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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`APPLE INC.
`Petitioner
`
`v.
`
`UNILOC USA, INC., UNILOC LUXEMBOURG, S.A.
`Patent Owners
`
`
`_____________________
`
`Case IPR2018-00579
`Patent 8,724,622
`_____________________
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 8,724,622
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ...........................1
`STATEMENT OF MATERIAL FACTS .........................................................2
`STATEMENT OF REASONS FOR RELIEF REQUESTED .........................2
`A.
`Joinder is Appropriate ............................................................................ 4
`B.
`No new grounds of unpatentability are asserted in this Petition ............ 4
`C.
`Joinder will have, at most, a minimal impact on the trial
`schedule and costs for the existing IPR .................................................. 5
`Procedures to simplify briefing and discovery....................................... 5
`D.
`IV. CONCLUSION .................................................................................................7
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`- i -
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 8,724,622
`
`
`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Petitioner Apple Inc. (“Apple”) respectfully requests joinder pursuant to 35
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`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the concurrently filed Petition for
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`Inter Partes Review of U.S. Patent No. 8,724,622 (“the ’622 patent”) (“Apple
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`Petition”) with pending Inter Partes review, IPR2017-01667 (“Facebook IPR”).
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`Joinder is appropriate because it will promote efficient resolution of the
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`validity of the ’622 patent, as the timely Apple Petition involves the same ’622
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`patent, covers the claims instituted in the Facebook IPR, while relying on the same
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`arguments and evidentiary record.1 No new grounds of unpatentability are asserted
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`in the Apple Petition and there will be, at most, a minimal impact on the trial
`
`schedule for the existing review. Apple further identifies procedures the Board
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`may adopt to simplify briefing and discovery. Therefore, joinder would neither
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`complicate the issues nor unduly delay IPR2017-01667.
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`Apple has notified counsel for Petitioners in the Facebook IPR regarding the
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`subject of this motion and counsel has indicated they do not oppose this motion.
`
`
`1 Apple’s Exhibits are identical to the corresponding Facebook Exhibits and
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`have been re-labeled as “Apple” Exhibits.
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`- 1 -
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 8,724,622
`
`
`STATEMENT OF MATERIAL FACTS
`On July 20, 2017, Apple filed a petition for Inter Partes Review (“IPR”)
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`II.
`
`Apple Inc. v. Uniloc USA, Inc., IPR2017-01804, Paper 2 (PTAB July 20, 2017).
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`The ’1804 petition was substantively identical to the Facebook Petition--aside from
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`Sections VII-VIII of the Apple-filed ’1804 petition.
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`On January 19, 2018, the Board denied institution of the ’1804 petition
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`“without prejudice to Petitioner’s ability to file a new petition accompanied by a
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`request for joinder pursuant to and within the time period permitted by 37 C.F.R. §
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`42.122(b).” Apple Inc. v. Uniloc USA, Inc., IPR2017-01804, Paper 8, pp. 6-7
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`(PTAB January 19, 2018).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of IPR
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`proceedings. The statutory provision governing joinder of post-grant review
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`proceedings is 35 U.S.C. § 315(c):
`
`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 partes
`review under section 314.
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`
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`- 2 -
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`
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`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 8,724,622
`
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`37 C.F.R. § 42.122(a) provides that, “[w]here another matter involving the
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`
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`patent is before the Office, the Board may during the pendency of the inter partes
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`review enter any appropriate order regarding the additional matter including
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`providing for the stay, transfer, consolidation, or termination of any such matter.”
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`“The Board will determine whether to grant joinder on a case-by-case basis, taking
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`into account the particular facts of each case, substantive and procedural issues,
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`and other considerations.” IPR2013-00385, Paper 17 at 3 (citing 157 CONG. REC.
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`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)). “The Board’s rules for
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`AIA proceedings ‘shall be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.’” CBM2014-00115, Paper 8 at 19 (citing 37 C.F.R.
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`§ 42.1(b); 77 Red. Reg. at 48,758). Indeed, there is a “policy preference for joining
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`a party that does not present new issues that might complicate or delay an existing
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`proceeding.” See Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385,
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`Paper 17 at 10 (PTAB July 29, 2013) (citing 157 CONG. REC. S1376 (daily ed.
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`Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
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`allowed as of right – if an inter partes review is instituted on the basis of a petition,
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`for example, a party that files an identical petition will be joined to that
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`proceeding, and thus allowed to file its own briefs and make its own arguments.”)
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`(emphasis added)). That is precisely the situation here.
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`
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`In accordance with the Board’s governing law and rules, each of the factors
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`- 3 -
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 8,724,622
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`supporting joinder are present in this Motion for Joinder and are discussed in detail
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`below: (1) reasons why joinder is appropriate; (2) the lack of any new grounds of
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`unpatentability being raised in the subsequent petition; (3) lack of any impact on
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`the trial schedule for the existing instituted review; and (4) simplification of
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`briefing and/or discovery to minimize or remove any impacts on schedule.
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`Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24,
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`2013); see also Samsung Elecs. Co. Ltd. v. Unifi Sci. Batteries, LLC, IPR2013-
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`00236, Paper 22 at 3 (PTAB Oct. 17, 2013).
`
` Joinder is Appropriate
`
`A.
`The Board has authority to join a properly-filed IPR petition to an IPR
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`proceeding. See U.S.C. § 315(c). The Apple Petition and concurrently filed Motion
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`for Joinder are timely under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.22 and
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`42.122(b).
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`Further, joinder is appropriate as the Apple Petition does not raise new
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`grounds of unpatentability not already raised in the Facebook IPR. The Apple IPR
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`challenges the same claims of the ’622 patent on the same grounds as raised in the
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`Facebook IPR. In addition, Apple re-filed the same declaration of Dr. Tal Lavian
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`as in the Facebook IPR.
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`B. No new grounds of unpatentability are asserted in this Petition
`The Apple Petition does not assert any new grounds of unpatentability. It
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`
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`- 4 -
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 8,724,622
`
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`challenges the same claims of the ’622 patent based on the same arguments,
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`evidence, and grounds of unpatentability on which were raised in the Facebook
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`IPR.
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`C.
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`Joinder will have, at most, a minimal impact on the trial schedule
`and costs for the existing IPR
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`Joinder will have minimal—indeed, likely no—impact on the trial schedule
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`and costs for the existing Facebook IPR because of the complete overlap between
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`the two petitions for the raised grounds.
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`Coordination with the Facebook IPR Petitioners is not necessary because
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`any filing will be public and Apple is willing to agree to adopt them, including the
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`testimony from the same expert witness(es) as in the IPR proceeding. See ION
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`Geophysical, IPR2015-00565, Paper 14 at 4-5. Further, because Apple has re-filed
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`the same expert declaration submitted in the Facebook IPR, a second deposition of
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`a second expert is not necessary.
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`And any “alleged” prejudice or burden to Facebook Inc., et al. or Uniloc
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`USA, Inc., et al.—if not entirely nonexistent—is outweighed by the public interest
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`in obtaining a speedy and efficient resolution of the patentability issues of these
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`’622 patent claims with minimal burden on this Board.
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`Procedures to simplify briefing and discovery
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`D.
`Briefing and discovery in the joined proceeding can be simplified to
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`minimize or remove any impact to the schedule or the volume of materials
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`- 5 -
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`
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`submitted to the Board. Given that Apple Inc. and Facebook, Inc., et al. will rely
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 8,724,622
`
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`upon the same prior art and the same bases for rejection of the same claims using
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`the same expert, Apple envisions no differences in position, as discussed above.
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`Apple accepts that it will not be permitted to file any separate arguments in
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`furtherance of those advanced in Facebook, Inc., et al.’s filings. See, e.g., Motorola
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`Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 9 (PTAB June 20,
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`2013). In the unlikely event that there might be a procedural issue or statement by
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`Facebook, Inc. in the joined IPR with which Apple disagrees—and to be sure
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`Apple foresees none at this time—Apple will request a conference call to seek
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`permission and explain its reasons to submit a short separate filing, if needed, of no
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`more than 3-5 pages directed to points of procedural disagreement with the other
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`petitioners, at the Board’s discretion. The Board can also allow the patent owner a
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`corresponding number of pages to respond to any separate filings. See Dell Inc.,
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`IPR2013-00385, Paper 17 at 8; Motorola Mobility, IPR2013-00256, Paper 10 at 8-
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`9.
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`Apple agrees that it will not seek additional time at any deposition. And
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`Apple agrees that it will not seek any additional time at oral argument. Indeed,
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`Apple intends to maintain a passive understudy role in the joined proceeding.
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`Apple will assume a primary role only if Facebook, Inc., et al. cease to participate
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`in the IPR, or to the extent Facebook Inc., et al. willingly seek more prominent
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`
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`- 6 -
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 8,724,622
`
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`participation from Apple’s counsel. These concessions by Apple remove any
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`alleged “complication or delay” caused by joinder, while providing the parties an
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`opportunity to address all issues that may arise and avoiding any undue burden on
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`Uniloc USA, Inc., et al., Facebook Inc., et al., and the Board. See, e.g., IPR2013-
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`00256, Paper 10 at 9.
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`IV. CONCLUSION
`For the foregoing reasons, Apple requests its Petition for Inter Partes
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`Review of the ’622 patent be granted, and that the Board grant this Motion and join
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`this proceeding with the Facebook IPR. Joinder will ensure a just, speedy, and
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`inexpensive resolution in both proceedings, and will promote efficiency by
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`avoiding duplicative filings and reviews of the same issues.
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`
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`Date: February 15, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Petitioner
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`- 7 -
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`
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the foregoing MOTION FOR
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`JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`was served via FedEx Express on February 15, 2018, in its entirety on the
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`Etheridge Law Group
`2600 E. Southlake Blvd.,
`Suite 120-324
`Southlake, TX 76092
`Address Known to Petitioner as Likely
`to Effect Service
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Petitioner
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`following:
`
`Uniloc USA Inc.
`Legacy Town Center
`7160 Dallas Parkway
`Suite 380
`Plano, TX 75024
`PAIR Attorney of Record
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`
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`Date: February 15, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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