`Trials@uspto.gov
`571-272-7822 Entered: February 14, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,1
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01668
`Patent 8,724,622 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 U.S.C. § 42.5
`
`
`
`
`
`
`1 Apple Inc., which filed a petition in Case IPR2018-00580, was previously
`joined as a petitioner but is understood to no longer be a party to this
`proceeding. See infra note 2.
`
`
`
`IPR2017-01668
`Patent 8,724,622 B2
`
`The Board issued a consolidated Final Written Decision pursuant to
`35 U.S.C. § 318(a) in the above-referenced proceeding and related IPR2017-
`01667 on January 16, 2019, concluding that Petitioner had shown by a
`preponderance of the evidence that claims 3, 6–8, 10–35, 38, and 39 of U.S.
`Patent No. 8,724,622 B2 (“the ’622 patent”) are unpatentable but that
`Petitioner had not shown by a preponderance of the evidence that claims 4
`and 5 of the ’622 patent are unpatentable. Paper 35. Petitioner appealed the
`decision to the United States Court of Appeals for the Federal Circuit, and
`Patent Owner filed a cross appeal. See Papers 38 (Facebook, Inc. and
`WhatsApp Inc. Notice of Appeal), 39 (Apple Inc. Notice of Appeal), 41
`(Patent Owner Notice of Cross Appeal).
`The Federal Circuit issued a decision on November 18, 2021,
`affirming the Board’s determinations with respect to claims 3, 6–8, 10–35,
`38, and 39 but vacating and remanding for further consideration of the
`Board’s determinations with respect to claims 4 and 5. Uniloc 2017 LLC v.
`Facebook, Inc., Nos. 2019-2159, 2019-2162, 2021 WL 5370480 (Fed. Cir.
`Nov. 18, 2021).
`On January 25, 2022, counsel for Patent Owner notified the Board
`that the parties were meeting and conferring regarding remand procedures
`pursuant to the Board’s Standard Operating Procedure 9 but that they had
`not reached an agreement and jointly requested a conference call to discuss
`the same.
`
`2
`
`
`
`IPR2017-01668
`Patent 8,724,622 B2
`
`Pursuant to the parties’ joint request, the panel held a conference call
`on February 9, 2022, with counsel for the parties. 2 Based on the discussion
`during the conference call, and having considered the parties’ arguments, we
`determine that additional briefing is warranted. Specifically, we authorize
`Patent Owner to file an opening brief, not to exceed five pages, by no later
`than March 11, 2022; Petitioner to file a responsive brief, limited to
`responding to Patent Owner’s opening brief and not to exceed five pages, by
`no later than April 11, 2022; and Patent Owner to file a reply brief, limiting
`to responding to Petitioner’s responsive brief and not to exceed three pages,
`by no later than April 25, 2022. In accordance with the parties’ agreement
`expressed during the conference call, the parties are not authorized to file or
`otherwise introduce any new evidence with the briefs, and no new
`arguments are to be presented in the briefs.
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file an opening brief in
`accordance with this Order, not to exceed five pages, no later than March 11,
`2022;
`FURTHER ORDERED that Petitioner is authorized to file a
`responsive brief in accordance with this Order, not to exceed five pages, no
`later than April 11, 2022;
`
`2 Counsel for Apple Inc., which, as stated in note 1 above, was previously
`joined as a petitioner in this proceeding, did not participate in the conference
`call. According to a June 24, 2021, filing in the Federal Circuit (Ex. 3002),
`Apple Inc. entered into a settlement agreement with Patent Owner, and
`Apple Inc. and Patent Owner jointly moved to voluntarily dismiss Apple Inc.
`as a party to Patent Owner’s appeal and to voluntarily dismiss Apple Inc.’s
`cross appeal. The Federal Circuit granted the joint motion in an Order dated
`August 13, 2021. Ex. 3003.
`
`3
`
`
`
`IPR2017-01668
`Patent 8,724,622 B2
`
`FURTHER ORDERED that Patent Owner is authorized to file a reply
`brief in accordance with this Order, not to exceed three pages, no later than
`April 25, 2022; and
`FURTHER ORDERED that no additional briefing is permitted except
`as specifically authorized herein, and the parties are not authorized to file or
`otherwise introduce any new evidence or to present any new arguments with
`or in the briefs.
`
`
`
`
`
`
`4
`
`
`
`IPR2017-01668
`Patent 8,724,622 B2
`
`FOR PETITIONER:
`Heidi L. Keefe
`Phillip E. Morton
`Mark R. Weinstein
`Lowell Mead
`Lisa Schwier
`Andrew Mace
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`mweinstein@cooley.com
`lmead@cooley.com
`lschwier@cooley.com
`amace@cooley.com
`
`
`FOR PATENT OWNER:
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`5
`
`
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