Case: 19-1688
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`|Document:72
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`Page:1
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`Filed: 03/09/2021
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`Anited States Court of Appeals
`for the Federal Circuit
`
`UNILOC 2017 LLC,-
`Appellant
`
`Vv.
`
`FACEBOOKINC., WHATSAPP,INC.,
`Appellees
`
`2019-1688
`
`Appealfrom the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2017-
`01427, IPR2017-02087.
`
`UNILOC 2017 LLC,
`Appellant
`
`Vv.
`
`FACEBOOKINC., WHATSAPP,INC.,
`Appellees
`
`2019-1689
`
`

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`Case: 19-1688
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`UNILOC 2017 LLC v. FACEBOOKINC.
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2017-
`01428, IPR2017-02088.
`
`Decided: March 9, 2021
`
`JEFFREY A. STEPHENS, Etheridge Law Group, South-
`lake, TX, argued for appellant. Also represented by JAMES
`ETHERIDGE, RYAN S. LOVELESS, BRETT MANGRUM.
`
`PHILLIP EDWARD MORTON, Cooley LLP, Washington,
`DC, argued for appellees. Also represented by HEIDI LYN
`KEEFE, ANDREW CARTER MACE, LOWELL D. MEAD, MARK R.
`WEINSTEIN, Palo Alto, CA.
`
`Before LOURIE, WALLACH, and CHEN, Circuit Judges.
`
`CHEN,Circuit Judge.
`
`Uniloc 2017 LLC (Uniloc) appeals from two consolli-
`datedinterpartes review (IPR) decisions of the Patent Trial
`and Appeal Board (Board) finding unpatentable claims 1—
`8 and claims 9-12, 14-17, 25 and 26 of U.S. Patent No.
`8,995,433 (433 patent) as obvious.
`
`Foremost at issue in this case is whether 35 U.S.C.
`§ 314(d)’s “No Appeal” provision bars this court’s review of
`the Board’s conclusion that under § 315(e)(1) a petitioner
`is not estopped from maintaining the IPR proceeding be-
`fore it. Under the circumstancesof this case, we hold that
`§ 314(d) does not preclude this court from reviewing the
`Board’s § 315(e)(1) estoppel decision. We further conclude
`that the Board did not err in finding that LG Electronics
`Inc. (LG) is not estopped from maintaining its IPR chal-
`lenge to claims 1-8 and that Facebook and WhatsApp(col-
`lectively, Facebook) are not estopped from challenging
`
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`UNILOC 2017 LLC v. FACEBOOK INC.
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`3
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`claim 7. As to the Board’s obviousness conclusions, we see
`no error in the Board’s unpatentability findings. Accord-
`ingly, we affirm.
`
`BACKGROUND
`
`A
`
`Uniloc is the owner of the ’433 patent, which is directed
`to “a system and method for enabling local and global in-
`stant [Voice over Internet Protocol (VoIP)] messaging over
`an IP network.” °433 patent col. 1 ll. 21-23. The patent
`describes the implementation of two modes: “record mode”
`and “intercom mode.” Id. at col. 7 ll. 61-65.
`In record
`mode, the user’s speech is recorded into an audio file, and
`uponfinalization, the user sendsa signalto the server that
`the message is ready to be sent. Id. at col. 8 Il. 9-22. The
`messageis then sent to the server and the server delivers
`the messageto the selected recipient.
`Id. at col. 8 Il. 25—
`43. However,if the recipient is not currently available, 1.e.,
`disconnected, the server temporarily saves the instant
`voice message and delivers it to the recipient when there-
`cipient connects to its local server, i.e., becomes available.
`Id. The intercom modeoperatessimilarly, but it allows for
`the instant voice message to be transmitted in real-time to
`the selected recipient by storing the message on buffers un-
`til the buffers fill and the messageis then sent to the server
`to be transmitted to the recipient. Jd. at col. 11 ll. 37-60.
`The instant voice message canalso contain various attach-
`ments. Id. at col. 13 ll. 5-6.
`Claims 1 and 9 are the independent claims at issue
`here.! They state, in pertinent part, as follows:
`
`1. A system comprising:
`
`1 Although independent claim 6 ofthe 433 patentis
`also on appeal, appellant makes no materially different ar-
`gumentsasto claim 6.
`
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`UNILOC 2017 LLC v. FACEBOOKINC.
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`an instant voice messaging application including a
`client platform system for generating an instant
`voice message and a messaging system for trans-
`mitting the instant voice message over a packet-
`switched network via networkinterface;
`
`wherein the instant voice messaging application in-
`cludes a message database storing the instant voice
`message, wherein the instant voice messageis rep-
`resented by a databaserecord including a unique
`identifier; and
`
`wherein the instant voice messaging application in-
`cludes a file manager system performing at least
`one of storing, deleting and retrieving the instant
`voice messages from the message database in re-
`sponse to a user request.
`
`9. A system, comprising:
`an instant voice messaging application comprising:
`
`a client platform system ... ;
`
`a messaging system..., and
`
`wherein the instant voice message application at-
`taches one or morefiles to the instant voice message.
`
`’433 patent at claims 1, 9 (emphases added).
`
`B
`
`Facebook filed two petitions for inter partes review of
`the ’433 patent on May 11, 2017. In thefirst petition (1427
`IPR Pet.), Facebook challenged claims 1-8 as obvious un-
`der 35 U.S.C. § 103 with Zydney? and Clark? as references
`
`PCT App. Pub. No. WO 01/11824 A2.
`3 U.S. Patent No. 6,725,228.
`
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`for claims 1-6 and 8 and Zydney, Clark, and Appelman‘as
`references for claim 7.
`In the second petition (1428 IPR
`Pet.), Facebook alleged that claims 9, 12, 14, 17, 25, and 26
`would have been obvious under § 103 in view of Zydney,
`claims 11, 15, and 16 would have been obvious in view of
`Zydney and Greenlaw5, and claim 10 would have been ob-
`vious in view of Zydney and Newton‘®.
`
`Meanwhile, a different IPR proceeding challenging
`claims of the ’433 patent, IPR2017-00225, was already
`pending at the Board,petitioned for by Apple Inc. (Apple).
`On June 16, 2017, after it had filed the ’1427 IPR Pet. and
`1428 IPR Pet., Facebook filed a new petition, identical in
`substance to Apple’s IPR petition, challenging claims 1-6
`and 8 of the 433 patent and a motion to join the Apple IPR.
`In response, the Board instituted this IPR and granted Fa-
`cebook’s motion to join Apple’s IPR on October 3, 2017.
`
`Aside from Apple and Facebook, yet another party was
`interested in invalidating certain claims of the ’433 pa-
`tent—LG. Before a decision issued on whetherto institute
`Facebook’s IPR petitions, on September 11, 2017, LG filed
`IPR petitions identical in substance to Facebook’s *1427
`and ’1428 IPR petitions and motionsto join both of Face-
`book’s IPRs.
`
`The Board then, on December4, 2017, instituted inter
`partes review for Facebook’s 1427 and ’1428 IPR petitions.’
`Given that Facebook was nowa party to multiple different
`
`/
`
`4 U.S. Patent No. 6,750,881.
`HEPP,
`ELLEN
`&
`5
`RAYMOND
`GREENLAW
`INTRODUCTION TO THE INTERNET FOR ENGINEERS, 1-25
`(1999).
`6 Harry NEWTON, NEWTON’S TELECOM DICTIONARY
`(18th ed. 2002).
`7
`The Board consolidated the ’1427 IPR and °1428
`IPR for the final written decision.
`
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`IPR proceedings challenging claims of the ’433 patent, the
`Board foresaw the possibility of a statutory estoppel issue
`arising under 35 U.S.C. § 315(e)(1). At the endofits insti-
`tution decision in the ’1427 IPR,the Board ordered thepar-
`ties
`to
`“brief
`the
`applicability,
`if
`any,
`of
`35 U.S.C. § 315(e)(1)” against Facebook,in light of the an-
`ticipated, soon-to-be-issued final written decision for the
`Apple IPR, to which Facebook was a joined party. Face-
`book, Inc. v. Uniloc USA, Inc., No. IPR2017-01427, 2017
`WL 6034153, at *10 (P.T.A.B. Dec. 4, 2017) (Institution De-
`cision). The Board did not issue a similar requestfor brief-
`ing in its institution decision for the ’1428 IPR. Notably, at
`the time of this supplementalbriefing, LG’s petition and
`motion to join remained pending.
`
`In its § 315 supplemental brief, Facebook argued that
`it should not be estopped from challenging the patentabil-
`ity of any claim upon theissuanceof a final written deci-
`sion in the Apple IPR, but even if the Board found it
`estopped, Facebook should at least continue as a petitioner
`here against claim 7, which was never challenged in the
`Apple IPR. See J.A. 606-07. Further, Facebook contended
`that, if LG’s IPR petition was granted and LG wasjoined
`as a party to the 71427 IPR, then the ’1427 IPR should pro-
`ceed as to all challenged claims regardless of whether Fa-
`cebook was found estopped because LG wasnot a party in
`the Apple IPR. Id. at 610. In response, Uniloc contended
`that, once the Board issued a final written decision in the
`Apple IPR, Facebook would be estopped asto all claims
`challenged in the 71427 IPR, requiring the Board to then
`terminate that proceeding. J.A. 617.
`In addition, Uniloc
`averred that “[a]llowing LG Electronicsto join this IPR will
`create inefficiency and confusion. This IPR should beter-
`minated and LG Electronics can,if it choosesto, file its own
`IPR.” Id.
`
`The Board subsequently instituted IPRs based on LG’s
`petitions and then granted LG’s motion to join the °1427
`IPR and 71428 IPR on March 6, 2018. J.A. 655. Uniloc then
`
`

`

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`UNILOC 2017 LLC v. FACEBOOKINC.
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`7
`
`filed its Patent Owner Responsesto the original Facebook
`IPR petitions on March 23, 2018, In its’1427 IPR response,
`inter alia, Uniloc contended that LG should be barred from
`maintaining the ’1427 IPR once the Board issuesa final
`written decision in the Apple IPR because LG is estopped
`as a real party in interest (RPI) or privy to Facebook. See,
`e.g., J.A. 685.
`
`Two monthslater, on May 23, 2018, the Board issued a
`final written decision in the Apple IPR upholding the pa-
`tentability of all challenged claims. Six dayslater, on May
`29, 2018, the Board issued a decision in the ’1427 IPR dis-
`missing-in-part Facebook from the IPR, finding that Face-
`book was
`“estopped from maintaining the instant
`proceeding under § 315(e)(1)” as to the claims challenged
`in the Apple IPR,i.e., claims 1-6 and 8 of the ’433 patent.
`J.A. 756. As to claim 7, the Board reasoned that Facebook
`was not estopped from maintaining the proceeding for that
`claim because § 315(e)(1)’s estoppel provisions apply only
`to groundsthat the petitioner raised or reasonably could
`have raised “with respect to that claim.” Id. at 756-57.
`Lastly, the Board concluded that “[t]he dismissal of Face-
`book . .. does not limit LG’s participation in any way,”id.
`at 758, and therefore, LG was “to assumetherole of chal-
`lenger as to all claims, with Facebook[’s] .
`.
`. participation
`limited as to issues concerning solely claim 7,” id. at 759
`(emphasis omitted).
`
`C
`
`The Boardissuedits final written decision in the con-
`solidated IPRs on November 20, 2018. The Board con-
`cluded that all of the challenged claims are unpatentable.
`Facebook, Inc. v. Uniloc 2017 LLC, Nos. IPR2017-01427,
`IPR2017-01428, 2018 WL 6271687, at *33 (P.T.A.B. Nov.
`30, 2018). The Board found that claims 1-6 and 8 of the
`’°433 patent would have been obvious over Zydney in view
`of Clark, with Zydney teachingall but the “message data-
`base” and Clark supplying this missing limitation.
`Id. at
`
`

`

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`UNILOC 2017 LLC v. FACEBOOKINC.
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`*14, *22, *24. Likewise, the Board concluded that claim 7
`is unpatentable as obvious under a similar combination of
`Zydney, Clark, and Appelman. Id. at *24. The Boardalso
`concluded that claims 9-12, 14-17, 25, and 26 are un-
`patentable as obvious, with Zydney again as the primary
`reference. Id. at *27, *29, *31-33. Relevant to this appeal,
`the Board explained that Zydney teaches the “attaches one
`or morefiles to the instant voice message” limitation of the
`challenged claims. Id. at *25. In reachingthis conclusion,
`the Board reasoned that “attach” as used in theclaimsre-
`ferred to creating an association betweenthefiles and the
`instant voice message, id. at *7, the instant voice message
`in this phrase construed as “data content including a rep-
`resentation of an audio message,” id.
`
`Uniloc sought rehearing before the Board followingthis
`final written decision. Uniloc’s principal contention in
`seeking rehearing in the 1427 IPR was that the proceeding
`as a whole should have been terminated oncetheoriginal
`petitioner, Facebook, was deemed estopped, because
`“{j]oined parties are privy to a petitioner.” J.A. 907. Uniloc
`argued that rehearing was warrantedin the 71428 IPR be-
`cause it was denied proper notice in violation of due pro-
`cess. This was because, Uniloc contended, “[t]he Board sua
`sponte provided a definition of the term ‘attaches’ that was
`not advanced by” the parties or supported by the record.
`J.A. 2313. The Board denied both rehearing requests. J.A.
`105, 210.
`
`Uniloc appeals both final decisions to our court. We
`have jurisdiction pursuantto 28 U.S.C. § 1295(a)(4)(A).
`
`Though LG participated in this appeal through the
`8
`briefing stage, LG is no longer a party to the case. See Ap-
`pellant’s Unopposed Mot. to Withdraw LG Electronics, Inc.
`as a Party, ECF No. 56; ECF No. 57 (granting motion).
`
`

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`UNILOC 2017 LLC v. FACEBOOK INC.
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`9
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`DISCUSSION
`
`(1) the
`Uniloc raises four main disputes on appeal:
`Boarderred in finding that LG is not estopped from chal-
`lenging claims 1—8 in view of its purported relationship
`with Facebook as an RPI or privy; (2) the Board erred in
`finding that Facebook is not estopped from challenging
`claim 7; (3) the Boarderredin its unpatentability determi-
`nation of claims 1-8 because the cited references do not
`teach the “instant voice message application”of the claims;
`and (4) the Board erred in its unpatentability determina-
`tion of claims 9-12, 14-17, 25, and 26 becausethecited ref-
`erences
`do not
`teach the claimed “attaches... to”
`limitation. We address each argumentin turn.
`
`A
`
`Before we address the merits of Uniloc’s estoppel argu-
`ment against LG, we consideras an initial matter whether
`we may reviewthis particular challenge. As we have seen
`since the onset of IPRs, questions can arise as to whether
`we have the authority to review certain matters addressed
`in an IPR that are not directly related to the ultimate pa-
`tentability decisions the Board rendersin a final written
`decision. See, e.g., Thryv, Inc. v. Click-To-Call Techs., LP,
`—U.S.—, 140 S. Ct. 1867 (2020); SAS Institute Inc. v.
`Iancu, ——U.S.—, 138 S. Ct. 1348 (2018); Cuozzo Speed
`Techs., LLC v. Lee, ——U.S.—, 186 S. Ct. 2131 (2016).
`
`Uniloc’s challenge attacks the Board’s finding that LG
`is not an RPI or privy of Facebook and thus not estopped
`from challenging claims 1-6 and 8° of the 433 patent under
`
`Because the Board found that Facebook is notes-
`9
`topped from challenging claim 7 of the ’433 patent, the po-
`tential scope of estoppel for LG extends only to those claims
`for which Facebook was found estopped, i.e., claims 1-6
`and 8. Uniloc argues on appeal that the Board’s conclusion
`that Facebook is not estopped for claim 7 is incorrect and
`
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`§ 315(e)(1).!° In other words, Uniloc contends that because
`Facebook is estopped by the Apple IPR final written deci-
`sion from maintaining a challenge to those claimsin this
`proceeding(a ruling Facebook doesnot contest), LG, as an
`alleged “real party in interest or privy of the petitioner”
`likewise is estopped from maintaining this samechallenge
`per § 315(e)(1). As to the issue of reviewability, we consider
`the question before us to be whether 35 U.S.C. § 314(d)
`statutorily precludes judicial review, following a final writ-
`ten decision in an inter partes review proceeding,of a chal-
`lenge to the Board’s conclusion that under § 315(e)(1) a
`petitioner is not estopped from maintaining the proceeding
`before it. We conclude, under the circumstances here, we
`are not statutorily precluded from reviewing such a chal-
`lenge.
`Subsection 314(d) dictates that “[t]he determination by
`the Director [of the Patent Office] whether to institute an
`
`that LG should too be found estopped for claim 7. But as
`we concludeinfra, the Board did not err in finding that Fa-
`cebook is not estopped as to claim 7. Accordingly, no po-
`tential estoppel for claim 7 can extend to LG as analleged
`RPI or privy of Facebook.
`10 The text of 35 U.S.C. § 315(e)(1) is as follows:
`
`(e) Estoppel.—
`
`(1) Proceedings before the Office.—
`The petitioner in an inter partes review of a claim
`in a patent underthis chapterthat results in a final
`written decision under section 318(a), or the real
`party in interest or privy of the petitioner, may not
`request or maintain a proceeding before the Office
`with respect to that claim on any groundthat the
`petitioner raised or reasonably could have raised
`during thatinter partes review.
`
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`inter partes review under this section shall be final and
`nonappealable.” The Supreme Court in Cuozzo interpreted
`this provision as overcoming the strong presumption in fa-
`vor of judicial review “where the groundsfor attacking the
`decision to institute inter partes review consist of questions
`that are closely tied to the application and interpretation
`of statutes related to the Patent Office’s decision to initiate
`inter partes review.” Cuozzo, 13658.Ct. at 2141. In Cuozzo,
`the Court held that judicial review was precluded by
`§ 314(d) for a challenge to the Board’s determinations un-
`der § 312(a)(3), which mandatesthat a petitioner identify
`the grounds of the challenge with particularity, because
`this is “little more than a challenge to the Patent Office’s
`conclusion, under § 314(a), that the information presented
`in the petition warranted review.” Cuozzo, 136 S. Ct. at
`2142 (internal quotation marks omitted).
`
`The Supreme Court has since addressedthejudicialre-
`view bar under § 314(d) for other challenges stemming
`from decisions of the Patent Office in inter partes review
`proceedings. For example, the Court concluded in SAS JIn-
`stitute that § 314(d) does not preclude judicial review of a
`claim that the agency “exceededits statutory authority” in
`limiting an inter partes review to fewer than all the claims
`challengedin the petition. 138 S. Ct. at 1359. The Court
`reached the opposite conclusion for reviewability with re-
`spect to § 315(b) in Thryv, however, explaining that the pe-
`tition time bar of § 315(b) “expressly governs institution
`and nothing more,” such that “a contention that a petition
`fails under § 315(b) is a contention that the agency should
`haverefused ‘to institute an inter partes review.” 140 S.
`Ct. at 1373 (quoting § 314(d)). The Court explained that
`review was therefore precluded despite the presumption of
`judicial review. Id. at 1374.
`
`This court has considered additional types of Board de-
`cisions in which the statutory bar of § 314(d) (and similar
`provisions) against judicial review may (or maynot) apply.
`In Medtronic, we reasoned that the Board’s decision to
`
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`terminate proceedings in view of a party’s failure to name
`all RPIs under § 312(a)(2) is not reviewable because “[t]he
`Board’s reconsideration .. . is fairly characterized as a de-
`cision whetherto institute proceedings, the review of which
`is barred by § 314(d).” Medtronic, Inc. v. Robert Bosch
`Healthcare Sys., Inc., 839 F.3d 1382, 13885 (Fed. Cir. 2016).
`
`in Credit Acceptance Corp. v.
`On the other hand,
`Westlake Services, we held that judicial review of a chal-
`lenge to the Board’s application of the estoppel provision of
`§ 325(e)(1) is not precluded by § 324(e)!! because this pro-
`vision “is not limited to the institution stage” and “could
`operate to terminate a proceeding even wherethere existed
`no cause for termination at the time a petition was insti-
`tuted....” 859 F.3d 1044, 1050 (Fed. Cir. 2017). In that
`case, the alleged estoppel-triggering event did not occur un-
`til after the institution of the covered business method
`(CBM) patent review proceeding, and thus could not have
`affected the decision to initiate the administrative proceed-
`ing. Wethus explained that “the estoppel dispute in this
`case is neither a challenge to the Board’s institution deci-
`sion, noris it ‘closely tied’ to any ‘statute[] related to the
`Patent Office’s decision to initiate [CBM] review.” Id. at
`1051 (quoting Cuozzo, 136 S. Ct. at 2141).
`
`More recently, we held the inverse scenario of that in
`Medtronic is likewise not reviewable. That is, a challenge
`“that the Board failed to comply with [the RPI requirement
`of] § 312(a)(2)” and should have terminated the proceeding
`is merely “a contention that the agency should have re-
`fused to institute an inter partes review,” and therefore not
`reviewable by this court in view of § 314(d). ESIP Series 2,
`
`11 Subsection 324(e) is nearly identical in language to
`§ 314(d) but applies to other post-grant proceedings.
`It
`states: “The determination by the Director whetherto in-
`stitute a post-grant review underthis section shall be final
`and nonappealable.” § 324(e).
`
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`13
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`LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1386 (Fed.
`Cir. 2020) (quoting Thryv, 140 S. Ct. at 1373-74). Addi-
`tionally, we determined, in Facebook, Inc. v. Windy City In-
`novations, LLC, that judicial review is not precluded by
`§ 314(d) for challenges to “whether the Board’s joinder de-
`cisions exceeded the statutory authority provided by
`§ 315(c),” because this challenge was not related to the in-
`stitution decision but rather concerned “whether the PTO
`had exceeded its statutory authority as to the manner in
`which the already-instituted IPR proceeded.”
`973 F.3d
`1321, 1332 (Fed. Cir. 2020).
`
`With that background, we turn now to the question in
`this case of whether we may review the Board’s decision
`that LG is not estopped from maintaining its challenge
`against claims 1-6 and 8. Considering the strong presump-
`tion of reviewability of agency action, we see no indication
`that § 314(d) precludesjudicial review of the Board’s appli-
`cation of § 315(e)(1)’s estoppel provision in this case, in
`whichthe alleged estoppel-triggering event occurred after
`institution. Such a holding is a natural consequenceof our
`reasoning in Credit Acceptance. We concluded there that
`we could review the patent owner’s challenge to the Board’s
`decision that the petitioner was not estopped from main-
`taining a patentability challenge under a nearly identical
`statutory estoppel provision, albeit as applied to the CBM
`scheme. See Credit Acceptance, 859 F.3d at 1050-51.
`
`As the Supreme Court elucidated in Northcross v.
`Board of Education of Memphis City Schools, when one
`statute “tracks the wording of’ another,this is a “strong
`indication that the two statutes should be interpreted pari
`passu,” particularly if the two provisions share a common
`purpose. 412 U.S. 427, 428 (1973) (per curiam) (interpret-
`ing the language of the Emergency School Aid Act of 1972
`to allow for the ordinary award of attorneys’ fees because
`the relevant provision of the Act “tracks the wording”of the
`similarly focused Civil Rights Act of 1964, which the Court
`had previously interpreted as providing for such ordinary
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`
`award). Thus, just as we concluded for the CBM estoppel
`provision of § 325(e)(1) in Credit Acceptance, we likewise
`interpret the similarly worded and focused IPR estoppel
`provision of § 315(e)(1) as not so closely tied to institution
`to render judicial review precluded whenthe estoppel-trig-
`gering eventarisesafter institution. See 859 F.3d at 1049
`52 (considering the Supreme Court’s caselaw on reviewa-
`bility under § 314(d) and concluding that the appellant’s
`challenge under § 325(e)(1) “is neither a challenge to the
`Board’s institution decision, nor is it ‘closely tied’ to any
`‘statute[] related to the Patent Office’s decision to initiate
`[CBM] review.” (quoting Cuozzo, 136 S. Ct. at 2141) (mod-
`ifications in original))). Section 315(e)(1)’s use of “main-
`tain” contemplates that the estoppel provision “governs at
`any stage of a subsequent proceeding before the PTO—its
`application is not limited to the institution stage.” Credit
`Acceptance, 859 F.3d at 1050.
`Critically, the particular circumstances in Credit Ac-
`ceptance, i.e., one in which no cause for termination at the
`timeof petition existed and the basis for termination devel-
`oped while the proceeding was ongoing, is exactly that
`which happened here. When the Board instituted review
`in the ’1427 IPR, no estoppel could apply because nofinal
`written decision had been reached in the Apple IPR.
`Though the Board’s institution decision ordered supple-
`mental briefing regarding the potential, future applicabil-
`ity of § 315(e)(1)’s estoppel provision, due to its awareness
`of the advancedstate of the Apple IPR, the Apple IPRfinal
`written decision did not issue until monthsafterinstitution
`in this proceeding. The Board’s “no estoppel” decision thus
`waslater than and separatefrom its earlier institution de-
`cision, and, consistent with the facts and reasoning of
`Credit Acceptance, is a decision we may review. See Credit
`Acceptance, 859 F.3d at 1049-52; see also Windy City, 973
`F.3d at 1332 (explaining that § 315(c) joinder challenges
`are reviewable by this court despite § 314(d) because “the
`joinder decision is made after a determination that a
`
`

`

`Case: 19-1688
`
`Document:72
`
`Page: 15
`
`Filed: 03/09/2021
`
`UNILOC 2017 LLC v. FACEBOOKINC.
`
`15
`
`petition warrantsinstitution, thereby affecting the manner
`in which an IPR will proceed”) (citation omitted)).
`
`Finding Uniloc’s estoppel challenge as to LG reviewa-
`ble, we now consider the merits of that challenge. “Deter-
`mining whethera [party is a[n] [RPI] demandsa flexible ©
`approachthat takes into account both equitable and prac-
`tical considerations,” with the heart of the inquiry focused
`on “whethera petition has been filed at a []party’s behest.”
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d.
`1336, 1351 (Fed. Cir. 2018) (citation and internal quotation
`marks omitted). This determination has no bright-line
`test—relevant considerations, however, may include,
`“whethera []party exercises [or could exercise] control over
`a petitioner's participation in a proceeding, or whether a
`(Iparty is funding the proceeding or directing the proceed-
`ing.” Id. at 1342-43 (citing Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012)). Privity
`is also a highly fact-based inquiry, similarly “focus[ing] on
`the relationship between the named IPRpetitioner and the
`party in the prior lawsuit.” WesternGeco LLC v. Ion Geo-
`physical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018) (em-
`phasis added). That is, whethera party is in privity with
`another depends on the natureof the relationship between
`the two; “it is important to determine whether the peti-
`tioner andthe priorlitigant’s relationship—asit relates to
`the lawsuit—is sufficiently close that it can be fairly said
`that the petitioner [already] had a full andfair opportunity
`to litigate” the issues it now seeks to assert. See id. This
`inquiry is grounded in due process concerns for both the
`petitioner (here, LG) and the opposingparty (here, Uniloc).
`Seeid.(citing Taylor v. Sturgell, 553 U.S. 880 (2008)). In
`other words, the inquiry has a dual-focus on preventing the
`petitioner from now lodging a successive attack for which
`it already hadafirst bite, thus, protecting the defending
`party from an unwarranted second attack, while also en-
`suring that the petitioner is not unfairly limitedin its abil-
`ity to lodge its challenges if it has not had a full and fair
`
`

`

`
`
`Case: 19-1688|Document:72 Page:16 Filed: 03/09/2021
`
`
`
`16
`
`UNILOC 2017 LLC v. FACEBOOKINC.
`
`opportunity to do so already. Whethera party is an RPI or
`privy is a question of fact we review for substantial evi-
`dence. See Applications in Internet Time, 897 F.3d at 1356.
`
`Uniloc asserts that LG is an RPI or privy of Facebook
`becauseit “agreed to be bound by the determinationofis-
`sues in the [1427 IPR] proceeding below” and “exerted con-
`trol over substantive filings and oral argument in the
`[1427 IPR] proceeding below.” Appellant’s Br. at 20. The
`Board agreed with LG that the evidence was simply insuf-
`ficient to establish a key consideration of the RPI analy-
`sis—control. The Board further considered the nature of
`the relationship between the parties for privity based on
`the prior inter partes proceeding, i.e., the Apple IPR, and
`found that nothing in the record supported the conclusion
`that the two parties are “sufficiently close such that both
`should be bound by the trial outcome andrelated estop-
`pels.” J.A. 104 (quoting WesternGeco, 889 F.3d at 1317—
`22).
`
`The Board’s determination that LG is not an RPI or
`privy of Facebook is supported by substantial evidence.
`Uniloc’s somewhat conclusory arguments never attempt to
`differentiate its position as to RPI and privy,
`instead
`simply asserting that LG must be one or the other. But
`just because LG expressed an interest in challenging the
`433 patent’s patentability, throughits filing of its own IPR
`petition and joinder motion, does not by itself make LG an
`RPI to Facebook’s IPR. The record lacks any evidence that
`LG exercised any control over Facebook’sdecisiontofile for
`inter partes review (either in the Apple IPR andin this IPR)
`or Facebook’s arguments made during the proceedings, and
`vice versa. Moreover, nothing in the record suggests that
`Facebook recruited LG to join as a party to the Facebook
`IPR, thereby making LG an agent advancing Facebook’s
`interests. That is, we see no evidence in the record to sug-
`gest that LG is acting “as a proxy [in the 71427 IPR} for
`[Facebook] to relitigate the same issues” Facebook already
`presented in the Apple IPR. WesternGeco, 889 F.3d at 1319
`
`

`

`Case: 19-1688
`
`Document:72
`
`Page:17
`
`Filed: 03/09/2021
`
`UNILOC 2017 LLC v. FACEBOOKINC.
`
`17
`
`Instead, the record
`(citing Taylor, 553 U.S. at 894-95).
`showsthat LG, through its own counsel, filed its own IPR
`petitions in an effort to be recognized as an additional party
`to the proceeding here, seeking to assert its own inter-
`ests. 12
`
`The record likewise does not present evidence that LG
`and Facebook, beyond their relationship as joined parties
`in this proceeding, have any sort of “preexisting, estab-
`lished relationship” that indicates coordination amongst
`the two regarding the Apple IPR. See Applications in In-
`ternet Time, 897 F.3d at 1351. Without such evidence of
`control, in addition to no evidenceof joint funding, or even
`any evidence of substantial coordination between the par-
`ties as to their respective decisions to bring these proceed-
`ings, a finding that LG is an RPI of or in privity with
`Facebook here would be improper. See WesternGeco, 889
`F.3d at 1320-21 (explaining,in finding noprivity, that the
`evidence demonstrated the parties were representedbydif-
`ferent counsel, had no control over each other, had nocol-
`lective funding, and lacked substantive involvement with
`
`12 Uniloc’s estoppel theory for LG relies in part on its
`assertion that LG “unequivocally represent[ed] that it
`would be bound by the Board’s decisions asto the original
`petitioners and that it would not advance any separate ar-
`guments from those advanced by [Facebook].” Appellant’s
`Br. at 24. But that argument misunderstands LG’s posi-
`tion, as LG’s joinder motion in the 71427 IPR makes clear
`that LG had its own interests in challenging the ’433 pa-
`tent and that it would continue to pursue the IPR even if
`Facebook, for any reason, was no longer a petitioner. See
`J.A. 3345; see also J.A. 3340 (“[LG’s] interests may not be
`adequately protected in the Facebook IPR proceedings,
`particularly[, for example,] if the Facebook Petitionerset-
`tles with the Patent Owner.
`[LG] should be allowedto join
`in a proceeding affecting a patent asserted against it.”).
`
`

`

`Case: 19-1688
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`Document:72
`
`Page:18
`
`Filed: 03/09/2021
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`18
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`UNILOC 2017 LLC v. FACEBOOKINC.
`
`each other). The mere fact that the Board procedurally re-
`quired LG and Facebook to consolidate their arguments
`and evidence in combined filings in this proceeding does
`not, without more, make them privies of each other such
`that one petitioner automatically loses its rights to assert
`its challenge once the other petitioner loses its rights
`through estoppel.
`
`Wedecline, as the Board too did, to conclude that LG
`is estopped as result of Facebook’s participation in the Ap-
`ple IPR, merely by wayofits joinderas a partyin thislater
`proceeding. Uniloc suggests that the Board, in reaching
`this conclusion, failed to address its arguments regarding
`Kofax, In