UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`FACEBOOK, INC., WHATSAPP INC.,
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`
`
`
`IPR2017-01427
`PATENT 8,995,433
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S BRIEF REGARDING § 315(e)(1)
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`FACEBOOK, INC., WHATSAPP INC.,
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`
`
`
`IPR2017-01427
`PATENT 8,995,433
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S BRIEF REGARDING § 315(e)(1)
`
`
`
`
`
`
`
`
`Pursuant to the Board’s oral order given on February 8, 2018, during the Oral
`
`Hearing in consolidated matters IPR2017-0221, IPR2017-0222, and IPR2017-0225,
`
`Patent Owner hereby addresses whether the instant Petitioners’ involvement in both
`
`IPR2017-01427 and in IPR2017-0225 raises estoppel issues under 35 U.S.C. §
`
`315(e)(1).
`
`The answer is yes. Petitioners Facebook and WhatsApp (“Petitioners”) filed
`
`this IPR on May 11, 2017 and included grounds based on Zydney and Appleman,
`
`including a challenge to Claim 7 based on Zydney + Clark + Appleman. One month
`
`later, on June 16, 2017, Petitioners filed IPR2017-01634, requesting joinder to
`
`IPR2017-00225. In their joinder request, Petitioners chose to omit their grounds
`
`based on Zydney and Appleman, including their challenge to Claim 7.
`
`I.
`
`Zydney and Appleman are grounds the Petitioners could have raised.
`
`Upon entry of a final written decision in IPR2017-00225, Petitioners will be
`
`estopped by § 315(e)(1) from maintaining this IPR based on any grounds they could
`
`have raised in IPR2017-00225, including their grounds based on Zydney and
`
`Appleman and their challenge to Claim 7 (which is based on Zydney + Clark +
`
`Appleman). There is no doubt Petitioners were aware of these grounds when they
`
`requested joinder because they were raised in this IPR before the joinder request.
`
`Further, Petitioners were not prevented from raising these grounds in the ‘225
`
`IPR by the fact that they were joining as mere understudies. The PTAB recently
`
`i
`
`
`
`
`
`addressed this issue under nearly identical circumstances in Apple Inc. v. Papst
`
`Licensing Gmbh & Co., Kg, IPR2016-01860, 2018 WL 357346, at *2–3 (Patent Tr.
`
`& App. Bd. Jan. 10, 2018). In Apple, like here, petitioner filed a joinder IPR petition
`
`(IPR2017-00679) after filing its own IPR petition (IPR2016–01860) (the “Apple
`
`IPR”). Like here, petitioner omitted from its joinder petition grounds and claims1
`
`that it had previously raised in the Apple IPR. Like here, the PTAB instituted both
`
`IPRs, instituting in the Apple IPR grounds and claims that were not raised or
`
`instituted in the joinder IPR. Id.
`
`After a final written decision in the joinder IPR, the PTAB found petitioner
`
`was estopped from continuing to maintain the Apple IPR based on the Pucci grounds
`
`because those grounds could have been raised in the joinder IPR, as evidenced by
`
`the fact that Apple raised them in its own petition months before requesting joinder.
`
`Id. The PTAB terminated the Apple IPR (which included 13 claims that were not
`
`instituted in the joinder IPR) because it was estopped by the joinder IPR. Id.
`
`In Apple, the PTAB rejected Apple’s argument that “it could not have raised
`
`the Pucci grounds in the Joinder IPRs because trial had been instituted already in
`
`those proceedings,” stating:
`
`This is not a fact relevant to our inquiry. We focus on whether Apple
`
`1 There are 13 claims (7, 9, 17, 19, 21, 26, 41, 56-57, 66-67, 78-79) that were raised and instituted in the Apple IPR
`that were not raised or instituted in the joinder IPR. Compare Apple IPR petition and trial instituted document
`(IPR2016–01860, paper 2 at 1; paper 10 at 2) to the Apple joinder IPR petition and trial instituted document (IPR2017-
`00679, paper 1 at 0, paper 11 at 2). All of the 13 claims Apple omitted from its joinder IPR were based at least in part
`on Pucci, the ground the PTAB determined Apple was estopped from asserting in the Apple IPR.
`
`ii
`
`
`
`
`
`did raise or reasonably could have raised the Pucci grounds when it
`filed the ‘670 and ‘679 petitions and requested joinder. Apple chose not
`to include any ground based on Pucci in these petitions, but rather to
`file petitions identical to those for which trial was instituted in the
`Joinder IPRs. We recognize that what Apple chose to do served to
`increase the likelihood that the Board would grant the joinder request.
`A petitioner, however, is not required to join another petitioner’s
`case. Nor is a petitioner required to request joinder only as to those
`grounds previously instituted. Thus, the choice of what ground to
`raise or not to raise is that of the petitioner. And for purposes of our
`inquiry regarding what constitutes grounds that could have been raised,
`it does not matter whether the Board would have instituted on those
`grounds had they been presented in connection with a joinder request.
`Id. at 2 (emphasis added) (internal quotes omitted). The Eastern District of Texas
`
`recently reached the same conclusion under similar circumstances, stating:
`
`The fact that HP sought joinder with Avaya’s IPR does not mean that
`HP could not have reasonably raised different grounds from those
`raised by Avaya, and whether to join an IPR and assert identical or
`different prior art—with the associated estoppel ramifications—was a
`decision for HP to make.
`
`Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc., 6:11-CV-00492-RWS, 2017 WL
`
`4856473, at *1 (E.D. Tex. Oct. 27, 2017).
`
`Here, as in Network-1 and Apple, Petitioners were not required to join the ‘225
`
`IPR and were not required to request joinder only as to those grounds already raised
`
`in the ‘225 Petition. Petitioners reasonably could have raised Zydney and Appleman
`
`and reasonably could have included their challenge to Claim 7 (as they had done
`
`only a month before filing their joinder petition) but chose not to. Upon entry of a
`
`final written decision in the ’225 IPR, Petitioners will be estopped from maintaining
`
`iii
`
`
`
`
`
`this IPR based on grounds they chose not to raise in the ‘225 IPR, including their
`
`grounds based on Zydney and Appleman and their challenge to Claim 7.
`
`II. The Shaw/Westlake exception does not apply here.
`
`One exception to estoppel under § 315 is that estoppel does not apply to
`
`non-instituted grounds or claims where the earlier IPR petitioner raised those
`
`grounds or claims but institution was denied as to those grounds or claims. See Shaw
`
`Indus. Group, Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir.
`
`2016) (finding estoppel did not apply to non-instituted grounds where those grounds
`
`were raised in the earlier petition but institution on them was denied); Credit
`
`Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1051-52 (Fed. Cir. 2017)
`
`(finding estoppel did not apply to non-instituted claims where those claims were
`
`raised in the earlier petition but institution was denied as to those claims).
`
`That exception is inapplicable here (just as it was in Apple and Network-1)
`
`because the PTAB did not decline to institute IPR on Zydney and Appleman or on
`
`Claim 7. Rather, Petitioners chose to omit them from their joinder petition only a
`
`month after including them in this IPR petition.
`
`While some courts have erroneously applied Shaw to find that estoppel cannot
`
`apply to any grounds not included in the IPR petition, these decisions have been
`
`roundly and persuasively criticized because it “undermines the purported efficiency
`
`of IPR,” making IPR “an additional step in the process” and “not an alternative to
`
`iv
`
`
`
`
`
`litigating validity in the district court.” Biscotti Inc. v. Microsoft Corp.,
`
`213CV01015JRGRSP, 2017 WL 2526231, at *6 (E.D. Tex. May 11, 2017).
`
`
`
`The better view – that only grounds raised in a petition but not instituted – is
`
`“consistent with due process” and adheres to the plain language of § 315. Biscotti,
`
`2017 WL 2526231; Milwaukee Elec. Tool Corp. v. Snap-On Inc., 271 F. Supp. 3d
`
`990, 1029 (E.D. Wis. 2017) (“If a party does not include an invalidity ground in its
`
`petition that it reasonably could have included, it necessarily has not raised a ground
`
`that it reasonably could have raised during...IPR.”).
`
`The PTAB has itself takes this reasoned view of § 315. See Great W. Cas.
`
`Co. v. Intellectual Ventures II LLC, IPR No. 2016–01534, Paper No. 13, at 11–14
`
`(PTAB Feb. 15, 2017) (“[A] petitioner makes an affirmative choice to avail itself of
`
`inter partes review only on certain grounds. That choice, however, comes with
`
`consequences, most prominently, that grounds petitioner elects not to raise in its
`
`petition for inter partes review may be subject to the consequences of Section
`
`315(e)(1).”) (emphasis added); Apple Inc., IPR2016-01860, 2018 WL 357346 at *2–
`
`3 (applying estoppel to non-petitioned grounds that could have been raised).
`
`Because Petitioners will be estopped from maintaining this IPR once a final
`
`decision is entered in IPR2017-0225, this IPR should be terminated. Allowing
`
`Electronics to join this IPR will create inefficiency and confusion. This IPR should
`
`be terminated and LG Electronics can, if it chooses to, file its own IPR.
`
`v
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
`
`of the foregoing PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. § 42.107(a) along with any accompanying exhibits via
`
`the Patent Review Processing System (PRPS) to Petitioner’s counsel of record at the
`
`following address:
`
`PETITIONER LEAD COUNSEL
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`PETITIONER BACK-UP COUNSEL
`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (703) 456-8668
`Fax: (703) 456-8100
`
`
`
`Date: February 15, 2018
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owners
`Reg. No. 64,783
`
`Ryan Loveless
`Attorney for Patent Owners
`Reg. No. 51,970
`
`
`
`vi
`
`
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
