Atty Docket No. FABO-065/01US
`(309101-2185)
`
`
`
`
`
`IPR2017-01427
`U.S. Patent No. 8,995,433
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioners,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-01427
`U.S. Patent No. 8,995,433
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONERS’ BRIEF REGARDING § 315(E)(1)
`
`
`
`
`
`(309101-2185)
`
`
`
`
`
`IPR2017-01427
`U.S. Patent No. 8,995,433
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioners,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-01427
`U.S. Patent No. 8,995,433
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONERS’ BRIEF REGARDING § 315(E)(1)
`
`
`
`
`
`
`Atty Docket No. FABO-065/01US
`(309101-2185)
`
`
`
`
`
`IPR2017-01427
`U.S. Patent No. 8,995,433
`
`The Petitioners filed the present IPR petition and a Petition and Motion
`
`seeking joinder with IPR2017-00225, both of which were granted. The Board
`
`directed the parties to address whether the Petitioners’ involvement in both
`
`proceedings raises estoppel issues under 35 U.S.C. § 315(e)(1). (See Decision and
`
`Order, Paper 8, at 2-3.) The Petitioners’ response is set forth below.
`
`I.
`
`NO ESTOPPEL ISSUE EXISTS AT THIS TIME
`The Petitioners respectfully submit that any issues relating to estoppel under
`
`§ 315(e)(1) are premature. The statute makes clear that estoppel under § 315(e)(1)
`
`will not arise unless and until issuance of a Final Written Decision. 35 U.S.C.
`
`§ 315(e)(1). No Final Written Decision is due in IPR2017-00225 until May 25,
`
`2018. (See Paper 8, at 2.)
`
`Much can happen between now and the deadline for issuance of a Final
`
`Written Decision in IPR2017-00225. For example, it is possible that IPR2017-0225
`
`could be terminated before issuance of a final decision, for example, in the event of
`
`a settlement between the patent owner and the original petitioner (Apple Inc.).
`
`35 U.S.C. § 318(a). Because a Final Written Decision has not issued in IPR2017-
`
`0225 (and possibly may never issue), any determination on estoppel would be
`
`premature.
`II. THIS PROCEEDING WILL NOT BE IMPACTED BY ANY ESTOPPEL ARISING
`FROM A FINAL WRITTEN DECISION IN IPR2017-00225
`
`Even if the issue were ripe for consideration, this proceeding would not be
`
`
`
`
`
`1
`
`
`
`
`
`Atty Docket No. FABO-065/01US
`(309101-2185)
`
`affected by the estoppel provisions of § 315(e)(1).
`
`
`
`
`IPR2017-01427
`U.S. Patent No. 8,995,433
`
`A. No Estoppel Could Apply to Claim 7
`The Board here instituted IPR on claims 1-8 of the ’433 patent. (Paper 8.) In
`
`IPR2017-00225 (initiated by original petitioner Apple Inc.) and IPR2017-01634
`
`(initiated by Petitioners and joined with IPR2017-00225), the Board instituted IPR
`
`only as to claims 1-6 and 8. (IPR2017-00225, Paper 7; IPR2017-01634, Paper 10.)
`
`Claim 7 therefore cannot be subject to any estoppel arising from IPR2017-00225.
`
`See 35 U.S.C. §§ 315(e)(1), 318(a); Credit Acceptance Corp. v. Westlake Servs., 859
`
`F.3d 1044, 1051-52 (Fed. Cir. 2017).
`
`B.
`Estoppel Will Not Impact the Present Proceeding
`Under § 315(e)(1), estoppel will apply only to grounds “the petitioner raised
`
`or reasonably could have raised during [IPR2017-00225].” 35 U.S.C. 315(e)(1).
`
`Because the grounds instituted here were not raised during IPR2017-00225, and
`
`could not reasonably have been raised “during” IPR2017-00225 as discussed further
`
`below, no estoppel could apply with respect to any of the grounds instituted here.
`
`More specifically, there is no overlap between the prior art raised in the two
`
`sets of petitions. The Board in IPR2017-00225 and IPR2017-01634 instituted IPR
`
`based on the Abburi, Holtzberg, Vuori, Logan, and Vaananen references. (IPR2017-
`
`00225, Paper 7; IPR2017-01634, Paper 10.) But here, the Board instituted only on
`
`grounds based on the Zydney, Clark, and Appelman references. (Paper 8, at 7.)
`
`
`
`
`
`-2-
`
`
`
`
`
`Atty Docket No. FABO-065/01US
`(309101-2185)
`
`
`
`
`
`IPR2017-01427
`U.S. Patent No. 8,995,433
`
`The Federal Circuit’s decision in Shaw makes clear that no estoppel can apply
`
`here. See Shaw Indus. Grp. v. Automated Creel Sys., 817 F.3d 1293 (Fed. Cir. 2016).
`
`In Shaw, the Federal Circuit held that estoppel under § 315(e) arises only from
`
`grounds that the petitioner raised “during” a prior IPR. Shaw, 817 F.3d at 1300
`
`(italics in original) (quoting 35 U.S.C. § 315(e)(1)-(2)). As the Court noted, “[t]he
`
`IPR does not begin until it is instituted.” Id. Therefore, the petitioner in Shaw “did
`
`not raise—nor could it have reasonably raised . . . during the IPR” a prior art ground
`
`that was not part of the instituted IPR. Id. (emphasis in original). In other words, a
`
`prior art ground cannot give rise to estoppel under 35 U.S.C. § 315(e) when “no IPR
`
`was instituted on that ground.” Id.
`
`The same reasoning applies here. In IPR2017-00225 and IPR2017-01634, the
`
`panels did not institute IPR based on the prior art grounds upon which the Board
`
`instituted IPR in the present proceeding (Zydney in view of Clark and Appelman).
`
`The Petitioners (and original petitioner Apple) therefore did not raise, nor could they
`
`reasonably have raised, the Zydney-based grounds “during” the IPR in either
`
`IPR2017-00225 or IPR2017-01634. “The plain language of the statute prohibits the
`
`application of estoppel under these circumstances.” Shaw, 817 F.3d at 1300.
`
`Petitioners acknowledge that some have argued that Shaw should apply only
`
`where grounds were raised in an IPR petition but not instituted (for example, on
`
`redundancy grounds). But the Shaw decision was based on an interpretation of the
`
`
`
`
`
`-3-
`
`
`
`
`
`Atty Docket No. FABO-065/01US
`(309101-2185)
`
`plain language of § 315(e) that did not depend on the content of the original petition.
`
`IPR2017-01427
`U.S. Patent No. 8,995,433
`
`
`
`
`817 F.3d at 1300. The Federal Circuit’s clear holding, that “estoppel applies only to
`
`grounds that were both raised in the IPR petition and instituted in the IPR
`
`proceeding,” means that non-instituted grounds are not subject to estoppel –
`
`regardless of whether they were presented in the IPR petition. Finjan, Inc. v. Blue
`
`Coat Systems, LLC, Case No. 15-cv-03295, slip op. at 20-21 (N.D. Cal. July 28,
`
`2017) (discussing Shaw) (emphasis added). Similarly, although some have argued
`
`that as a policy matter the estoppel under § 315(e) should extend beyond instituted
`
`grounds, the Federal Circuit has made clear that Shaw controls, and that “[s]uch
`
`policy arguments are more properly addressed to legislators or administrators, not to
`
`judges.” Credit Acceptance, 859 F.3d at 1053 (citation omitted).
`
`C. The Present IPR Should Proceed to Final Written Decision
`Even if the estoppel under § 315(e)(1) applied to non-instituted grounds that
`
`could have been presented in an earlier-filed IPR petition (which it does not),
`
`estoppel would still not apply here. This is because the Petitioners here could not
`
`“reasonably” have presented the grounds here in their petition seeking joinder with
`
`IPR2017-00225. The Petitioners here joined as mere “understudies” in IPR2017-
`
`00225, bound to accept all positions and evidence proffered by Apple. (See
`
`IPR2017-01634, Papers 3, 10.) It would not have been proper for the Petitioners to
`
`raise the different Zydney-based grounds in their joinder petition. See, e.g.,
`
`
`
`
`
`-4-
`
`
`
`
`
`Atty Docket No. FABO-065/01US
`(309101-2185)
`
`Medtronic v. Norred, IPR2014-00823 (PTAB Dec. 8, 2014), Paper 12 at 4-7
`
`IPR2017-01427
`U.S. Patent No. 8,995,433
`
`
`
`
`(denying joinder seeking to raise different prior art).
`
`It also makes sense, from a practical standpoint, to proceed to a final decision
`
`here. As noted previously, no estoppel could apply to claim 7 because it was not
`
`instituted in IPR2017-00225. Because claim 7 depends from independent claim 1,
`
`which is the base claim of claims 2-5 and substantially similar to independent claim
`
`6, the parties and the Board will have to expend nearly the same effort regardless of
`
`whether estoppel may arise after the final decision in IPR2017-00225.
`
`Additionally, third-party LG Electronics, Inc. filed a substantively identical
`
`petition to join the present IPR on claims 1-8, and a motion for joinder with this case
`
`that the Patent Owner did not oppose. (IPR2017-02087, Papers 2, 3.) Because LG
`
`was not a party to IPR2017-00225, it would not be subject to any estoppel from that
`
`proceeding. In the event that LG’s motion for joinder is granted, the present IPR
`
`will proceed on claims 1-8 through LG’s joinder petition. This provides yet another
`
`good reason not to improperly curtail this proceeding as to the Petitioners.
`
`Dated: January 25, 2018
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`By:
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
` /Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners
`Facebook, Inc. and WhatsApp
`Inc.
`
`
`
`
`
`-5-
`
`
`
`
`
`Atty Docket No. FABO-065/01US
`(309101-2185)
`
`
`
`
`
`IPR2017-01427
`U.S. Patent No. 8,995,433
`
` CERTIFICATE OF SERVICE
`
`
`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`
`the attached PETITIONERS’ BRIEF REGARDING § 315(E)(1) is being served
`via electronic mail on the 25th day of January, 2018, upon counsel of record for the
`Patent Owner as follows:
`
`
`
`
`
`Brett Mangrum
`brett@etheridgelaw.com
`Ryan Loveless
`ryan@eitheridgelaw.com
`ETHERIDGE LAW GROUP
`
`Sean D. Burdick
`sean.burdick@unilocusa.com
`UNILOC USA, INC.
`
`
`DATED: January 25, 2018
`
`
`
`
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`
`
`
`
`-6-
`
`
`
`
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
