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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 U.S.C.
`§§ 42.22 AND 42.122(b) TO RELATED INTER PARTES REVIEW
`IPR2017-00225
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`
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`SNAP INC.
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`
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`Patent No. 8,995,433 B2
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`TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
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`TABLE OF CONTENTS
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`Page
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`STATEMENT OF THE PRECISE RELIEF REQUESTED ......................... 1
`I.
`STATEMENT OF MATERIAL FACTS ....................................................... 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ....................... 4
`A.
`Legal Standard ...................................................................................... 4
`B.
`Petitioners’s Motion for Joinder is Timely .......................................... 5
`C.
`Each Factor Weighs in Favor of Joinder .............................................. 5
`1.
`Joinder is Appropriate as No New Grounds or Issues Are
`Raised ......................................................................................... 6
`Joinder Will Not Negatively Impact the Trial Schedule ........... 7
`2.
`Joinder Petitioner Agrees to an “Understudy” Role .................. 8
`3.
`IV. CONCLUSION ............................................................................................. 10
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` i
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`TABLE OF AUTHORITIES
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`Page
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`CASES
`Amneal Pharms., LLC v. Endo Pharms. Inc.,
`Case IPR2016-01365 (PTAB February 4, 2015) ................................................... 4
`Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc.,
`Case IPR2014-00556 (PTAB July 9, 2014)........................................................... 6
`Fujitsu Semiconductor Ltd. v. Zond, LLC,
`Case IPR2014-00845 (PTAB Oct. 2, 2014) .......................................................... 6
`Kyocera Corp. v. Softview LLC,
`Case IPR2013-00004 (PTAB Apr. 24, 2013) ........................................................ 4
`Mylan Pharmaceuticals Inc. et al. v. Dr. Falk Pharma GmbH,
`Case IPR2016-01386 (PTAB Nov. 30, 2016) .....................................................10
`Mylan Pharms. Inc. v. Novartis AG,
`Case IPR2014-00550 (PTAB Apr. 10, 2015) ........................................................ 9
`Perfect World Entm’t, Inc. v. Uniloc USA, Inc.,
`Case IPR2015-01026 (PTAB Aug. 3, 2015) ......................................................... 6
`Samsung Electronics, Co., Ltd., et al. v. Raytheon Company,
`Case IPR2016-00962 (PTAB Aug. 24, 2016) ...................................................4, 6
`Sony Corp. et al. v. Memory Integrity,
`Case IPR2015-01353 (PTAB Oct. 15, 2015) ............................................... 6, 7, 9
`STATUTES
`35 U.S.C. § 315(c) .................................................................................................1, 4
`OTHER AUTHORITIES
`37 C.F.R. § 42.1(b) .................................................................................................... 4
`37 C.F.R. § 42.100(c) ................................................................................................. 8
`37 C.F.R. § 42.101(b) ................................................................................................ 5
`
`
`
`ii
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`37 C.F.R. § 42.122(b) ....................................................................................... 1, 4, 5
`37 C.F.R. § 42.22 ....................................................................................................... 1
`37 C.F.R. § 42.53 ....................................................................................................... 9
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`iii
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Snap Inc. (“Joinder Petitioner” or “Snap”) respectfully submits this Motion
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`for Joinder together with a Petition for Inter Partes Review of U.S. Patent. No.
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`8,995,433 (“’433 Patent”) (“the Joinder Petition”) filed contemporaneously
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`herewith.
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`The Board instituted inter partes review of claims 1–6 and 8 of the ’433 Patent
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`in Apple Inc. v. Uniloc USA, Inc. and Uniloc Luxembourg S.A., IPR2017-00225 on
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`May 25, 2017. Pursuant to 35 U.S.C. § 315(c)) and 37 C.F.R. §§ 42.22 and
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`42.122(b), Joinder Petitioner requests institution of inter partes review of claims 1–
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`3, 5, 6, and 8 of the ’433 Patent and requests joinder, as to those claims only, with
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`IPR2017-00225.
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`The Joinder Petition is narrowly tailored to the same claims, prior art, and
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`grounds for unpatentability currently at issue in IPR2017-00225. In fact, the Joinder
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`Petition and supporting exhibits are substantively identical to the original Petition
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`submission (“Original Petition”) by Apple Inc. (“Apple” or “Original Petitioner”) in
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`IPR2017-00225, except that Joinder Petitioner seeks review and joinder as to only a
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`subset of the claims upon which inter partes review has been instituted.
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`Joinder is appropriate because it will not burden or prejudice the present
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`parties to IPR2017-00225, will not cause any undue delay, and will efficiently
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`resolve the question of the ’433 Patent’s validity on the instituted grounds. Further,
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`1
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`Joinder Petitioner is willing to serve in a limited “understudy” role to streamline
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`discovery and briefing.
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`The Original Petitioner in IPR2017-00225, Apple, does not oppose the present
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`motion for joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On June 14, 2016, Uniloc USA, Inc. and Uniloc Luxembourg, S.A.
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`(“Uniloc”) filed a civil action for patent infringement against Apple in the Eastern
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`District of Texas, asserting that Apple has infringed the ’433 Patent and three other
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`related patents. (Complaint, Uniloc USA, Inc. v. Apple Inc., Case No. 2:16-CV-638-
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`JRG (“Apple Action”), ECF No. 1.) On July 21, 2016, the Apple Action was
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`consolidated with Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., Case No. 2:16-CV-
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`00642-JRG (“Consolidated Apple Action”). (Order, Consolidated Apple Action,
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`ECF No. 14.)
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`2.
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`On June 30, 2016, Uniloc filed a civil action for patent infringement
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`against Snap in the Eastern District of Texas, asserting that Snap has infringed the
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`’433 Patent and three other related patents. (Complaint, Uniloc USA, Inc. v. Snap
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`2
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`Inc.,1 Case No. 2:16-CV-696-JRG (“Snap Action”), ECF No. 1.) On December 21,
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`2016, the Snap Action was consolidated with Uniloc USA, Inc. v. Motorola Mobility
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`LLC, Case No. 2:16-CV-00992-JRG. (Order, Snap Action, ECF No. 32.)
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`3.
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`On November 14, 2016, Apple filed a petition for inter partes review
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`(IPR2017-00225) requesting cancellation of claims 1–6 and 8 of the ’433 Patent.
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`(Apple Inc. v. Uniloc USA, Inc. et al., IPR2017-00225 (Paper 2).)
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`4.
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`On May 25, 2017, the Board in IPR2017-00225 instituted Apple’s
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`petition for inter partes review as to claims 1–6 and 8 of the ’433 Patent. (Apple
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`Inc. v. Uniloc USA, Inc. et al., IPR2017-00225, slip op. at 2, 26-24 (PTAB May 25,
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`2017) (Paper 7).)
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`5.
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`On June 1, 2017, Apple filed its Renewed Motion to Stay Pending
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`Instituted Inter Partes Review of U.S. Patent Nos. 7,535,890, 8,243,723, and
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`8,995,433. (Consolidated Apple Action, ECF No. 256.) The Court has not yet ruled
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`on this motion.
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`1 Although the Complaint was filed under the caption Uniloc USA, Inc. and Uniloc
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`Luxembourg, S.A. v. Snapchat, Inc., the Defendant’s name in the caption was
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`subsequently corrected to Snap Inc. (Snap Action, ECF No. 34.)
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`3
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Legal Standard
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`The Board has statutory authority under 35 U.S.C. § 315(c) to join a properly-
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`filed inter partes review petition to an instituted inter partes review proceeding. See
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`35 U.S.C. § 315(c). A motion for joinder must be filed within one month of the
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`Board instituting the inter partes review for which joinder is requested. 37 C.F.R.
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`§ 42.122(b).
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`A motion for joinder should (1) set forth reasons why joinder is appropriate;
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`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the existing review;
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`and (4) address specifically how briefing and discovery may be simplified. Samsung
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`Electronics, Co., Ltd., et al. v. Raytheon Company, Case IPR2016-00962, slip op. at
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`5 (PTAB Aug. 24, 2016) (Paper 20) (citing Kyocera Corp. v. Softview LLC, Case
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`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)). In exercising its
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`discretion to grant joinder, the Board is “mindful of the public interest in securing
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`the just, speeding, and inexpensive resolution of every proceeding.” Amneal
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`Pharms., LLC v. Endo Pharms. Inc., Case IPR2016-01365, slip op. at 7 (PTAB
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`February 4, 2015) (Paper 13) (citing 37 C.F.R. § 42.1(b)) (internal quotations
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`omitted).
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`4
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`B.
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`Petitioners’s Motion for Joinder is Timely
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`This Motion for Joinder is timely because it is filed within one month of the
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`May 25, 2017 institution decision of the Apple IPR. See 37 C.F.R. § 42.122(b). The
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`one-year bar set forth in 37 C.F.R. § 42.101(b) has not yet passed,2 and does not
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`apply to the present Joinder Petition because this the Joinder Petition is filed
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`concurrently with this Motion for Joinder. 37 C.F.R. § 42.122(b).
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`C. Each Factor Weighs in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder
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`here. The Joinder Petition is substantively identical to the Original Petition as to the
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`subset of claims at issue and does not present any new prior art, grounds of
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`unpatentability, exhibits, or arguments. Joinder is also appropriate so that Joinder
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`Petitioner can maintain the proceeding, in which a substantial question of invalidity
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`has been raised, in the event that Original Petitioner ceases to participate in IPR2017-
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`00225 as a result of settlement or otherwise. Joinder will have minimal, if any,
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`impact on the trial schedule, as the Joinder Petition presents no new prior art analysis
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`or expert testimony. Discovery and briefing will be simplified because Joinder
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`Petitioner is willing to accept a limited “understudy” role so long as Original
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`2 The one-year statutory time period set forth in 37 C.F.R. § 42.101(b) expires on
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`July 7, 2017. (Snap Action, ECF No. 10.)
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`5
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`Petitioner remains a participating party. Accordingly, joinder is appropriate and
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`warranted here.
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`1.
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`Joinder is Appropriate as No New Grounds or Issues Are
`Raised
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung v. Raytheon, Case IPR2016-00962, slip op. at 9 (PTAB Aug.
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`24, 2016) (Paper 12) (internal quotations and citations omitted) (emphases in
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`original).3 Here, joinder with pending IPR2017-00225 is appropriate because the
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`Joinder Petition relies on identical arguments and the same grounds raised in the
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`existing proceeding. The Joinder Petition relies on the same expert declaration and
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`other supporting exhibits, asserts the same grounds and combinations of prior art,
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`3 See also Sony Corp. et al. v. Memory Integrity, LLC, Case IPR2015-01353, slip op.
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`at 5-6 (PTAB Oct. 15, 2015) (Paper 11) (granting institution of IPR and motion for
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`joinder where petitions relied “on the same prior art, same arguments, and same
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`evidence, including the same expert and a substantively identical declaration”
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`(citations omitted)); Perfect World Entm’t, Inc. v. Uniloc USA, Inc., Case IPR2015-
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`01026 (PTAB Aug. 3, 2015) (Paper 10); Fujitsu Semiconductor Ltd. v. Zond, LLC,
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`Case IPR2014-00845 (PTAB Oct. 2, 2014) (Paper 14); Enzymotec Ltd. v. Neptune
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`Techs. & Bioresources, Inc., Case IPR2014-00556 (PTAB July 9, 2014) (Paper 19)).
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`6
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`
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`and challenges only a subset of claims already instituted in IPR2017-00225. The
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`Joinder Petition is substantively identical to the Original Petition as to the subset of
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`challenged claims, with only non-substantive differences such as those related to the
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`formalities of the different party filing the petition.
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`Because the Joinder Petition and the Original Petition are substantively
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`identical as to the subset of challenged claims, good cause exists for joining the
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`proceedings so that the Board can efficiently resolve the common grounds in both
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`Petitions in a single proceeding. Furthermore, the substantial questions of invalidity
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`as to the ’433 Patent raised in IPR2017-00225 are issues that affect Joinder Petitioner
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`Snap, which stands accused of infringing certain claims of the ’433 Patent, as well
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`as the broader public interest in the likely invalidity of an issued patent. Joinder is
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`therefore appropriate for the additional reason that the invalidity grounds upon
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`which the Board instituted review can be resolved through the participation of
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`Joinder Petitioner even if Original Petitioner, Apple, were to reach a settlement with
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`Patent Owner or otherwise cease to participate in the proceeding.
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`2.
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`Joinder Will Not Negatively Impact the Trial Schedule
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`Joinder will have minimal impact, if any, on the existing IPR trial schedule
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`because the Joinder Petition presents no new issues or arguments for Patent Owner
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`or the Board to consider. See Sony Corp. et al. v. Memory Integrity, Case IPR2015-
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`01353, slip op. at 6 (PTAB Oct. 15, 2015) (Paper 11) (granting IPR and motion for
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`
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`7
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`
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`joinder where “joinder should not necessitate any additional briefing or discovery
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`from Patent Owner beyond that already required in [the original IPR].”). Further,
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`because the Joinder Petition relies on the same expert declaration as the Original
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`Petition, only a single deposition is needed for the proposed joined proceeding.
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`Absent any new issues, there is no reason to materially delay or modify the existing
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`trial schedule.
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`Accordingly, joinder with pending IPR2017-00225 will not unduly impact the
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`trial schedule. However, even if a minor adjustment of the trial schedule was
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`appropriate, the rules provide for such an adjustment, which is a routine undertaking
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`by parties in IPR proceedings. See 37 C.F.R. § 42.100(c). A reasonable adjustment
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`in the trial schedule, if needed, should not preclude joinder here.
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`3.
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`Joinder Petitioner Agrees to an “Understudy” Role
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`Additionally, Joinder Petitioner agrees to take an “understudy” role in the
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`joined proceeding, absent termination of the Original Petitioner, Apple, as a party.
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`In particular, Snap agrees that, in the joined proceeding, the following conditions
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`shall apply in this proceeding so long as the Original Petitioner, Apple, remains an
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`active party to this proceeding, as previously approved by the Board in similar
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`circumstances:
`
`
`
`8
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`
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`(a) all filings by Joinder Petitioner in the joined proceeding be consolidated
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`with the filings of the Original Petitioner, unless a filing solely concerns issues
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`that do not involve the Original Petitioner;
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`(b) Joinder Petitioner shall not be permitted to raise any new grounds not
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`already instituted by the Board, or introduce any argument or discovery not
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`already introduced by the Original Petitioner;
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`(c) Joinder Petitioner shall be bound by any agreement between Patent Owner
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`and the Original Petitioner concerning discovery and/or depositions; and
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`(d) Joinder Petitioner at deposition shall not receive any direct, cross
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`examination or redirect time beyond that permitted for the petitioner in this
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`proceeding alone under either 37 C.F.R. § 42.53 or any agreement between
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`Patent Owner and the Original Petitioner.
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`See Mylan Pharms. Inc. v. Novartis AG, Case IPR2014-00550, slip op. at 5 (PTAB
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`Apr. 10, 2015) (Paper 38). The Original Petitioner, Apple, does not object to Joinder
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`Petitioner’s proposed understudy role in the joined proceeding. Joinder Petitioner
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`would assume a primary role only if the Original Petitioner ceased to participate in
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`the proceeding.
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`The Board has consistently held that that the acceptance of an “understudy”
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`role removes any undue complications or delay that might allegedly result from
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`joinder. See, e.g., Sony Corp. et al. v. Memory Integrity, Case IPR2015-01353, slip
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`9
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`
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`op. at 7 (PTAB Oct. 15, 2015) (Paper 11); see also Mylan Pharmaceuticals Inc. et
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`al. v. Dr. Falk Pharma GmbH, Case IPR2016-01386, slip op. at 6 (PTAB Nov. 30,
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`2016) (Paper 9).
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`IV. CONCLUSION
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`Based on the factors discussed above, Petitioner respectfully requests that this
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`motion be granted and an inter partes review of the challenged claims 1–3, 5, 6, and
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`8 of the ’433 Patent be instituted based on the same grounds authorized and for the
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`same reasons discussed in the Institution Decision in IPR2017-00225 with respect
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`to those claims, and that this proceeding be joined with IPR2017-00225 with respect
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`to those claims.
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`
`Dated: June 15, 2017
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
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`Respectfully submitted,
`
`
`
`
`By: /Heidi L. Keefe
`
`Heidi L. Keefe
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`Reg. No. 40,673
`
`Counsel for Petitioner
`Snap Inc.
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`10
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 U.S.C.
`§§ 42.22 AND 42.122(b) TO RELATED INTER PARTES REVIEW IPR2017-
`00225 is being served in its entirety on the 15th day of June, 2017, the same day as
`the filing of the above-identified document in the United States Patent and
`Trademark Office/Patent Trial and Appeal Board, via Federal Express upon the
`Patent Owner by serving the correspondence address of record with the USPTO as
`follows:
`
`
`UNILOC USA INC.
`LEGACY TOWN CENTER
`7160 DALLAS PARKWAY, SUITE 380
`PLANO, TX 75024
`
`
`and upon counsel of record for the Patent Owner in the litigation pending before the
`U.S. District Court for the Eastern District of Texas entitled Uniloc USA, Inc. et al
`v. Snap Inc., 2-16-cv-00696-JRG as follows:
`
`
`James L. Etheridge
`Ryan S. Loveless
`Brett A. Mangrum
`Travis L. Richins
`Emily S. White
`ETHERIDGE LAW GROUP, PLLC
`2600 E. Southlake Blvd., Suite 120 / 324
`Southlake, Texas 76092
`
`Dated: June 15, 2017
`COOLEY LLP
`ATTN: Heidi Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`146704315 v1
`
`
`
`
`
`
`
`
`
`
`
`11
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`
`
`/Heidi L. Keefe
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
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