IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`ERICSSON INC.,
`
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
`__________________
`
`
`Case No. IPR2020-00315
`U.S. Patent No. 7,075,917
`
`__________________
`
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2019-00973
`
`
`
`
`
`
`
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`ERICSSON INC.,
`
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
`__________________
`
`
`Case No. IPR2020-00315
`U.S. Patent No. 7,075,917
`
`__________________
`
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2019-00973
`
`
`
`
`
`
`
`
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`
`
`
`TABLE OF CONTENTS
`
`
`I. Statement of Precise Relief Requested ................................................................ 1
`II. Background and Related Proceedings ................................................................. 2
`III. Statement of Reasons for Relief Requested ........................................................ 2
`a.
`Legal Standard ............................................................................................ 2
`b.
`Petitioner’s Motion for Joinder is Timely .................................................. 3
`c.
`The Kyocera Factors Favor Joinder ........................................................... 3
`i.
`Factor 1: Joinder is appropriate .................................................................. 3
`ii.
`Factor 2: Ericsson’s petition proposes no new grounds of unpatentability
` .................................................................................................................... 5
`iii. Factor 3: Joinder will not unduly burden or negatively impact the
`Microsoft IPR trial schedule ....................................................................... 5
`iv. Factor 4: Procedures to simplify briefing and discovery ........................... 7
`IV. Conclusion ........................................................................................................... 9
`
`
`
`
`
`
`i
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Apple Inc. v. INVT SPE LLC,
` IPR2019-00958, Paper 9 (PTAB May 30, 2019) ...............................................6, 8
`BlackBerry Corp. v. Uniloc 2017 LLC,
` IPR2019-01283, Paper 10 (PTAB Nov. 5, 2019) ................................................... 5
`Celltrion, Inc. v. Genentech, Inc.,
` IPR2018-01019, Paper 11 at 14 (Oct. 30, 2018) .................................................... 7
`Everlight Electronics Co., Ltd.,
` IPR2018-01260, Paper 12 (PTAB Nov. 14, 2018) ................................................. 7
`Intel Corp. v. Alacritech, Inc.,
` IPR2018-01352, Paper 11 (PTAB Jan. 8, 2019) ................................................6, 8
`Kyocera Corp. v. Softview LLC,
` IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ................................................. 3
`Lear, Inc. v. Adkins,
` 395 U.S. 653 (1969) ................................................................................................ 4
`Pfizer Inc. v. Sanofi-Aventis Deutschland GmbH,
` IPR2019-00980, Paper 12 (PTAB Aug. 15, 2019) ................................................. 7
`Samsung Elecs., Co. v. Raytheon Co.,
` IPR2016-00962, Paper 12 (PTAB Aug. 24, 2016) .............................................3, 5
`Sony Corp. v. Memory Integrity, LLC,
` IPR2015-01353, Paper 11 (PTAB Oct. 15, 2015) ..............................................5, 8
`
`Statutes
`
`35 U.S.C. § 315(b) ..................................................................................................... 6
`35 U.S.C. § 315(c) .................................................................................................4, 5
`
`ii
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`
`Rules
`
`37 C.F.R. § 42.122(b) ............................................................................................4, 6
`
`
`
`
`
`
`
`iii
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`
`
`
`I. Statement of Precise Relief Requested
`Ericsson Inc. (“Ericsson”) respectfully submits this Motion for Joinder
`
`together with a Petition (“Ericsson Petition”) for Inter Partes Review of U.S.
`
`Patent No. 7,075,917 (“the ʼ917 patent”) filed contemporaneously herewith. The
`
`Board instituted inter partes review of claims 1–3, 9 and 10 of the ’917 patent in
`
`Microsoft Corporation v. Uniloc 2017 LLC, Case No. IPR2019-00973, on
`
`November 19, 2019 (“Microsoft IPR”). Pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b), Ericsson requests institution of inter partes review of claims
`
`1–3, 9 and 10 of the ’917 patent and requests joinder with IPR2019-00973.
`
`Ericsson’s request for joinder is timely because it is made no later than one
`
`month after the November 19, 2019, institution date of the Microsoft IPR. The
`
`Ericsson Petition is substantively identical to Microsoft’s petition (“Microsoft
`
`Petition”) in the Microsoft IPR, and Ericsson seeks institution on the same claims,
`
`prior art, and grounds for unpatentability that were instituted in the Microsoft IPR.
`
`Therefore, Ericsson’s petition warrants institution for at least the same reasons that
`
`the Board instituted the Microsoft IPR. In addition, Ericsson proposes to streamline
`
`discovery and briefing by taking an “understudy role.”
`
`Petitioner in the Microsoft IPR does not oppose Ericsson’s instant motion.
`
`Joinder is appropriate here because it will not unduly burden or prejudice the
`
`parties to the Microsoft IPR and will efficiently resolve the question of the ’917
`1
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`patent’s validity, based on the identical grounds raised in both the Microsoft IPR
`
`and the Ericsson IPR, in a single proceeding.
`
`II. Background and Related Proceedings
`The ʼ917 patent has been asserted in the following litigation: Uniloc 2017
`
`LLC v. AT&T Services, Inc. et al, Case No. 2:19-cv-00102 (E.D. Tex. 2019);
`
`Uniloc 2017 LLC v. Microsoft Corporation, Case No. 8:18-cv-02053 (C.D. Cal.
`
`2018); Uniloc 2017 LLC v. Verizon Communications Inc. et al, 2:18-cv-00513
`
`(E.D. Tex. 2018); Uniloc 2017 LLC et al v. Verizon Communications Inc. et al,
`
`Case No. 2:18-cv-00380 (E.D. Tex. 2018); Uniloc 2017 LLC et al v. Microsoft
`
`Corporation, Case No. 8:18-cv-01279 (C.D. Cal. 2018).
`
`In addition to the Microsoft IPR, the ʼ917 patent was also the subject of
`
`IPR2019-00259, filed by Apple Inc., in which the Board denied institution.
`
`III. Statement of Reasons for Relief Requested
`As explained in detail below, Ericsson’s motion for joinder should be
`
`granted because the motion is timely, and the Kyocera factors favor joinder.
`
`a. Legal Standard
`
`The Board may join as a party to an instituted inter partes review a person
`
`who has properly filed a petition for inter partes review that warrants institution.
`
`35 U.S.C. § 315(c). Any request for joinder must be filed “no later than one month
`
`after the institution date of any inter partes review for which joinder is requested.”
`
`37 C.F.R. § 42.122(b). A petition for inter partes review is not subject to the one-
`2
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`year statutory time bar if the petition is accompanied by a request for joinder. 35
`
`U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
`
`“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.” Samsung Elecs., Co. v. Raytheon Co., IPR2016-00962, Paper
`
`12 at 5 (PTAB Aug. 24, 2016) (citing Kyocera Corp. v. Softview LLC, IPR2013-
`
`00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).
`
`b. Petitioner’s Motion for Joinder is Timely
`
`Ericsson’s Motion for Joinder is timely because it is being filed within one
`
`month of the November 19, 2019, institution of the Microsoft IPR. See 37 C.F.R.
`
`§ 42.122(b).
`
`c. The Kyocera Factors Favor Joinder
`
`i. Factor 1: Joinder is appropriate
`
`Joinder with the Microsoft IPR is appropriate because the Ericsson Petition
`
`involves the same patent, challenges the same claims, and is based on the same
`
`grounds and nearly identical declaration testimony relied upon in the Microsoft
`
`Petition. Additionally, as noted below, the Ericsson Petition raises only the grounds
`
`from the Microsoft IPR. In short, the Ericsson Petition is substantively identical to
`
`3
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`the Microsoft Petition. The only minor changes reflect changes necessary for
`
`proper identification of the party filing the petition and corresponding documents,
`
`including a substantively identical expert declaration for proving 3GPP document
`
`authentication and public accessibility.1 On the merits, the Ericsson Petition should
`
`therefore be instituted for at least the same reasons that the Board instituted the
`
`Microsoft IPR. Further, good cause exists to allow joinder, given that the Ericsson
`
`Petition is substantively identical to the Microsoft Petition, and joinder would
`
`allow the Board to effectively resolve the identical challenges raised by both
`
`parties in a single proceeding.
`
`Additionally, Ericsson is currently involved in litigation based on Patent
`
`Owner’s allegation that Ericsson’s products infringe the ʼ917 patent. See, e.g., Ex.
`
`1011 at 1-2 (Motion to Intervene) and Ex. 1012 (Granting Unopposed Motion to
`
`Intervene). Ericsson therefore has a particular interest in the substantial questions
`
`of invalidity surrounding the ʼ917 patent. Joinder is also appropriate for the
`
`
`1 The Ericsson Petition does not include Section III.C of the Microsoft Petition,
`
`which argued for institution despite the existence of a then-pending petition filed
`
`by Apple in IPR2019-00259. That argument is now moot in light of the Board’s
`
`decision not to institute Apple’s IPR petition and decision to institute the Microsoft
`
`Petition.
`
`4
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`additional reason that the invalidity grounds as to the challenged claims can be
`
`resolved through Ericsson’s continued participation in the IPR process, even if the
`
`original petitioner in IPR2019-00973 were to reach a settlement with Patent
`
`Owner, or otherwise cease participation in that proceeding. The public interest in
`
`“permitting full and free competition in the use of ideas which are in reality a part
`
`of the public domain” Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969), favors
`
`allowing joinder in this case, as joinder would allow Ericsson to continue
`
`participating in the IPR process if Microsoft ceases participation.
`
`ii. Factor 2: Ericsson’s petition proposes no new grounds of
`unpatentability
`
`The Ericsson Petition does not present any new grounds or arguments
`
`regarding unpatentability. It is substantively identical to the Microsoft Petition.
`
`The Board “routinely grants motions for joinder where the party seeking joinder
`
`introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01283, Paper 10 at 8
`
`(PTAB Nov. 5, 2019) (quoting Samsung, IPR2016-00962, Paper 12 at 9)
`
`(emphasis added). This factor therefore favors joinder.
`
`iii. Factor 3: Joinder will not unduly burden or negatively
`impact the Microsoft IPR trial schedule
`
`Joinder will not unduly burden Patent Owner. Because the Ericsson Petition
`
`presents the same grounds and arguments as the Microsoft Petition, there are no
`
`5
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`new issues for Patent Owner to address. See Sony Corp. v. Memory Integrity, LLC,
`
`IPR2015-01353, Paper 11 at 6 (PTAB Oct. 15, 2015) (granting motion for joinder
`
`and instituting IPR where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR]”).
`
`Indeed, the Patent Owner’s Preliminary Response in the Microsoft IPR is sufficient
`
`to address the Ericsson Petition because the issues presented are substantively
`
`identical. See Patent Owner’s Preliminary Response, Case No. IPR2019-00973
`
`(Paper 6).
`
`Likewise, joinder will not negatively impact the Microsoft IPR trial
`
`schedule. Ericsson expressly consents to the existing trial schedule. Further, as
`
`described below, Ericsson agrees to take an “understudy” role in the joined
`
`proceed, so long as Microsoft remains an active party in the joined proceeding.
`
`See, e.g., Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9 at 6–8 (PTAB
`
`May 30, 2019) (granting motion for joinder where the movant presented a
`
`substantively identical petition and agreed to take an “understudy” role in the
`
`joined proceeding); Intel Corp. v. Alacritech, Inc., IPR2018-01352, Paper 11 at 3–
`
`5 (PTAB Jan. 8, 2019) (same).
`
`Finally, the Ericsson Petition relies on the same technical expert (and a
`
`substantively identical declaration from that expert) and a nearly identical 3GPP
`
`6
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`declaration.2 And Ericsson plans to rely on its 3GPP declaration from Mr. Bishop
`
`only in the event that Microsoft is terminated from the proceeding and Uniloc has
`
`not yet been afforded the opportunity to cross-examine Microsoft’s 3GPP expert,
`
`Mr. Rodermund, making at most one deposition of a 3GPP expert necessary.
`
`Therefore, joinder will not increase the complexity of the proceeding. Indeed, the
`
`Board typically grants joinder where a petitioner presents a different expert with a
`
`substantially similar declaration. See, e.g., Pfizer Inc. v. Sanofi-Aventis
`
`Deutschland GmbH, IPR2019-00980, Paper 12 at 3–4, 6–7 (PTAB Aug. 15, 2019);
`
`Everlight Electronics Co., Ltd., IPR2018-01260, Paper 12 at 4, 6–7 (PTAB Nov.
`
`14, 2018); Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 (Oct. 30,
`
`2018).
`
`iv. Factor 4: Procedures to simplify briefing and discovery
`
`
`
`2 Due to circumstances beyond Ericsson’s control, Ericsson was unable to use the
`
`same 3GPP expert as Microsoft. The supporting 3GPP expert declaration
`
`submitted by Ericsson (from Mr. Bishop) differs from that filed by Microsoft (from
`
`Mr. Rodermund) in that it has been updated to list the qualifications and personal
`
`experience of Mr. Bishop. The evidence supporting public accessibility of certain
`
`documents presented in Mr. Bishop’s declaration, however, is substantially
`
`identical as Mr. Rodermund’s declaration in the Microsoft IPR.
`
`7
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`Ericsson agrees to take an “understudy” role in the joined proceeding, absent
`
`termination of the original petitioner as a party. Specifically, Ericsson agrees to the
`
`following conditions regarding the joined proceeding, so long as Microsoft remains
`
`an active party in the joined proceeding:
`
`• All filings by Ericsson in the joined proceeding shall be consolidated with
`
`the filings of Microsoft unless a filing solely concerns issues that do not
`
`involve Microsoft;
`
`• 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;
`
`• Ericsson shall be bound by any agreement between Patent Owner and
`
`Microsoft concerning discovery and/or depositions;
`
`• At deposition, Ericsson shall not receive any direct examination, cross
`
`examination, or redirect time beyond that permitted in this proceeding for
`
`Microsoft alone under either 37 C.F.R. § 42.53 or any agreement between
`
`Patent Owner and Microsoft.
`
`See Apple, IPR2019-00958, Paper 9 at 7–8 (granting a motion for joinder where
`
`the movant proposed the above limitations on its role as understudy); see also Intel
`
`Corp., IPR2018-01352, Paper 11 at 4–5 (granting a motion for joinder with such
`
`limitations on the understudy). Ericsson also agrees to rely on its 3GPP declaration
`
`8
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`from Mr. Bishop only in the event that Microsoft is terminated from the
`
`proceeding and Uniloc has not yet been afforded the opportunity to cross-examine
`
`Microsoft’s 3GPP expert, Mr. Rodermund.
`
`
`
`Ericsson would assume a primary role only if Microsoft ceased participation
`
`in the proceeding. Otherwise, Ericsson would remain in its “understudy” role
`
`throughout the proceeding. The Board has consistently found that the acceptance
`
`of an “understudy” role removes any undue complications or delay that might
`
`allegedly result from joinder. See, e.g., Apple, IPR2019-00958, Paper 9 at 6–8
`
`(granting motion for joinder where the movant presented a substantively identical
`
`petition and agreed to take an “understudy” role in the joined proceeding); Intel
`
`Corp., IPR2018-01352, Paper 11 at 3–5 (same); Sony Corp., IPR2015-01353,
`
`Paper 11 at 6–7. As such, this factor also favors joinder.
`
`IV. Conclusion
`For the reasons above, Ericsson respectfully requests that the Board
`
`(1) institute Ericsson’s concurrently filed Petition for Inter Partes Review of U.S.
`
`Patent No. 7,075,917; and (2) grant joinder with Microsoft Corporation v. Uniloc
`
`2017 LLC, Case No. IPR2019-00973.
`
`
`
`
`
`9
`
`
`
`
`
`Dated: December 18, 2019
`
`
`
`
`
`
`
`Motion 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
`
`
`10
`
`
`
`
`Motion for Joinder
`Case No. IPR2020-00315 (U.S. Patent No. 7,075,917)
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
`
`42.105(b) on the Patent Owner on December 18, 2019 by filing a copy of this
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b) TO
`
`RELATED INTER PARTES REVIEW IPR2019-00973 through the Patent Trial
`
`and Appeal Board End to End and sending of a copy of the same via Fed Ex at the
`
`correspondence address of record for U.S. Patent 7,075,917:
`
`Philips Intellectual Property & Standards
`465 Columbus Avenue, Suite 340
`Valhalla, NY 10595
`
`Courtesy copies were also sent Fed Ex to the following counsels of record in
`
`the related Inter Partes Review IPR2019-00973:
`
`Petitioner’s Counsel
`
`
`Andrew M. Mason
`Joseph T. Jakubek
`Todd M. Siegel
`John D. Vandenberg
`KLARQUIST SPARKMAN, LLP
`121 SW Salmon Street, Suite 1600
`Portland, Oregon, 97204
`
`
`
`
`Patent Owner’s Counsel
`
`
`Ryan Loveless
`Brett A. Mangrum
`James Etheridge
`Jeffrey Huang
`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
`
`11
`
`
`
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
