Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 8
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` Entered: January 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01804
`Patent 8,724,622 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2017-01804
`Patent 8,724,622 B2
`
`
`INTRODUCTION
`I.
`Apple Inc. (“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 2 (“Pet.”). Uniloc
`Luxembourg S.A. (“Patent Owner”)1 filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314. Based on the particular
`circumstances presented, we exercise our discretion under 37 C.F.R.
`§ 42.108 and do not institute an inter partes review in this case.
`
`II. DISCUSSION
`
`A. Related Matters
`The parties indicate that the ’622 patent is involved in Uniloc USA,
`Inc. v. Apple Inc., No. 2:16-cv-00638-JRG (E.D. Tex.), among numerous
`other actions in the United States District Court for the Eastern District of
`Texas. Pet. 1−3; Paper 4, 2. The ’622 patent also was the subject of two
`requests for inter partes review filed by Petitioner on November 14, 2016
`
`
`1 Patent Owner’s Mandatory Notice filed pursuant to 37 C.F.R. § 42.8
`identifies Uniloc Luxembourg S.A. as the owner of the challenged patent
`and identifies Uniloc USA, Inc. only as exclusive licensee and additional
`real party in interest. Paper 4, 1. Accordingly, we have removed Uniloc
`USA, Inc. from the case caption as Patent Owner. We note, however, that
`this identification varies from earlier cases involving the challenged patent
`and certain related patents, in which Uniloc USA, Inc. and Uniloc
`Luxembourg S.A. both were identified in mandatory notices as “Patent
`Owner.” See, e.g., IPR2017-00221, Paper 4, 1; IPR2017-00222, Paper 4, 1;
`IPR2017-00225, Paper 4, 1; IPR2017-01427, Paper 4, 1; IPR2017-01428,
`Paper 4, 1. The parties are reminded of their ongoing obligation under
`37 C.F.R. § 42.8(a)(3) to keep mandatory notices updated.
`2
`
`

`

`IPR2017-01804
`Patent 8,724,622 B2
`
`(Cases IPR2017-00223 and IPR2017-00224), both of which were denied.
`See IPR2017-00223, Paper 7 (PTAB May 25, 2017); IPR2017-00224,
`Paper 7 (PTAB May 25, 2017).
`Concurrently with filing of the instant Petition on July 20, 2017,
`Petitioner additionally filed a petition requesting inter partes review of
`claims 4, 5, 12, and 24–26 of the ’622 patent (Case IPR2017-01805).
`IPR2017-01805, Paper 2. By Petitioner’s own admission, the instant
`Petition and the petition filed in Case IPR2017-01805 are “substantively
`identical” to petitions filed June 22, 2017, by Facebook, Inc. and
`WhatsApp Inc. (collectively, “Facebook”) in Cases IPR2017-01667 and
`IPR2017-01668, respectively, apart from the inclusion of two new sections
`addressing such identicality. See Pet. 76; IPR2017-01805, Paper 2, 65.
`Earlier today, the Board instituted inter partes review in Cases
`IPR2017-01667 and IPR2017-01668. IPR2017-01667, Paper 8 (PTAB
`Jan. 19, 2018); IPR2017-01668, Paper 8 (PTAB Jan. 19, 2018).
`Further, Samsung Electronics America, Inc. also filed two requests for
`inter partes review of certain claims of the ’622 patent on July 20, 2017
`(Cases IPR2017-01797 and IPR2017-01798); Huawei Device Co., Ltd.
`(“Huawei”) filed a request for inter partes review of the same claims as the
`instant Petition and the petition in Case IPR2017-01668 on September 11,
`2017 (Case IPR2017-02090); and Google Inc. filed two requests for inter
`partes review of certain claims of the ’622 patent on September 12, 2017
`(Cases IPR2017-02080 and IPR2017-02081). Huawei additionally filed a
`motion for joinder to Case IPR2017-01667 concurrently with its petition in
`Case IPR2017-02090. IPR2017-02090, Paper 3.
`
`
`
`3
`
`

`

`IPR2017-01804
`Patent 8,724,622 B2
`
`
`B. Discretionary Non-institution
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108. “In determining whether to institute or order a
`proceeding under . . . Chapter 31 [of Title 35 of the U.S. Code, providing for
`inter partes review], the Director may take into account whether, and reject
`the petition . . . because, the same or substantially the same prior art or
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d).
`In this case, as noted in the previous section, Petitioner admits that the
`Petition is substantively identical to Facebook’s petition in Case
`IPR2017-01667 (“the ’1667 IPR”), which challenges the same claims on the
`same grounds, aside from the addition of new “sections VII–VIII.” Pet. 76.
`Moreover, the new “sections VII–VIII” referenced by Petitioner do not alter
`the substance of the asserted grounds. Rather, Section VII represents that
`“Petitioner has limited its grounds to those in [the ’1667 IPR], including the
`same analysis, prior art and declaration”; that “any differences are shown in
`Exhibit 1020”;2 and that Petitioner will request joinder with the ’1667 IPR
`“when appropriate.” Id. Petitioner further represents that “[i]f joined,
`Petitioner will accept a limited capacity unless Facebook terminates as a
`party,” and “[i]f not [joined], Petitioner consents to coordinating schedules.”
`Id. In Section VIII of the Petition, titled “The Board should institute in view
`
`
`2 We note that in addition to the redlined petition that Petitioner filed as
`Exhibit 1020, showing differences relative to Facebook’s petition in the
`’1667 IPR, Petitioner also filed a redlined version of Facebook’s supporting
`expert declaration of Tal Lavian, Ph.D. from that case, as Exhibit 1021. See
`Pet. ix. Our review of Exhibits 1020 and 1021 confirms Petitioner’s
`representation that Petitioner has limited its ground in this case to those in
`the ’1667 IPR.
`
`4
`
`

`

`IPR2017-01804
`Patent 8,724,622 B2
`
`of §325(d),” Petitioner contends that “the eight §325(d) factors have
`marginal relevance here because Petitioner does not present grounds
`beyond” the ’1667 IPR, and that “the eight factors in Blue Coat Systems v.
`Finjan, IPR2016-01443, Paper 13, pp. 8–9, support this subsequent
`petition.” Id. at 76–77.
`Notwithstanding Petitioner’s contentions regarding § 325(d),3 we
`exercise our discretion under 37 C.F.R. § 42.108(a) to deny the Petition,
`based on the complete identity of prior art and arguments to those presented
`to the Office in the ’1667 IPR. We recognize that the Board often institutes
`inter partes review on petitions substantively identical to earlier successful
`petitions, where the second petition is accompanied by an unopposed or
`
`
`3 It is unclear whether Petitioner, in its reference to “eight §325(d) factors
`hav[ing] marginal relevance here,” intends to refer to the same “eight factors
`in Blue Coat Systems” that allegedly “support this subsequent petition.”
`Pet. 76. Of the eight factors presented in the cited Blue Coat Systems
`proceeding, only the eighth factor, “whether the same or substantially the
`same prior art or arguments previously were presented to the Office,”
`directly relates to § 325(d). Notably, Petitioner does not persuasively
`address that eighth factor. See id. at 76–77 (arguing with respect to
`“Factors 3–5 and 8,” collectively, only that “Courts and the PTAB have
`differentiated between art that should be known by a ‘skilled searcher
`conducing a diligent search,’ as opposed to ‘a scorched-earth search,’” and
`that “[b]efore filing earlier petitions, Petitioner performed a reasonable prior
`art search that did not uncover” the particular prior art cited in the Petition,
`neither of which arguments has any discernible bearing on § 325(d)). The
`remaining seven factors articulated in Blue Coat Systems, while relevant to
`the Board’s more general discretion under 35 U.S.C. § 314(a), do not enter
`into the determination under § 325(d) “whether . . . the same or substantially
`the same prior art or arguments previously were presented.” In any event,
`we agree with Patent Owner’s arguments that the factors set forth in Blue
`Coat Systems, to the extent applicable, do not weigh in Petitioner’s favor in
`this case. See Prelim. Resp. 8–11.
`
`5
`
`

`

`IPR2017-01804
`Patent 8,724,622 B2
`
`unpersuasively opposed request for joinder pursuant to 37 C.F.R.
`§ 42.112(b), in which cases the filer of the second petition is then joined as a
`petitioner in the first proceeding and the second proceeding is immediately
`terminated. See, e.g., IPR2017-01636, slip op. at 14–16 (PTAB Oct. 3,
`2017) (Paper 10) (instituting inter partes review in Case IPR2017-01636;
`joining Facebook, Inc. and WhatsApp, Inc. as petitioners in Case
`IPR2017-00221, Apple Inc. v. Uniloc USA, Inc., a pending review involving
`the same asserted grounds of unpatentability; and then terminating Case
`IPR2017-01636). That, however, is not the posture of this case. Petitioner
`has not filed a request for joinder with the ’1667 IPR, but merely has
`represented that it will do so at some unspecified time “when appropriate.”
`Pet. 76. If we were to institute trial at this time, Patent Owner would be
`required to participate in duplicative proceedings with different petitioners,
`each having its own counsel, until such time, if ever, as Petitioner deemed it
`“appropriate” to request joinder. Further, because we are required to enter a
`decision on institution within three months of Patent Owner’s filing of its
`Preliminary Response on November 8, 2017—i.e., by February 8, 2018—
`35 U.S.C. § 314(b) (“The Director shall determine whether to institute an
`inter partes review . . . within 3 months after . . . receiving a preliminary
`response to the petition . . . .”), there would be insufficient time for briefing
`to be completed before entry of our decision on institution even if Petitioner
`were to file a motion for joinder immediately, see 37 C.F.R. § 42.25(a)(1)
`(providing that an opposition is due one month after service of a motion).
`Accordingly, under the circumstances, the Petition is denied, without
`prejudice to Petitioner’s ability to file a new petition accompanied by a
`
`6
`
`

`

`IPR2017-01804
`Patent 8,724,622 B2
`
`request for joinder pursuant to and within the time period permitted by
`37 C.F.R. § 42.122(b).
`
`III. CONCLUSION
`
`In summary:
`Ground
`Basis
`1
`§ 103 Zydney4
`and Shinder5
`§ 103 Zydney,
`Shinder, and
`Clark6
`§ 103 Zydney,
`Shinder, and
`Appelman7
`
`
`2
`
`3
`
`Summary
`
`
`
`Claims Challenged
`3, 6–8, 10, 11, 13, 18–21,
`23, 27, 32–35, 38
`14–17, 28–31
`
`22, 39
`
`3, 6–8, 10, 11, 13–23,
`27–35, 38, 39
`
`Claims Instituted
`None
`
`None
`
`None
`
`None
`
`IV. ORDER
`Upon consideration of the record before us, it is, therefore,
`ORDERED that the Petition is denied, and no trial or inter partes
`review is instituted on any asserted ground.
`
`
`
`
`
`
`
`4 Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (filed with line
`numbers added as Exhibit 1003).
`5 Excerpts from Debra Littlejohn Shinder, Computer Networking Essentials
`(2002) (Ex. 1014).
`6 Clark et al., US 6,725,228 B1, issued Apr. 20, 2004 (Ex. 1008).
`7 Appelman, US 6,750,881 B1, issued June 15, 2004 (Ex. 1004).
`
`7
`
`

`

`IPR2017-01804
`Patent 8,724,622 B2
`
`FOR PETITIONER:
`
`Jason D. Eisenberg
`Michael D. Specht
`Trent W. Merrell
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`tmerrell-PTAB@skgf.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
`
`8
`
`