`571-272-7822
`
` Paper No. 17
` Entered: November 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01383
`Patent US 8,872,646
`_______________
`
`Before JENNIFER S. BISK, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review and Granting Motion for Joinder
`35 U.S.C § 314; 35 U.S.C § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`
`INTRODUCTION
`
`I.
`
`Samsung Electronics America, Inc. (“Samsung”) filed a Petition
`
`requesting an inter partes review of claims 1, 3, 5–11, 13–18, and 20 of U.S.
`
`Patent No. 8,872,646 B2 (“the ’646 patent”). Paper 1 (“Pet.”). Patent
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`Owner Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response to
`
`the Petition (Paper 7, “Prelim. Resp.”).
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`Along with its Petition, Samsung filed a Motion for Joinder to join as
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`a petitioner in IPR2018-00289. Paper 3 (“Mot.”). Samsung filed the
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`Petition and Motion for Joinder on July 11, 2018, respectively, both within
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`one month after we instituted trial in IPR2018-00289. In its Preliminary
`
`Response to the Petition, Patent Owner opposes Samsung’s Motion for
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`Joinder. Prelim. Resp. 20.
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`As explained further below, we determine institution is warranted on
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`the same grounds as instituted in IPR2018-00289 and grant Samsung’s
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`Motion for Joinder.
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`2
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`IPR2018-01383
`Patent 8,872,646
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`DISCUSSION
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`II.
`
`In IPR2018-00289, Apple, Inc. (“Apple”) challenged claims 1, 3, 5–
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`11, 13–18, and 20 of the ’646 patent on the following grounds:
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`References
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`Basis
`
`Challenged Claims
`
`Pasolini1, Goldman2,
`McMahan3, and Mizell4
`
`Pasolini, Goldman,
`McMahan, Mizell, and Park5
`
`§ 103(a) 1, 3, 5–7, 9–11, 13–15, 17, and 20
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`§ 103(a) 8, 16, and 18
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`IPR2018-00289, Paper 7, 6. After considering the Petition and Patent
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`Owner’s Preliminary Response, we instituted an inter partes review of
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`claims 1, 3, 5–11, 13–18, and 20 on Petitioner’s asserted grounds. See id. at
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`25.
`
`As Petitioner’s Motion for Joinder explains, “the Samsung Petition
`
`introduces identical arguments and the same grounds raised in the existing
`
`Apple proceeding (i.e., challenges the same claims of the same patent, relies
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`on the same expert declaration, and is based on the same grounds and
`
`combinations of prior art submitted in the Apple Petition).” Mot. 4.
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`Petitioner further notes, “[o]ther than minor differences, such as differences
`
`related to formalities of a different party filing the petition, there are no
`
`
`1 U.S. Patent No. 7,409,291 B2 (Aug. 5, 2008) (Ex. 1003, “Pasolini”).
`2 Ron Goldman, Using the LIS3L02AQ Accelerometer, Sun Microsystems
`Inc. (Feb. 23, 2007) (Ex. 1004, “Goldman”).
`3 U.S. Patent No. 7,204,123 B2 (Apr. 17, 2007) (Ex. 1005, “McMahan”).
`4 David Mizell, Using Gravity to Estimate Accelerometer Orientation,
`Proceedings of the Seventh IEEE International Symposium on Wearable
`Computers (2003) (Ex. 1007, “Mizell”).
`5 U.S. Patent No. 7,028,220 B2 (Apr. 11, 2006) (Ex. 1014, “Park”).
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`3
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`IPR2018-01383
`Patent 8,872,646
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`changes to the facts, citations, evidence, or arguments introduced in the
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`Apple Petition.” Id.
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`In its Preliminary Response to the Petition, Patent Owner raises the
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`same substantive reasons why the Petition fails to prove obviousness as it
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`does in its Patent Owner Response to Apple’s petition in IPR2018-00289.
`
`Compare IPR2018-00289 Paper 11, 2–18, with Prelim. Resp. 2–19. We
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`decline to resolve those issues at this point in the proceeding because the
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`trial in IPR2018-00289 is a better forum in which to do so. Specifically, as
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`compared to the pre-trial, preliminary phase of this case, the instituted trial
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`in IPR2018-00289 affords the parties better opportunity to brief, argue, and
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`develop evidence in support of their positions. Thus, for the same reasons
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`stated in our Decision on Institution in IPR2018-00289, we determine
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`institution is warranted here on the same grounds.
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`Having determined that institution is warranted, we now turn to
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`Samsung’s Motion for Joinder. Section 315(c) provides, in relevant part,
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`that “[i]f the Director institutes an inter partes review, the Director, in his or
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`her discretion, may join as a party to that inter partes review any person who
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`properly files a petition under section 311.” When determining whether to
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`grant a motion for joinder we consider factors such as timing and impact of
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`joinder on the trial schedule, cost, discovery, and potential simplification of
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`briefing. Kyocera Corp. v. SoftView, LLC, Case IPR2013-00004, slip op.
`
`at 4 (PTAB Apr. 24, 2013) (Paper 15).
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`Under the circumstances of this case, we determine that joinder is
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`appropriate. As Samsung explains, “[j]oinder will have minimal impact, if
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`any, on the Apple IPR trial schedule because the Samsung Petition presents
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`no new issues or grounds of unpatentability.” Mot. at 5. Further, Samsung
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`4
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`IPR2018-01383
`Patent 8,872,646
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`agrees to take an understudy role in the joined proceeding. See id. at 6–7
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`(specifying conditions of joined party’s participation previously approved by
`
`the Board in similar circumstances). In sum, Samsung explains, “[u]nless
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`and until the current petitioner ceases to participate in the instituted IPR
`
`proceeding, Samsung will not assume an active role.” Id. at 7.
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`Patent Owner argues we should exercise our discretion to deny
`
`joinder. According to Patent Owner:
`
`Less than two months after filing its motion for joinder on July
`11, 2018, Petitioner filed a petition challenging claim 22 of the
`same patent in IPR2018-01664. When Petitioner filed its joinder
`petition in this IPR, it knew or should have known of the grounds
`asserted in IPR2018-01664; and the follow-on petition in
`IPR2018-01664 does not allege otherwise. Not only did
`Petitioner delay its joinder petition here to the last possible date
`for strategic advantage, it appears Petitioner chose to separately
`challenge claim 22 and to delay filing that separate challenge (in
`the follow-on petition) only to increase the chances of joinder
`here and gain a strategic advantage. The Board should discourage
`such tactics by exercising its discretion to deny joinder.
`
`Prelim. Resp. 20.
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`We disagree with Patent Owner. We take no issue with Samsung
`
`taking the full month permitted under 37 C.F.R. § 42.122(b) to file its
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`joinder petition. In addition, we perceive no unfair tactical advantage with
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`Samsung structuring its petitions to increase its chances of joinder. Under
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`these circumstances, we agree with Samsung that joinder is appropriate and
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`will not unduly impact the ongoing trial in IPR2018-00289. We limit
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`Petitioner Samsung’s participation in the joined proceeding, such that
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`(1) Apple alone is responsible for all petitioner filings in the joined
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`proceeding until such time that it is no longer an entity in the joined
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`proceeding, and (2) Samsung is bound by all filings by Apple in the joined
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`IPR2018-01383
`Patent 8,872,646
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`proceeding, except for filings regarding termination and settlement.
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`Samsung must obtain prior Board authorization to file any paper or to take
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`any action on its own in the joined proceeding, so long as Apple remains as
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`a non-terminated petitioner in the joined proceeding. This arrangement
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`promotes the just and efficient administration of the ongoing trial in Case
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`IPR2018-00289 and protects the interests of Apple as original petitioner in
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`Case IPR2018-00289, and of Patent Owner.
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`For the foregoing reasons, and with the limitations discussed above,
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`Petitioner’s Motion for Joinder is granted.
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`III.
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that the Petition is granted and an inter partes review of
`
`the ’646 patent is warranted on the following grounds:
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`1) Obviousness of claims 1, 3, 5–7, 9–11, 13–15, 17, and 20 over
`Pasolini, Goldman, McMahan, and Mizell;
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`2) Obviousness of claims 8, 16, and 18 over Pasolini, Goldman,
`McMahan, Mizell, and Park;
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`FURTHER ORDERED that Samsung’s Motion for Joinder with
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`IPR2018-00289 is granted, and Samsung is joined as a petitioner in that case
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`pursuant to 37 C.F.R. § 42.122, based on the conditions discussed above;
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`FURTHER ORDERED that the Petition is dismissed, pursuant to 37
`
`C.F.R. § 42.71(a);
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2018-00289 (Paper 8) shall govern the joined proceedings;
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`6
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`IPR2018-01383
`Patent 8,872,646
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`FURTHER ORDERED that all future filings in the joined proceeding
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`shall be made only in IPR2018-00289;
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`FURTHER ORDERED that the case caption in IPR2018-00289 for all
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`further submissions shall be changed to add Samsung as a named Petitioner
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`after Apple, and to indicate by footnote the joinder of IPR2018-01383 to that
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`proceeding, as indicated in the attached sample case caption; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2018-00289.
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`7
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`IPR2018-01383
`Patent 8,872,646
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`FOR PETITIONER Samsung:
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Joseph Palys
`josephpalys@paulhastings.com
`
`Phillip Citroen
`phillipcitroen@paulhastings.com
`
`Michael Wolfe
`michaelwolfe@paulhastings.com
`
`FOR PETITIONER Apple:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Thomas W. Kelton
`thomas.kelton.ipr@haynesboone.com
`
`Calmann Clements
`calmann.clements.ipr@haynesboone.com
`
`FOR PATENT Owner:
`
`Ryan Loveless
`ryan@etheridgelaw.com
`
`Sean Burdick
`sean.burdick@unilocusa.com
`
`Brett Mangrum
`brett@etheridgelaw.com
`
`James Etheridge
`jim@etheridgelaw.com
`
`Jeffrey Huang
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`8
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`IPR2018-01383
`Patent 8,872,646
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`jeff@etheridgelaw.com
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`9
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`IPR2018-01383
`Patent 8,872,646
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`Sample Case Caption
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-002896
`Patent US 8,872,646 B2
`_______________
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`6 Samsung Electronics America, Inc., which filed a petition in IPR2018-
`01383, has been joined as a party to this proceeding.
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`10
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