Trials@uspto.gov
`571-272-7822
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`Paper 48
`Entered: January 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,1
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01427
`Patent 8,995,433 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. §§ 42.71(d)
`
`
`
`
`
`
`1 LG Electronics, Inc. filed a petition and a motion for joinder in IPR2017-
`02087, which were granted, and, therefore, has been joined to this
`proceeding. Paper 9.
`
`
`571-272-7822
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`
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`Paper 48
`Entered: January 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,1
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01427
`Patent 8,995,433 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. §§ 42.71(d)
`
`
`
`
`
`
`1 LG Electronics, Inc. filed a petition and a motion for joinder in IPR2017-
`02087, which were granted, and, therefore, has been joined to this
`proceeding. Paper 9.
`
`
`
`IPR2017-01427
`Patent 8,995,433 B2
`
`
`INTRODUCTION
`I.
`On November 30, 2018, the Board issued a consolidated Final Written
`Decision in this proceeding and in IPR2017-01428. Paper 46 (“Final Dec.”).
`In that Final Written Decision, we determined that Petitioner had shown by a
`preponderance of the evidence that claims 1−12, 14−17, 25, and 26 of the
`’433 patent are unpatentable. Id. at 97; but see id. at 4 (identifying the
`claims at issue in IPR2017-01427 as claims 1−8 of the ’433 patent). On
`December 30, 2018, Patent Owner filed a Request for Rehearing. Paper 47
`(Req. Reh’g). Patent Owner argues that under 35 U.S.C. § 315(e)(1), the
`proceeding as a whole should have been terminated once the original
`petitioners were subject to estoppel. Req. Reh’g 1−5.
`According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a
`decision should be modified lies with the party challenging the decision,”
`and the “request must specifically identify all matters the party believes the
`Board misapprehended or overlooked.” The burden here, therefore, lies with
`Patent Owner to show we misapprehended or overlooked the matters it
`requests that we review.
`II. ANALYSIS
`In the course of trial, we issued a decision concluding that estoppel
`under 35 U.S.C. § 315(e)(1) warranted dismissing Facebook and WhatsApp
`from maintaining the instant proceeding as to claims 1−6, and 8, but not as
`to claim 7. Paper 30.2 In particular, § 315(e)(1) states that a “petitioner in
`
`
`2 The decision on estoppel was based on our Final Written Decision in
`IPR2017-00225 (“-225 case”), in which Facebook and WhatsApp are
`2
`
`
`
`IPR2017-01427
`Patent 8,995,433 B2
`
`an inter partes review of a claim . . . that results in a final written
`decision . . . , 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 ground that the petitioner raised or reasonably could have raised
`during that inter partes review.” See Paper 30, 5−6. We determined that
`claim 7 was not part of the inter partes review to which Facebook and
`WhatsApp were parties and which resulted in a Final Written Decision (i.e.,
`in the -225 case). Id. Accordingly, we allowed Facebook and WhatsApp to
`remain in this proceeding as to claim 7 only. More importantly, we
`determined that LG Electronics, the remaining Petitioner entity in this
`proceeding was not estopped, and, therefore, would be allowed to maintain
`the proceeding as to all claims. Id. at 7−8.
`Despite having previously filed a brief regarding the issue of estoppel
`earlier in trial (Paper 12), Patent Owner now argues for the first time that, by
`virtue of LG Electronics’ joinder in this proceeding, LG Electronics is a
`privy of Facebook and WhatsApp for purposes of § 315(e)(1). Req.
`Reh’g 3−4. Estoppel under § 315(e)(1), according to Patent Owner, would
`apply to LG Electronics because the estoppel is not limited to a petitioner,
`but also applies to privies and real parties-in-interest. Id. We are not
`persuaded by Patent Owner’s arguments.
`Patent Owner’s brief regarding the issue of estoppel did not argue that
`joining LG Electronics as a party to this proceeding would create a privity
`relationship with Facebook and WhatsApp such that LG Electronics would
`
`petitioners. The -225 case addressed claims 1−6 and 8 of the ’433 patent.
`3
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`IPR2017-01427
`Patent 8,995,433 B2
`
`also be estopped under § 315(e)(1). Paper 12. Instead, Patent Owner took
`the position that allowing LG Electronics “to join this IPR will create
`inefficiency and confusion” and that LG Electronics should file its own IPR.
`Id. at v. To be sure, at the time the parties filed briefing on estoppel, we had
`not yet decided the pending Motion for Joinder of LG Electronics. See
`Papers 11, 12, 18. But by the time those briefs were filed, both parties
`clearly contemplated that LG Electronics’ joinder was either imminent or
`probable, and Patent Owner did not contend then that LG Electronics would
`also be estopped because of privity. See Paper 11, 5 (Petitioner arguing that
`LG Electronics filed a me-too petition and motion for joinder, and LG
`Electronics would not be estopped because it is not a party to the -225 case);
`Paper 12, v. (Patent Owner arguing LG Electronics should file its own case).
`Indeed, no brief filed by any party to date has included argument that
`LG Electronics is a privy of Facebook and WhatsApp. After we issued the
`decision on estoppel (Paper 30) on May 29, 2018, Patent Owner did not
`contact the Board for a determination of the privy issue. Nor did Patent
`Owner raise at oral argument that LG Electronics is a privy of Facebook and
`WhatsApp such that LG Electronics would be estopped from presenting oral
`argument.
`Additionally, Patent Owner does not show either factual or legal
`authority for the contention that an entity, by joining a proceeding under
`35 U.S.C. § 315(c), automatically becomes a privy, in that proceeding, of
`the other petitioner entities. Patent Owner produces a definition of “privy”
`as a “mutual or successive relationship to the same rights of property” as
`supporting its position. Req. Reh’g 4. This is an insufficient showing that
`4
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`IPR2017-01427
`Patent 8,995,433 B2
`
`LG Electronics became a privy of Facebook and WhatsApp merely by
`joining this proceeding. Patent Owner’s argument suggests that privity
`arises here merely because LG Electronics adopted the same contentions
`held by Facebook and WhatsApp in this proceeding when it joined this
`proceeding as a petitioner entity. In other words, according to Patent Owner,
`in a proceeding with entity A and a joined entity B as petitioners, estoppel of
`entity A applies to entity B merely because entity B joined that proceeding.
`Again, Patent Owner narrowly focuses on the fact that LG Electronics joined
`this inter partes review and focuses on the relationship between Petitioners
`in this inter partes review.
`When deciding “privity,” for estoppel purposes, however, it makes
`sense to focus on the relationship between the named Petitioner and the
`alleged privy in the prior inter partes review, i.e., the -225 case. See
`WesternGeco LLC v. Ion Geophysical Corp., 889 F.3d 1308, 1317–22 (Fed.
`Cir. May 7, 2018) (discussing that a privity inquiry must be grounded in due
`process and that, in the context of § 315(b), the inquiry focuses on the
`relationship between the named IPR petitioner and the party in the prior
`lawsuit and noting that “privity analysis seeks to determine whether the
`relationship between the purported privy and the relevant other party is
`sufficiently close such that both should be bound by the trial outcome and
`related estoppels”); see also Shamrock Techs. Inc. v. Medical Sterilization,
`Inc., 903 F.2d 789, 793 (“What constitutes ‘privity’ varies, depending on the
`purpose for which privity is asserted.”). LG Electronics was not a party to
`the -225 case, and there is neither fact nor allegation in the record of actions
`
`5
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`IPR2017-01427
`Patent 8,995,433 B2
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`by LG Electronics in connection with any prior inter partes review that
`warrants a privity inquiry, at this stage in the proceeding.
`Finally, we are not persuaded that in our Final Written Decision we
`overlooked or misapprehended the role of LG Electronics in this proceeding
`as an alleged “privy,” as this issue is presented for the first time on
`rehearing.
`III. ORDER
`Patent Owner’s Request for Rehearing is denied.
`
`
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`
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`6
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`IPR2017-01427
`Patent 8,995,433 B2
`
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Mark Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`mweinstein@cooley.com
`
`Anand Sharma
`Minjae Kang
`Joshua Goldberg
`Bradford Shulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P
`Anand.sharma@finnegan.com
`Minjae.kang@finnegan.com
`Joshua.goldbert@finnegan.com
`Bradford.shulz@finnegan.com
`
`
`PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`7
`
`
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