`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`FACEBOOK, INC., WHATSAPP, INC.,
`Petitioners,
`
`v.
`
`UNILOC USA, INC., UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`Patent No. 8,243,723 B2
`
`TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`____________________
`
`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
`IPR2017-00222
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Facebook, Inc. and WhatsApp, Inc. (“Joinder Petitioners”) respectfully
`
`submit this Motion for Joinder together with a Petition for Inter Partes Review of
`
`U.S. Patent No. 8,243,723 (“’723 Patent”) (“the Joinder Petition”) filed
`
`contemporaneously herewith.
`
`The Board instituted inter partes review of claims 1-7 of the ’723 Patent in
`
`Apple Inc. v. Uniloc USA, Inc. and Uniloc Luxembourg S.A., IPR2017-00222 on
`
`May 25, 2017. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b),
`
`Joinder Petitioners request institution of inter partes review of claims 1-3 of the ’723
`
`Patent and request joinder, as to claims 1-3 only, with IPR2017-00222.
`
`The Joinder Petition is narrowly tailored to the same prior art, evidence, and
`
`grounds for unpatentability currently at issue in IPR2017-00222. In fact, the Joinder
`
`Petition and supporting exhibits are substantively identical to the original Petition
`
`submission (“Original Petition”) by Apple Inc. (“Apple” or “Original Petitioner”) in
`
`IPR2017-00222, except that Joinder Petitioners seek review and joinder as to only a
`
`subset of the claims upon which inter partes review has been instituted.1
`
`Joinder is appropriate because it will not burden or prejudice the present
`
`parties to IPR2017-00222, will not cause any undue delay, and will efficiently
`
`
`1 Joinder Petitioners’ petition does not include the alternative grounds in the
`Original Petition, based on different prior art (the Stubbs, Abburi, and Lerner
`references), upon which the Board denied institution of inter partes review.
`1
`
`
`
`resolve the question of the ’723 Patent’s validity on the instituted grounds. Further,
`
`Joinder Petitioners are willing to serve in a limited “understudy” role to streamline
`
`discovery and briefing.
`
`The Original Petitioner in IPR2017-00222, Apple, does not oppose the present
`
`motion for joinder.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On June 14, 2016, Uniloc USA, Inc. and Uniloc Luxembourg, S.A.
`
`(“Uniloc”) filed a civil action for patent infringement against Apple in the Eastern
`
`District of Texas, asserting that Apple has infringed the ’723 Patent and three other
`
`related patents. (Complaint, Uniloc USA, Inc. v. Apple Inc. (“Apple Action”), Case
`
`No. 2:16-CV-638-JRG, ECF No. 1.) On July 21, 2016, the Apple Action was
`
`consolidated with Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., Case No. 2:16-CV-
`
`00642-JRG (“Consolidated Action”). (Order, Consolidated Action, ECF No. 14.)
`
`2.
`
`On June 14, 2016, Uniloc filed a civil action for patent infringement
`
`against WhatsApp, Inc. (“WhatsApp”) in the Eastern District of Texas, asserting that
`
`WhatsApp has infringed the ’723 Patent and four other related patents. (Complaint,
`
`Uniloc USA, Inc. v. WhatsApp, Inc. (“WhatsApp Action”), Case No. 2:16-CV-645-
`
`JRG, ECF No. 1.) Uniloc filed a First Amended Complaint against WhatsApp on
`
`July 11, 2016. (WhatsApp Action, ECF No. 12.) On July 21, 2016, the WhatsApp
`
`Action was combined with the Consolidated Action that includes the Apple Action.
`
`2
`
`
`
`(Order, Consolidated Action, ECF No. 14.) Uniloc effectuated service on WhatsApp
`
`on July 21, 2016. (WhatsApp Action, ECF No. 17.)
`
`3.
`
`On July 5, 2016, Uniloc filed a civil action for patent infringement
`
`against Facebook, Inc. (“Facebook”) in the Eastern District of Texas, asserting that
`
`Facebook has infringed the ’723 Patent and four other related patents. (Complaint,
`
`Uniloc USA, Inc. v. Facebook, Inc. (“Facebook Action”), Case No. 2:16-CV-728-
`
`JRG, ECF No. 1.) On October 3, 2016, the Facebook Action was combined with the
`
`Consolidated Action that includes both the Apple and WhatsApp Actions. (Order,
`
`Consolidated Action, ECF No. 98.) Uniloc effectuated service on Facebook on July
`
`11, 2016. (Facebook Action, ECF No. 14.)
`
`4.
`
`On November 14, 2016, Apple filed a petition for inter partes review
`
`(IPR2017-00222) requesting cancellation of claims 1-8 of the ’723 Patent.
`
`5.
`
`On May 3, 2017, Joinder Petitioners filed a petition for inter partes
`
`review of claims 1-3 of the ’723 Patent. (IPR2017-01365, Paper 2.) That petition
`
`does not rely upon any of the same prior art as the present Joinder Petition. (See id.)
`
`6.
`
`On May 25, 2017, the Board in IPR2017-00222 instituted Apple’s
`
`petition for inter partes review as to claims 1-7 of the ’723 Patent.
`
`3
`
`
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Board has statutory authority under 35 U.S.C. § 315(c) to join a properly-
`
`filed inter partes review petition to an instituted inter partes review proceeding. See
`
`35 U.S.C. § 315(c).
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing review;
`
`and (4) address specifically how briefing and discovery may be simplified. Samsung
`
`Electronics, Co., Ltd., et al. v. Raytheon Company, Case IPR2016-00962, slip op. at
`
`5 (PTAB Aug. 24, 2016) (Paper 20) (citing Kyocera Corp. v. Softview LLC, Case
`
`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)). In exercising its
`
`discretion to grant joinder, the Board is “mindful of the public interest in securing
`
`the just, speeding, and inexpensive resolution of every proceeding.” Amneal
`
`Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., Case IPR2016-01365, slip op.
`
`at 7 (PTAB February 4, 2015) (Paper 13) (citing 37 C.F.R. § 42.1(b)) (internal
`
`quotations omitted).
`
`B.
`
`Petitioners’ Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
`
`May 25, 2017 institution decision in IPR2017-00222. See 37 C.F.R. § 42.122(b).
`
`4
`
`
`
`The one-year bar set forth in 37 C.F.R. § 42.101(b) has not yet passed2, and would
`
`not apply to the present Joinder Petition in any event because the Joinder Petition is
`
`filed concurrently with this Motion for Joinder. 37 C.F.R. § 42.122(b).
`
`C. Each Factor Weighs in Favor of Joinder
`
`Each of the four factors considered by the Board weighs in favor of joinder
`
`here. The Joinder Petition is substantively identical to the Original Petition as to the
`
`subset of claims and grounds at issue and does not present any new prior art, grounds
`
`of unpatentability, exhibits, or arguments. Joinder is also appropriate so that Joinder
`
`Petitioners can maintain the proceeding, in which a substantial question of invalidity
`
`has been raised, in the event that Original Petitioner ceases to participate in IPR2017-
`
`00222 as a result of settlement or otherwise. Joinder will have minimal, if any,
`
`impact on the trial schedule, as the Joinder Petition presents no new prior art analysis
`
`or expert testimony. Discovery and briefing will be simplified because Joinder
`
`Petitioners are willing to accept a limited “understudy” role so long as Original
`
`Petitioner remains a participating party. Accordingly, joinder is appropriate and
`
`warranted here.
`
`
`2 The one-year bar set forth in 37 C.F.R. § 42.101(b) does not arise until July 11,
`
`2017 for Facebook and July 21, 2017 for WhatsApp.
`
`5
`
`
`
`1.
`
`Joinder is Appropriate Because No New Grounds or Issues
`
`Are Raised
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung v. Raytheon, Case IPR2016-00962, slip op. at 9 (PTAB Aug.
`
`24, 2016) (Paper 12) (internal quotations and citations omitted) (emphases in
`
`original).3 Here, joinder with pending IPR2017-00222 is appropriate because the
`
`Joinder Petition relies on identical arguments and a subset of the same instituted
`
`grounds at issue in the instituted proceeding. The Joinder Petition relies on the same
`
`expert declaration and other supporting exhibits, asserts the same combinations of
`
`prior art upon which the Board has instituted inter partes review, and challenges
`
`
`3 See also Sony Corp. et al. v. Memory Integrity, LLC, Case IPR2015-01353, slip op.
`
`at 5-6 (PTAB Oct. 15, 2015) (Paper 11) (granting institution of IPR and motion for
`
`joinder where petitions relied “on the same prior art, same arguments, and same
`
`evidence, including the same expert and a substantively identical declaration”
`
`(citations omitted)); Perfect World Entm’t, Inc. v. Uniloc USA, Inc., Case IPR2015-
`
`01026 (PTAB Aug. 3, 2015) (Paper 10); Fujitsu Semiconductor Ltd. v. Zond, LLC,
`
`Case IPR2014-00845 (PTAB Oct. 2, 2014) (Paper 14); Enzymotec Ltd. v. Neptune
`
`Techs. & Bioresources, Inc., Case IPR2014-00556 (PTAB July 9, 2014) (Paper 19)).
`
`6
`
`
`
`only a subset of claims already instituted in IPR2017-00222. The Joinder Petition
`
`is substantively identical to the Original Petition as to the subset of instituted claims
`
`and grounds, with only non-substantive differences such as different mandatory
`
`notices.
`
`Because the Joinder Petition and the Original Petition are substantively
`
`identical as to the subset of instituted claims and grounds, good cause exists to join
`
`the proceedings so that the Board can efficiently resolve the common grounds in
`
`both Petitions in a single proceeding. Furthermore, the substantial questions of
`
`invalidity as to the ’723 Patent raised in IPR2017-00222 are issues that affect Joinder
`
`Petitioners Facebook and WhatsApp, who stand accused of infringing certain claims
`
`of the ’723 Patent, as well as the broader public interest in the likely invalidity of an
`
`issued patent. Joinder is therefore appropriate for the additional reason that the
`
`invalidity grounds upon which the Board instituted review can be resolved through
`
`the participation of Joinder Petitioners even if Original Petitioner, Apple, were to
`
`reach a settlement with Patent Owner or otherwise cease to participate in the
`
`proceeding.
`
`2.
`
`Joinder Will Not Negatively Impact the Trial Schedule
`
`Joinder will have minimal impact, if any, on the existing IPR trial schedule
`
`because the Joinder Petition presents no new issues or arguments for Patent Owners
`
`or the Board to consider. See Sony Corp. et al. v. Memory Integrity, Case IPR2015-
`
`7
`
`
`
`01353, slip op. at 6 (PTAB Oct. 15, 2015) (Paper 11) (granting IPR and motion for
`
`joinder where “joinder should not necessitate any additional briefing or discovery
`
`from Patent Owner beyond that already required in [the original IPR].”). Further,
`
`because the Joinder Petition relies on the same expert declaration as the Original
`
`Petition, only a single deposition is needed for the proposed joined proceeding.
`
`Absent any new issues, there is no reason to materially delay or modify the existing
`
`trial schedule.
`
`Accordingly, joinder with pending IPR2017-00222 will not unduly impact the
`
`trial schedule. However, even if a minor adjustment of the trial schedule was
`
`appropriate, the rules provide for such an adjustment, which is a routine undertaking
`
`by parties in IPR proceedings. See 37 C.F.R. § 42.100(c). A reasonable adjustment
`
`in the trial schedule, if needed, should not preclude joinder here.
`
`3.
`
`Joinder Petitioners Agree to an “Understudy” Role
`
`Additionally, Joinder Petitioners agree to take an “understudy” role in the
`
`joined proceeding, absent termination of the Original Petitioner, Apple, as a party.
`
`In particular, Facebook and WhatsApp agree that, in the joined proceeding, the
`
`following conditions shall apply so long as the Original Petitioner, Apple, remains
`
`an active party to these proceedings, as previously approved by the Board in similar
`
`circumstances:
`
`8
`
`
`
`(a) all filings by Joinder Petitioners in the joined proceeding be consolidated
`
`with the filings of the Original Petitioner, unless a filing solely concerns issues
`
`that do not involve the Original Petitioner;
`
`(b) Joinder Petitioners shall not be permitted to raise any new grounds not
`
`already instituted by the Board, or introduce any argument or discovery not
`
`already introduced by the Original Petitioner;
`
`(c) Joinder Petitioners shall be bound by any agreement between Patent
`
`Owner and the Original Petitioner concerning discovery and/or depositions;
`
`and
`
`(d) Joinder Petitioners at deposition shall not receive any direct, cross
`
`examination or redirect time beyond that permitted for the petitioner in this
`
`proceeding alone under either 37 C.F.R. § 42.53 or any agreement between
`
`Patent Owners and the Original Petitioner.
`
`See Mylan Pharms. Inc. v. Novartis AG, Case IPR2014-00550, slip op. at 5 (PTAB
`
`Apr. 10, 2015) (Paper 38). The Original Petitioner, Apple, does not object to Joinder
`
`Petitioners’ proposed understudy role in the joined proceeding. Joinder Petitioners
`
`would assume a primary role only if the Original Petitioner ceased to participate in
`
`the proceeding.
`
`
`
`The Board has consistently held that that the acceptance of an “understudy”
`
`role removes any undue complications or delay that might allegedly result from
`
`9
`
`
`
`joinder. See, e.g., Sony Corp. et al. v. Memory Integrity, Case IPR2015-01353, slip
`
`op. at 7 (PTAB Oct. 15, 2015) (Paper 11); Mylan Pharmaceuticals Inc. et al. v. Dr.
`
`Falk Pharma GmbH, Case IPR2016-01386, slip op. at 6 (PTAB Nov. 30, 2016)
`
`(Paper 9).
`
`IV. CONCLUSION
`
`Based on the factors discussed above, Joinder Petitioners respectfully request
`
`that this motion be granted and an inter partes review of the challenged claims 1-3
`
`of the ’723 Patent be instituted based on the same grounds authorized and for the
`
`same reasons discussed in the Institution Decision in IPR2017-00222, and that this
`
`proceeding be joined with IPR2017-00222 as to ’723 Patent claims 1-3.
`
`
` Respectfully submitted,
`
`By: /Heidi L. Keefe/
`
`Heidi L. Keefe
`
`Reg. No. 40,673
`
`Counsel for Petitioner
`Facebook, Inc.
`
`
`
`
`
`10
`
`
`Dated: June 16, 2017
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
` 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-
`00222 is being served in its entirety on the 16th 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 litigations pending before
`the U.S. District Court for the Eastern District of Texas entitled Uniloc USA, Inc. et
`al. v. Facebook, Inc., Case No. 2:16-cv-00728-JRG and Uniloc USA, Inc. et al. v.
`WhatsApp, Inc., Case No. 2:16-cv-00645-JRG as follows:
`
`
`Paul J. Hayes
`Kevin Gannon
`James John Foster
`Prince Lobel Tye LLP
`One International Place, Suite 3700
`Boston, MA 02210
`
`Anthony Michael Vecchione
`Edward R Nelson, III
`Nelson Bumgardner PC
`3131 West 7th Street, Suite 300
`Ft Worth, TX 76107
`
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`
`Dated: June 16, 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
`
`
`
`
`
`
`
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
