
`
`
`IPR2020-00315
`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 substantively identical to the Microsoft Petition. The only minor
`changes reflect changes necessary for proper identification of the party filing
`the petition and corresponding documents.” Mot. 3–4. Petitioner further
`explains that it relies on the same technical expert and a substantively
`identical declaration from that expert. Id. at 6. Petitioner does rely on a
`different “3GPP expert” as the one in the 973 IPR, but contends that its
`3GPP expert declaration “is substantially identical as Mr. Rodermund’s
`declaration in the Microsoft IPR.” Id. at 7 n.2.
`We have considered Patent Owner’s Preliminary Response. Prelim.
`Resp. 1–41. 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
`
`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
`
`
`
`IPR2020-00315
`Patent 7,075,917 B2
`
`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. 27–30, with 973 IPR Paper 9, 28–31). Those
`common arguments will be fully considered in the 973 IPR after Microsoft
`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 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.
`Accordingly, we institute an inter partes review on the same ground
`as the one on which we instituted review in the 973 IPR.
`
`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.
`
`4
`
`
`
`IPR2020-00315
`Patent 7,075,917 B2
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition;
`(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. 5. Petitioner further
`explains that it relies on the same prior art analysis and declaration from the
`same technical expert and a nearly identical 3GPP declaration. Id. at 6–7.
`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 8–9. Petitioner agrees to
`assume an “understudy” role in the 973 IPR, unless “Microsoft ceased
`participation in the proceeding.” Id. at 9. Petitioner further represents that it
`will not “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.” Id. at 8. 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.
`Patent Owner argues that “Ericsson purports to reserve . . . rights” by
`its definition for “understudy” which risks causing undue prejudice to Patent
`Owner. Opp. 2. Patent Owner further argues that a true “understudy role” is
`one in which the petitioner remains “completely inactive.” Id. at 4.
`
`5
`
`
`
`IPR2020-00315
`Patent 7,075,917 B2
`
`Petitioner responds that it agrees to a complete understudy role (e.g.,
`inactive role) so long as Microsoft remains a party in the 973 IPR. Reply 3–
`4. 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 Ericsson eventually seek appellate review. Id. at 5. Patent Owner
`has failed to explain why matters 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-
`00315;
`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;
`
`6
`
`
`
`IPR2020-00315
`Patent 7,075,917 B2
`
`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
`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.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2020-00315
`Patent 7,075,917 B2
`
`PETITIONER:
`
`Andrew Lowes
`Clint Wilkins
`Angela Oliver
`HAYNES AND BOONE, LLP
`andrew.lowes.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`angela.oliver.ipr@haynesboone.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
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2020-00315
`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.
`9
`
`
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
