`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
`____________
`
`LG ELECTRONICS, INC. and HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02088
`Patent 8,995,433 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108,
`37 C.F.R. § 42.122(b)
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`
`
`
`
`
`
`IPR2017-02088
`Patent 8,995,433 B2
`
`
`I.
`
`INTRODUCTION
`
`LG Electronics, Inc. and Huawei Device Co., Ltd. (collectively,
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`“Petitioner”) filed a Petition requesting inter partes review of claims 912,
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`1417, 25, and 26 of U.S. Patent No. 8,995,433 B2 (“the ’433 patent”).
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`Paper 2 (“Pet.”). Petitioner also filed a Motion for Joinder seeking joinder
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`as petitioners with Facebook, Inc. and WhatsApp Inc. (collectively,
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`“Facebook 1428 Petitioner”) in Facebook, Inc. v. Uniloc Luxembourg S.A.,
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`Case No. IPR2017-01428 (the “Facebook IPR”). Paper 3 (“Joinder
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`Motion”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
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`Response. Paper 7 (“Prelim. Resp.”). Patent Owner did not file an
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`opposition to the Motion for Joinder.
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`We have authority under 35 U.S.C. § 314. Upon considering the
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`information presented in the parties’ papers, for reasons discussed below, we
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`institute inter partes review of claims 912, 1417, 25, and 26 of the
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`’433 patent and grant Petitioner’s Motion for Joinder.
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`A. Related Matters
`
`The parties indicate that the ’433 patent is involved in Uniloc USA,
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`Inc. v. LG Electronics U.S.A., Inc., Case No. 2-16-cv-00991-JRG (E.D.
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`Tex.) and Uniloc USA, Inc. v. Huawei Device USA, Inc., Case No. 2:16-cv-
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`00994-JRG (E.D. Tex.). Pet. 12. The ’433 patent also is the subject of
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`Case IPR2017-00225 (filed by Apple Inc.), in which we instituted inter
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`partes review on May 25, 2017, and Cases IPR2017-01427 and
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`IPR2017-01428 (filed by Facebook, Inc., and WhatsApp Inc.), in which we
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`2
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`IPR2017-02088
`Patent 8,995,433 B2
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`instituted inter partes review on December 4, 2017. See Paper 5. In
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`addition, LG Electronics has filed another petition and motion for joinder in
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`IPR2017-02087, where joinder is sought in connection with IPR2017-01427.
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`B. The ’433 Patent
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`The ’433 patent relates to Internet telephony, and more particularly, to
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`instant voice over IP (“VoIP”) messaging over an IP network, such as the
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`Internet. Ex. 1101, 1:1923. The ’433 patent acknowledges that “instant
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`text messaging is . . . known” in the VoIP and public switched telephone
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`network (“PSTN”) environments, with a server presenting the user a “list of
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`persons who are currently ‘online’ and ready to receive text messages on
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`their own client terminals.” Id. at 2:3542. In one embodiment, such as
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`depicted in Figure 2 (reproduced below), the system of the ’433 patent
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`involves an instant voice message (“IVM”) server and IVM clients. Id. at
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`7:2122.
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`3
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`IPR2017-02088
`Patent 8,995,433 B2
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`
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`Figure 2 illustrates IVM client 206 interconnected via network 204 to
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`local IVM server 202, where IVM client 206 is a VoIP telephone, and where
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`legacy telephone 110 is connected to legacy switch 112 and further to media
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`gateway 114. Id. at 7:2749. The media gateway converts the PSTN audio
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`signal to packets for transmission over a packet-switched IP network, such
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`as local network 204. Id. at 7:4953. In one embodiment, when in “record
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`mode,” the user of an IVM client selects one or more IVM recipients from a
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`list. Id. at 8:25. The IVM client listens to the input audio device and
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`records the user’s speech into a digitized audio file at the IVM client. Id. at
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`8:1215. “Once the recording of the user’s speech is finalized, IVM
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`client 208 generates a send signal indicating that the digitized audio file 210
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`4
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`IPR2017-02088
`Patent 8,995,433 B2
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`(instant voice message) is ready to be sent to the selected recipients.” Id. at
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`8:1922. The IVM client transmits the digitized audio file to the local IVM
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`server, which, thereafter, delivers that transmitted instant voice message to
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`the selected recipients via the local IP network. Id. at 8:2526. Only the
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`available IVM recipients, i.e., those recipients who are currently connected
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`to the IVM server, will receive the instant voice message. Id. at 8:3638. If
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`a recipient “is not currently connected to the local IVM server 202,” the
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`IVM server temporarily saves the instant voice message and delivers it to the
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`IVM client when the IVM client connects to the local IVM server (i.e., is
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`available). Id. at 8:3843.
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`The ’433 patent also describes an “intercom mode” of voice
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`messaging. Id. at 11:3437. The specification states that the “intercom
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`mode” represents real-time instant voice messaging. Id. at 11:3738. In this
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`mode, instead of creating an audio file, one or more buffers of a
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`predetermined size are generated in the IVM clients or local IVM servers.
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`Id. at 11:3841. Successive portions of the instant voice message are
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`written to the one or more buffers, which, as they fill, automatically transmit
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`their content to the IVM server for transmission to the one or more IVM
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`recipients. Id. at 11:4146. Buffering is repeated until the entire instant
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`voice message has been transmitted to the IVM server. Id. at 11:4659.
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`5
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`IPR2017-02088
`Patent 8,995,433 B2
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`C. Independent Claim
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`Of the challenged claims, claim 9 is independent and is reproduced
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`below. Each of claims 1012, 1417, 25, and 26 depends directly or
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`indirectly from claim 9.
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`9. A system comprising:
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`an instant voice messaging application comprising:
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`a client platform system for generating an instant voice message;
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`a messaging system for transmitting the instant voice message
`over a packet-switched network, and
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`wherein the instant voice message application attaches one or
`more files to the instant voice message.
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`Ex. 1101, 24:6067.
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`II.
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`INSTITUTION OF INTER PARTES REVIEW
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`On December 4, 2017, we instituted inter partes review in
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`IPR2017-01428 based on the following prior art and grounds of
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`unpatentability (Facebook IPR, slip op. at 2021 (PTAB Dec. 4, 2017)
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`(Paper 8)):
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`a) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
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`2001, filed in this record as Exhibit 1103 (with line numbers added
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`by Petitioner);
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`b) Greenlaw: RAYMOND GREENLAW & ELLEN HEPP, INTRODUCTION
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`TO THE INTERNET FOR ENGINEERS 125 (1999), filed in the record
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`as Exhibit 1110; and
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`6
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`IPR2017-02088
`Patent 8,995,433 B2
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`c) Newton: HARRY NEWTON, NEWTON’S TELECOM DICTIONARY (18th
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`ed. 2002), filed in the record as Exhibit 1106.
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`Challenged Claim(s)
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`Basis
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`Reference(s)
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`9, 12, 14, 17, 25, and 26 § 103(a)
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`Zydney
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`11, 15, and 16
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`10
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`§ 103(a)
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`§ 103(a)
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`Zydney and Greenlaw
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`Zydney and Newton
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`The Petition in this proceeding asserts the same grounds as those we
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`instituted in the Facebook IPR. Pet. 1; see also Joinder Motion 1. Petitioner
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`relies also on a Declaration of Tal Lavian, Ph.D., filed as Exhibit 1102
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`(“Lavian Declaration”). Petitioner asserts that the Lavian Declaration is
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`identical to the Lavian Declaration filed in the Facebook IPR. Joinder
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`Motion 1.
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`Patent Owner’s Preliminary Response presents three procedural
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`arguments not presented in the Facebook IPR. We address those arguments
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`here. First, Patent Owner argues that we should deny the instant Petition
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`because Petitioner’s Mandatory Notices (Pet. 1–4) omits some related
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`administrative matters. Prelim. Resp. 47. Specifically, Patent Owner
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`points out that the Petition does not give the Board notice of 22 inter partes
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`review proceedings concerning the patent-at-issue and other interrelated
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`patents. Id. The omission, according to Patent Owner, violates the Board’s
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`rule regarding mandatory notices (37 C.F.R. § 42.8(b)(2)) and the relevant
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`statutory requirement in 35 U.S.C. § 312(a)(4). Prelim. Resp. 67.
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`Regarding the second argument, Patent Owner alleges that Petitioner
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`failed to name all real parties-in-interest under 37 C.F.R. § 42.8(b)(1).
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`IPR2017-02088
`Patent 8,995,433 B2
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`Prelim. Resp. 78. In particular, Patent Owner alleges that the unnamed real
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`parties-in-interest pertain to the collection of co-defendants that, together
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`with Petitioner, filed joint invalidity contentions in the district court
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`litigation. Id. (referring to Exhibits 2002 and 2003). Patent Owner also
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`argues that Huawei has coordinated with other entities to file other inter
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`partes reviews regarding related patents. Id. at 8 (referring to
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`IPR2017-02067, IPR2017-02080, and IPR2017-02081).
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`As for the last procedural argument, Patent Owner proffers that
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`Huawei has filed another petition challenging the patent-at-issue, i.e.,
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`IPR2017-02067, and, therefore, Huawei has presented the same or
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`substantially similar arguments relying on Zydney. Id. at 89. According to
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`Patent Owner, the “redundancy” presented by this second petition on the
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`same grounds presented previously based on Zydney is sufficient to deny the
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`Petition. Id. at 9.
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`We do not agree with any of Patent Owner’s arguments. Under the
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`circumstances of this case, the alleged failure to identify either related
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`matters or real parties-in-interest, alone,1 does not compel denial of the
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`Petition. First, mandatory notices are updateable on an ongoing basis.
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`37 C.F.R. § 42.8 (a)(3). Second, identification of real parties-in-interest is
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`not a jurisdictional issue and may be corrected. See Lumentum Holdings,
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`Inc., v. Capella Photonics, Inc., Case IPR2015-00739, slip op. at 5 (PTAB
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` 1
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` For example, Patent Owner does not allege any prejudice sufficient to
`consider the alleged deficiencies worthy of redress via denial of the Petition.
`8
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`IPR2017-02088
`Patent 8,995,433 B2
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`Mar. 4, 2016) (Paper 38) (precedential). Third, an allegation that defendants
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`in district court filed joint invalidity contentions is not sufficient to show that
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`all co-defendants are real parties-in-interest. See, e.g., Azure Gaming Mac.,
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`Ltd., v. MGT Gaming, Inc., Case IPR2014-01288, slip op. at 1112 (PTAB
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`Feb. 20, 2015) (Paper 13) (describing that the real party-in-interest is the
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`relationship between a party and a proceeding, not the relationship between
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`parties). Finally, the instant Petition is intentionally identical to the petition
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`filed in the Facebook IPR, as it seeks joinder on the same grounds instituted
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`therein. There is no “redundancy” or “multiple bites of the apple” as Patent
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`Owner alleges. Indeed, joined cases avoid the multiplicity that Patent
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`Owner criticizes. Accordingly, we decline Patent Owner’s request to deny
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`the Petition based on the proffered procedural arguments.
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`Patent Owner also advances two substantive arguments not presented
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`previously in connection with the Facebook IPR. First, Patent Owner argues
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`that the Petition is deficient in identifying the “instant voice message
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`application attach[ing] one or more files to the instant voice message,”
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`recited in claim 9. Prelim. Resp. 1820. In particular, according to Patent
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`Owner, Zydney’s attachments to the voice container have not been shown to
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`be performed by the “instant voice message application” and Zydney’s
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`software agent does not meet the limitation. Id. Patent Owner supports its
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`argument by emphasizing this panel’s actions in other decisions denying
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`inter partes review, and characterizing those actions as somehow agreeing
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`with Patent Owner that a “structural distinction” between the voice container
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`and the voice message is equally applicable here. Id. at 19. We do not agree
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`with either Patent Owner’s characterization of our decision in IPR2017-
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`9
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`IPR2017-02088
`Patent 8,995,433 B2
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`01257 or that the Petition’s identification of the “software agent” is
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`insufficient to satisfy the institution threshold. As we stated in the Facebook
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`IPR, and we reiterate here, these arguments are premised on an implied
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`construction of “instant voice message” as encompassing only the voice
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`message and excluding all else. Indeed, Patent Owner’s declarant testimony
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`makes a distinction between Zydney’s voice container and the “instant voice
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`message” that appears to be rooted in characterizing the “instant voice
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`message” as audio data only.2
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`As to the second substantive argument, Patent Owner points out that
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`Petitioner’s reliance on Zydney’s voice container as disclosing the “instant
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`voice message” is further flawed because claim 11 recites that “the instant
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`voice message application displays one or more controls for audibly playing
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`the instant voice message.” Id. at 2223. According to Patent Owner,
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`Zydney’s software agent does not audibly play the “voice container” itself,
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`because the voice container is used only for transmission and only the voice
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`message is played. Id. We are not persuaded by Patent Owner’s argument,
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`because, again, the argument is rooted on an underdeveloped claim
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`construction of “instant voice message” that limits the term to the audio and
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`nothing else. On the record before us, we are not persuaded that Patent
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`Owner has proffered facts, evidence, and argument sufficient to
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` 2
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` Claim 9 of the ’433 patent, challenged in this proceeding, recites attaching
`one or more files “to the instant voice message,” not to an “audio file” as
`recited in claim 1 of U.S. Patent No. 8,199,747 (subject of IPR2017-01257).
`10
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`IPR2017-02088
`Patent 8,995,433 B2
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`preliminarily construe the term. The parties will have the opportunity to
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`brief properly, during trial, the disputed claim constructions.
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`We have reviewed the Preliminary Response and find that the
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`remaining arguments were presented and that we considered them in
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`connection with the Facebook IPR. In view of the identicalness of the issues
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`in the instant Petition and the Facebook IPR, and the already considered
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`arguments from Patent Owner proffered in the Facebook IPR, we institute
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`inter partes review in this proceeding on the grounds presented in the
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`Petition for the same reasons stated in our Decision on Institution in the
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`Facebook IPR.
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`III. GRANT OF MOTION FOR JOINDER
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`
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`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
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`§ 315(c):
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`(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.
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`
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`As the moving party, Petitioner bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
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`11
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`IPR2017-02088
`Patent 8,995,433 B2
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`application-process/appealing-patent-decisions/trials/patent-review-
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`processing-system-prps-0.
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`
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`Petitioner asserts it has grounds for standing because, in accordance
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`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
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`with the Petition and not later than one month after institution of the
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`Facebook IPR. Joinder Motion 1. Patent Owner did not file an opposition
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`to the Motion. We find that the Motion is timely. We also find that
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`Petitioner has met its burden of showing that joinder is appropriate. For the
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`challenged claims, the Petition here is substantively identical to the petition
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`in the Facebook IPR. Joinder Motion 57. The evidence also is identical,
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`including reliance on the same Lavian Declaration. Id.
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`Petitioner further has shown that the trial schedule will not be affected
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`by joinder. Id. at 78. No changes in the schedule are anticipated or
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`necessary, and the limited participation, if at all, of Petitioner will not impact
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`the timeline of the ongoing trial.
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`Petitioner shall adhere to the existing schedule of IPR2017-01428 and
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`the “second-chair” role it has agreed to assume. Id. at 6. More specifically,
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`so long as any Facebook 1428 Petitioner entity is a party to IPR2017-01428,
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`all filings of Petitioner in IPR2017-01428 shall be consolidated with the
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`filings of the Facebook 1428 Petitioner. The page limits set forth in
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`37 C.F.R. § 42.24 will apply to all consolidated filings.
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`Petitioner is bound by any discovery agreements between Patent
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`Owner and the Facebook 1428 Petitioner in IPR2017-01428, and shall not
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`seek any additional discovery. Patent Owner shall not be required to provide
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`any additional discovery or deposition time as a result of joinder. In
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`12
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`IPR2017-02088
`Patent 8,995,433 B2
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`addition, if an oral hearing is requested and scheduled, Petitioners in
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`IPR2017-01428 shall collectively designate attorneys to present at the oral
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`hearing in a consolidated argument.
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`The Board expects Petitioner to attempt to resolve any disputes among
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`the entities involved and to contact the Board only if such matters cannot be
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`resolved. This arrangement promotes the just and efficient administration of
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`the ongoing trial and the interests of Petitioner and Patent Owner.
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`
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`In view of the foregoing, it is
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`IV. ORDER
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`
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`ORDERED that IPR2017-02088 is hereby instituted on the
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`following grounds:
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`Challenged Claim(s)
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`Basis
`
`Reference(s)
`
`9, 12, 14, 17, 25, and 26
`
`§ 103(a)
`
`Zydney
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`11, 15, and 16
`
`§ 103(a)
`
`Zydney and Greenlaw
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`10
`
`§ 103(a)
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`Zydney and Newton
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
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`IPR2017-01428 is granted, and LG Electronics, Inc. and Huawei Device
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`Co., Ltd. are hereby joined as petitioners in IPR2017-01428;
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`
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`FURTHER ORDERED that the Scheduling Order entered in
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`IPR2017-01428 and schedule changes agreed to by the parties in
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`IPR2017-01428 (pursuant to the Scheduling Order) shall govern the
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`schedule of IPR2017-01428;
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`13
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`IPR2017-02088
`Patent 8,995,433 B2
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`FURTHER ORDERED that all filings by the Petitioner entities in
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`IPR2017-01428 will be consolidated and no filing by Petitioner alone will be
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`allowed without prior authorization by the Board;
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`FURTHER ORDERED that Petitioner is bound by any discovery
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`agreements between Patent Owner and the Petitioner in IPR2017-01428, and
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`that Petitioner shall not seek any additional discovery;
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`FURTHER ORDERED that the Petitioner entities in IPR2017-01428
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`shall collectively designate attorneys to present at the oral hearing in a
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`consolidated argument;
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`FURTHER ORDERED that a copy of this Decision be entered into
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`the record of IPR2017-01428;
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`
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`FURTHER ORDERED that IPR2017-02088 is terminated under
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`37 C.F.R. § 42.72 and all further filings are to be made in IPR2017-01428;
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`and
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`FURTHER ORDERED that the case caption in IPR2017-01428, from
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`now on, shall reflect joinder with this proceeding in accordance with the
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`attached example.
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`14
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`IPR2017-02088
`Patent 8,995,433 B2
`
`For PETITIONER:
`
`Anand Sharma
`Minjae Kang
`Joshua Goldberg
`Bradford Shulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P
`Anand.sharma@finnegan.com
`Minjae.kang@finnegan.com
`Joshua.goldbert@finnegan.com
`Bradford.shulz@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
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`15
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., LG ELECTRONICS, INC., and
`HUAWEI DEVICE CO., LTD.,3
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01428
`Patent 8,995,433 B2
`____________
`
`
`
`
` 3
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` LG Electronics, Inc. and Huawei Device Co., Ltd. filed a motion for
`joinder and petition in IPR2017-02088, which were granted, and, therefore,
`these entities have been joined to this proceeding.
`
`