`Tel: 571-272-7822
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` Paper 9
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`Entered: March 6, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI DEVICE CO., LTD. and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02090
`Patent 8,724,622 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`
`I.
`
`INTRODUCTION
`
`Huawei Device Co., Ltd. (“Huawei”) and LG Electronics, Inc. (“LG”)
`
`(collectively, “Petitioner”) filed a Petition requesting inter partes review of
`
`claims 3, 6–8, 10, 11, 13–23, 27–35, 38, and 39 of U.S. Patent
`
`No. 8,724,622 B2 (Ex. 1001, “the ’622 patent”). Paper 1 (“Pet.”).1
`
`Petitioner also filed a Motion for Joinder, seeking joinder as petitioner with
`
`Facebook, Inc. (“Facebook”) and WhatsApp Inc. (“WhatsApp”)
`
`(collectively, “Facebook 1667 Petitioner”) in Facebook, Inc. v. Uniloc
`
`Luxembourg S.A., Case No. IPR2017-01667 (the “Facebook 1667 IPR”).
`
`Paper 3 (“Mot.”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a
`
`Preliminary Response. Paper 7 (“Prelim. Resp.”). Patent Owner did not file
`
`an opposition to the Motion for Joinder.
`
`We have authority under 35 U.S.C. § 314. Upon considering the
`
`information presented in the parties’ papers, for reasons discussed below, we
`
`institute inter partes review of claims 3, 6–8, 10, 11, 13–23, 27–35, 38, and
`
`39 of the ’622 patent and grant Petitioner’s Motion for Joinder.
`
`II. DISCUSSION
`
`A. Related Matters
`
`The parties indicate that the ’622 patent is involved in Uniloc USA,
`
`Inc. v. LG Electronics U.S.A., Inc., No. 2:16-cv-00991-JRG (E.D. Tex.), and
`
`Uniloc USA, Inc. v. Huawei Device USA, Inc., No. 2:16-cv-00994-JRG
`
`
`
`1 The Petition identifies Huawei Device USA, Inc., Huawei Investment &
`Holding Co., Ltd., Huawei Technologies Co., Ltd., Huawei Device
`(Dongguan) Co., Ltd., LG Electronics U.S.A., Inc., and LG Electronics
`MobileComm USA, Inc., in addition to Petitioner entities Huawei and LG,
`as real parties in interest. Pet. 1.
`
`2
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`(E.D. Tex.), among numerous other actions in the United States District
`
`Court for the Eastern District of Texas. Pet. 23; Paper 5, 2. The
`
`’622 patent also has been the subject of petitions for inter partes review in
`
`Cases IPR2017-00223, IPR2017-00224, IPR2017-01804, and
`
`IPR2017-01805 (filed by Apple Inc.), all of which were denied; Cases
`
`IPR2017-01667 and IPR2017-01668 (filed by Facebook and WhatsApp), in
`
`which we instituted inter partes review on January 19, 2018; and Cases
`
`IPR2017-01797 and IPR2017-01798 (filed by Samsung Electronics
`
`America, Inc.), in which we instituted inter partes review on February 6,
`
`2018. In addition, Google LLC formerly known as Google, Inc. (“Google”)
`
`has filed petitions for inter partes review of certain claims of the ’622 patent
`
`in Cases IPR2017-02080 and IPR2017-02081, in which Petitioner Huawei is
`
`listed as a real party in interest along with Google, Motorola Mobility LLC
`
`(“Motorola”), Huawei Technologies USA, Inc., Huawei Investment &
`
`Holding Co., Ltd., Huawei Technologies Co., Ltd., and Huawei Device
`
`(Dongguan) Co., Ltd. See IPR2017-02080, Paper 2 at 1; IPR2017-02081,
`
`Paper 2 at 1.
`
`B. The ’622 Patent
`
`The ’622 patent, titled “System and Method for Instant VoIP
`
`Messaging,” relates to Internet telephony, and more particularly, to instant
`
`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
`
`Ex. 1001, [54], 1:18–22. The ’622 patent acknowledges that “[v]oice
`
`messaging” and “instant text messaging” in both the VoIP and public
`
`switched telephone network environments were previously known. Id.
`
`at 2:22–46. In prior art instant text messaging systems, according to the
`
`3
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`’622 patent, a server would present a user of a client terminal with a “list of
`
`persons who are currently ‘online’ and ready to receive text messages,” the
`
`user would “select one or more” recipients and type the message, and the
`
`server would immediately send the message to the respective client
`
`terminals. Id. at 2:34–46. According to the ’622 patent, however, “there is
`
`still a need in the art for . . . a system and method for providing instant VoIP
`
`messaging over an IP network,” such as the Internet. Id. at 1:18–22, 2:47–
`
`59, 6:47–49.
`
`In one embodiment, the ’622 patent discloses local instant voice
`
`messaging (“IVM”) system 200, depicted in Figure 2 below. Ex. 1001,
`
`6:22–24.
`
`4
`
`
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`
`As illustrated in Figure 2, local packet-switched IP network 204,
`
`which may be a local area network (“LAN”), “interconnects” IVM
`
`clients 206, 208 and legacy telephone 110 to local IVM server 202. Id.
`
`at 6:50–7:2; see id. at 7:23–24, 7:61–65. Local IVM server 202 enables
`
`instant voice messaging functionality over network 204. Id. at 7:61–65.
`
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`
`recipients,” provided and stored by local IVM server 202, and the user
`
`selects recipients from the list. Ex. 1001, 7:57–59, 7:65–8:4. IVM
`
`client 208 then transmits the selections to IVM server 202 and “records the
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`user’s speech into . . . digitized audio file 210 (i.e., an instant voice
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`message).” Id. at 8:4–11.
`
`When the recording is complete, IVM client 208 transmits audio
`
`file 210 to local IVM server 202, which delivers the message to the selected
`
`recipients via local IP network 204. Ex. 1001, 8:1529. “[O]nly the
`
`available IVM recipients, currently connected to . . . IVM server 202, will
`
`receive the instant voice message.” Id. at 8:3334. IVM server 202
`
`“temporarily saves the instant voice message” for any IVM client that is “not
`
`currently connected to . . . local IVM server 202 (i.e., is unavailable)” and
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`“delivers it . . . when the IVM client connects to . . . local IVM server 202
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`(i.e., is available).” Id. at 8:34–39; see id. at 9:17–21. Upon receiving the
`
`instant voice message, the recipients can audibly play the message. Id.
`
`at 8:29–32.
`
`5
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`
`C. Illustrative Claims
`
`Of the challenged claims, claims 3, 27, and 38 are independent.
`
`Claims 3 and 27 are illustrative of the challenged claims and are reproduced
`
`below.
`
`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
`
`27. A system comprising:
`a client device;
`a network interface coupled to the client device and connecting
`the client device to a packet-switched network; and
`an instant voice messaging application installed on the client
`device, wherein the instant voice messaging application
`includes a client platform system for generating an instant
`voice message and a messaging system for transmitting the
`instant voice message over the packet-switched network via
`the network interface,
`wherein the instant voice messaging application includes a
`document handler system for attaching one or more files to
`the instant voice message.
`
`Ex. 1001, 24:12–27, 26:17–30.
`
`6
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`
`III. INSTITUTION OF INTER PARTES REVIEW
`
`On January 19, 2018, we instituted inter partes review in Case
`
`IPR2017-01667 based on the following prior art and grounds of
`
`unpatentability (Facebook 1667 IPR, slip op. at 38 (PTAB Jan. 19, 2018)
`
`(Paper 8)):
`
`Challenged Claims
`
`Basis
`
`References
`
`3, 6–8, 10, 11, 13, 18–21,
`23, 27, 32–35, 38
`
`§ 103(a) Zydney2 and Shinder3
`
`14–17, 28–31
`
`§ 103(a) Zydney, Shinder, and Clark4
`
`22, 39
`
`§ 103(a) Zydney, Shinder, and Appelman5
`
`The Petition in this proceeding asserts the same grounds as those we
`
`instituted in the Facebook 1667 IPR. Pet. 1, 6; see also Mot. 1. Petitioner
`
`relies also on a Declaration of Tal Lavian, Ph.D., filed as Exhibit 1002
`
`(“Lavian Declaration”). Petitioner asserts that the Lavian Declaration is
`
`identical to the Lavian Declaration filed in the Facebook 1667 IPR. Mot. 1.
`
`Patent Owner’s Preliminary Response presents three procedural
`
`arguments not presented in the Facebook 1667 IPR. We address those
`
`arguments here. First, Patent Owner argues that we should deny the instant
`
`Petition because Petitioner fails to identify all related administrative matters.
`
`
`
`2 Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (filed with line
`numbers added by Petitioner as Exhibit 1003).
`
`3 Excerpts from Debra Littlejohn Shinder, Computer Networking Essentials
`(2002) (Ex. 1014).
`
`4 Clark et al., US 6,725,228 B1, issued Apr. 20, 2004 (Ex. 1008).
`
`5 Appelman, US 6,750,881 B1, issued June 15, 2004 (Ex. 1004).
`
`7
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`Prelim. Resp. 14. Specifically, Patent Owner points out that the Petition
`
`does not mention at least seven petitions for inter partes review filed against
`
`U.S. Patent No. 8,995,433, a patent that issued from a continuation of the
`
`application for the ’622 patent, or other petitions filed against other related
`
`patents. Id. The omission, according to Patent Owner, violates the Board’s
`
`rule regarding mandatory notices (37 C.F.R. § 42.8(b)(2)) and the relevant
`
`statutory requirement in 35 U.S.C. § 312(a)(4). Prelim. Resp. 4.
`
`Second, Patent Owner alleges that Petitioner failed to identify all real
`
`parties in interest under 37 C.F.R. § 42.8(b)(1). Prelim. Resp. 56. In
`
`particular, Patent Owner alleges that the unnamed real parties in interest
`
`pertain to the collection of co-defendants that, together with Petitioner, filed
`
`joint invalidity contentions in the district court litigation. Id. at 5 (referring
`
`to Exhibits 2002 and 2003). Patent Owner also argues that Huawei has
`
`coordinated with Google and Motorola to file petitions in Cases
`
`IPR2017-02080 and IPR2017-02081, in which, as noted above, Google
`
`identified Motorola, Petitioner Huawei, and other Huawei entities as real
`
`parties in interest. Id. at 5–6; see supra § II.A.
`
`Third, Patent Owner proffers that Huawei challenges the ’622 patent
`
`in two other petitions, i.e., in Cases IPR2017-02080 and IPR2017-02081,
`
`and, therefore, Huawei has presented the same or substantially similar
`
`arguments relying on Zydney. Prelim. Resp. 68. According to Patent
`
`Owner, the “redundancy” presented by this third petition on the overlapping
`
`grounds based on Zydney is sufficient to deny the Petition under 35 U.S.C.
`
`§ 325(d), in light of the factors set forth in the Board’s precedential decision
`
`in General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19). Id. at 8–10.
`
`8
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`
`We do not agree with any of Patent Owner’s arguments. Under the
`
`circumstances of this case, the alleged failure to identify either related
`
`matters or real parties in interest, alone,6 does not compel denial of the
`
`Petition. First, mandatory notices are updateable on an ongoing basis.
`
`37 C.F.R. § 42.8(a)(3). Second, identification of real parties in interest is not
`
`a jurisdictional issue and may be corrected. See Lumentum Holdings, Inc., v.
`
`Capella Photonics, Inc., Case IPR2015-00739, slip op. at 5 (PTAB Mar. 4,
`
`2016) (Paper 38) (precedential). Further, an allegation that defendants in
`
`district court filed joint invalidity contentions is not sufficient to show that
`
`all co-defendants are real parties in interest. See, e.g., Azure Gaming Mac.,
`
`Ltd., v. MGT Gaming, Inc., Case IPR2014-01288, slip op. at 1112 (PTAB
`
`Feb. 20, 2015) (Paper 13) (describing that the real party in interest is the
`
`relationship between a party and a proceeding not the relationship between
`
`parties). Finally, the instant Petition is intentionally identical to the
`
`Facebook IPR previous petition as it seeks joinder on the same grounds
`
`instituted therein. There is no “redundancy” or “multiple bites of the apple”
`
`as Patent Owner alleges. Indeed, joined cases avoid the multiplicity that
`
`Patent Owner criticizes. Accordingly, we decline Patent Owner’s request to
`
`deny the Petition based on the proffered procedural arguments.
`
`We have reviewed the Preliminary Response and find that the
`
`remaining arguments were presented and that we considered them in
`
`connection with the Facebook 1667 IPR. In view of the identicalness of the
`
`issues in the instant Petition and in the Facebook 1667 IPR and the
`
`
`
`6 For example, Patent Owner does not allege any prejudice sufficient to
`consider the alleged deficiencies worthy of redress via denial of the Petition.
`
`9
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`already-considered arguments from Patent Owner proffered in the Facebook
`
`1667 IPR, we institute inter partes review in this proceeding on the grounds
`
`presented in the Petition for the same reasons stated in our Decision on
`
`Institution in the Facebook 1667 IPR.
`
`IV. GRANT OF MOTION FOR JOINDER
`
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`
`§ 315(c):
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`
`As the moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing
`
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`
`application-process/appealing-patent-decisions/trials/patent-review-
`
`processing-system-prps-0.
`
`Petitioner asserts it has grounds for standing because, in accordance
`
`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
`
`with the Petition and not later than one month after institution of the
`
`Facebook 1667 IPR. Mot. 1. Patent Owner did not file an opposition to the
`
`Motion for Joinder. We find that the Motion for Joinder is timely. We also
`
`find that Petitioner has met its burden of showing that joinder is appropriate.
`
`10
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`For the challenged claims, the Petition here is substantively identical to the
`
`petition in the Facebook 1667 IPR. Id. at 57; Pet. 6. The evidence also is
`
`identical, including reliance on the same Lavian Declaration. Mot. 1–2, 5, 7.
`
`Petitioner further has shown that the trial schedule will not be affected
`
`by joinder. Mot. 56. No changes in the schedule are anticipated or
`
`necessary, and the limited participation, if at all, of Petitioner will not impact
`
`the timeline of the ongoing trial.
`
`Going forward, Petitioner shall adhere to the existing schedule of
`
`IPR2017-01667 and the “second-chair” role it has agreed to assume. Id.
`
`More specifically, so long as any Facebook 1667 Petitioner entity is a party
`
`to IPR2017-01667, all filings of Petitioner in IPR2017-01667 shall be
`
`consolidated with the filings of the Facebook 1667 Petitioner. The page
`
`limits set forth in 37 C.F.R. § 42.24 will apply to all consolidated filings.
`
`Petitioner shall be bound by any discovery agreements between Patent
`
`Owner and the Facebook 1667 Petitioner in IPR2017-01667, and shall not
`
`seek any additional discovery. Patent Owner shall not be required to provide
`
`any additional discovery or deposition time as a result of joinder. In
`
`addition, if an oral hearing is requested and scheduled, Petitioners in
`
`IPR2017-01667 shall collectively designate attorneys to present at the oral
`
`hearing in a consolidated argument.
`
`The Board expects Petitioner to attempt to resolve any disputes among
`
`the entities involved and to contact the Board only if such matters cannot be
`
`resolved. This arrangement promotes the just and efficient administration of
`
`the ongoing trial and the interests of Petitioner and Patent Owner.
`
`
`
`11
`
`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`
`In view of the foregoing, it is
`
`V. ORDER
`
`ORDERED that an inter partes review is instituted as to
`
`claims 3, 6–8, 10, 11, 13–23, 27–35, 38, and 39 of the ’622 patent on the
`
`following grounds:
`
`(1) Claims 3, 6–8, 10, 11, 13, 18–21, 23, 27, 32–35, and 38 under
`
`35 U.S.C. § 103(a) as unpatentable over Zydney and Shinder,
`
`(2) Claims 14–17 and 28–31 under 35 U.S.C. § 103(a) as unpatentable
`
`over Zydney, Shinder, and Clark, and
`
`(3) Claims 22 and 39 under 35 U.S.C. § 103(a) as unpatentable over
`
`Zydney, Shinder, and Appelman;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2017-01667 is granted, and Huawei and LG are hereby joined as
`
`petitioners in IPR2017-01667;
`
`FURTHER ORDERED that IPR2017-02090 is terminated under
`
`37 C.F.R. § 42.72 and all future filings are to be made only in
`
`IPR2017-01667;
`
`FURTHER ORDERED that the grounds on which inter partes review
`
`was instituted in Case IPR2017-01667 remain unchanged, and no other
`
`grounds are instituted in the joined proceedings;
`
`FURTHER ORDERED that Petitioner here (i.e., Huawei and LG) will
`
`be bound in IPR2017-01667 by all substantive and procedural filings and
`
`representations of current Petitioner in IPR2017-01667 (i.e., Facebook and
`
`WhatsApp), without a separate opportunity to be heard, whether orally or in
`
`writing, unless and until the proceeding is terminated with respect to
`
`Facebook and WhatsApp;
`
`12
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`
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`IPR2017-02090
`Patent 8,724,622 B2
`
`
`FURTHER ORDERED that Petitioner here is bound by any discovery
`
`agreements between Patent Owner and the current Petitioner in
`
`IPR2017-01667, and that Petitioner here shall not seek any additional
`
`discovery;
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2017-01667 shall remain in effect and govern the proceeding, subject to
`
`any schedule changes agreed to by the parties in IPR2017-01667 pursuant to
`
`the Scheduling Order;
`
`FURTHER ORDERED that the Petitioner entities in IPR2017-01667
`
`shall collectively designate attorneys to present at the oral hearing in a
`
`consolidated argument;
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the record of IPR2017-01667; and
`
`FURTHER ORDERED that the case caption in IPR2017-01667, from
`
`now on, shall reflect joinder of Huawei and LG as parties in accordance with
`
`the attached example.
`
`
`
`
`
`
`
`13
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`
`
`IPR2017-02090
`Patent 8,724,622 B2
`
`FOR PETITIONER:
`
`David A. Garr
`Gregory S. Discher
`COVINGTON & BURLING LLP
`dgarr@cov.com
`gdischer@cov.com
`
`
`Anand K. Sharma
`Minjae Kang
`Joshua L. Goldberg
`Bradford C. Schulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P
`anand.sharma@finnegan.com
`minjae.kang@finnegan.com
`joshua.goldberg@finnegan.com
`bradford.schulz@finnegan.com
`
`
`
`FOR PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`
`
`
`14
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., HUAWEI DEVICE CO., LTD.,
`and LG ELECTRONICS, INC
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.
`Patent Owner.
`____________
`
`Case IPR2017-016677
`Patent 8,724,622 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7 Huawei Device Co., Ltd. and LG Electronics, Inc., which filed a petition in
`Case IPR2017-02090, have been joined as petitioners in this proceeding.
`
`