UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`IPR2018-00579
`PATENT 8,724,622
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`PATENT OWNER’S OBJECTION TO JOINDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`IPR2018-00579
`PATENT 8,724,622
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`PATENT OWNER’S OBJECTION TO JOINDER
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`Petitioner has now filed six IPR petitions against U.S. Patent No. 8,724,622
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`(“the ’622 patent”). It filed its first two petitions against the ’622 patent (Case Nos.
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`IPR2017-0223 and -0224) on November 14, 2016 and its third and fourth petitions
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`(Case Nos. IPR2017-1804 and -1805) on July 20, 2017. Having failed in its first
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`four IPR petitions, Petitioner now seeks to join its fifth and sixth petitions (the instant
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`petition, IPR2017-00579, and IPR2017-00580) against the same patent to Case Nos.
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`IPR2017-1667 and -1668.
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`Contrary to what Petitioner alleges, the Blue Coat Systems1 factors (later
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`adopted and made precedential by General Plastic2) weigh heavily against
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`institution and, therefore, joinder. Indeed, under nearly identical circumstances in
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`Petitioner’s third and fourth IPR petitions against the ’622 patent (involving the same
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`challenged claims and the same cited references), the Board already “agree[d] with
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`Patent Owner’s arguments that the factors set forth in Blue Coat Systems . . . do not
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`weigh in Petitioner’s favor.”3 Here, it is even more clear that the Blue Coat
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`Systems/General Plastic4 factors require denial of institution, and therefore denial of
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`1 Blue Coat Systems LLC v. Finjan, Inc., Case IPR2016-01443 (Paper 13, pp. 8-9)
`(PTAB Jan. 23, 2017).
`2 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357 (Paper 19) (PTAB Sept. 6, 2017).
`3 IPR1804, paper 8 at 5 n.3 (citing Prelim. Resp. 8-11).
`4 For simplicity and consistency, going forward Patent Owner refers to the factors as
`Blue Coat Systems factors, but notes these factors were made precedential by
`General Plastic. While all of the factors weigh against institution in this case, Patent
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`1
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`
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`joinder.
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED.
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`The Board should deny Petitioner’s motion for joinder (and ultimately its
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`petition5) under 35 U.S.C. § 325(d) because Petitioner provides no persuasive
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`justification for its latest piecemeal challenges based on a combination of references
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`it knew (or reasonably should have known) before it filed any of its petitions against
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`the ’622 patent.
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`II.
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`STATEMENT OF MATERIAL FACTS.
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`The ’622 patent is in a family of patents including United States Patent Nos.
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`7,535,890 (the ’890 Patent); 8,243,723 (the ’723 Patent); 8,199,747 (the ’747
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`Patent); and 8,995,433 (the ’433 Patent). The diagram below illustrates how this
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`family of patents are interrelated by priority claims.
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`Owner does not imply that each factor must be weighed and instead notes that a
`single factor may require denial of institution, as is the case with several of the
`factors in this case.
`5 Patent Owner files this objection to timely oppose Petitioner’s motion for joinder,
`to the extent the deadline to oppose such a motion is governed by 37 C.F.R. § 42.25.
`Patent Owner notes, however, that the plain language of 35 U.S.C. § 315(c) requires
`the Board to wait until “after receiving a preliminary response under section 313”
`before ruling on a motion for joinder. Patent Owner will timely file a preliminary
`response and understands the Board will wait for that preliminary response before
`ruling on Petitioner’s motion to join.
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`2
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`Forty petitions have been filed against the Rojas patents to which the ’622
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`patent belongs. Ten of those were filed by Petitioner, as highlighted in the following
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`
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`table:
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`Petitioner
`
`Apple
`Apple
`Apple
`Apple
`Apple
`Apple
`Facebook / WhatsApp
`
`Date
`14-Nov-16
`14-Nov-16
`14-Nov-16
`14-Nov-16
`14-Nov-16
`14-Nov-16
`7-Apr-17
`
`Patent
`'890
`'890
`'723
`'622
`'622
`'433
`'747
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`IPR#
`IPR2017-0220
`IPR2017-0221
`IPR2017-0222
`IPR2017-0223
`IPR2017-0224
`IPR2017-0225
`IPR2017-1257
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`3
`
`
`
`
`
`Petitioner
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Snap
`Snap
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Samsung Elec
`Samsung Elec
`Samsung Elec
`Samsung Elec
`Samsung Elec
`Samsung Elec
`Apple
`Apple
`Huawei / LG Electronics
`LG Electronics
`LG Electronics / Huawei
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`
`IPR#
`IPR2017-1365
`IPR2017-1427
`IPR2017-1428
`IPR2017-1523
`IPR2017-1524
`IPR2017-1667
`IPR2017-1668
`IPR2017-1611
`IPR2017-1612
`IPR2017-1634
`IPR2017-1635
`IPR2017-1636
`IPR2017-1797
`IPR2017-1798
`IPR2017-1799
`IPR2017-1800
`IPR2017-1801
`IPR2017-1802
`IPR2017-1804
`IPR2017-1805
`IPR2017-2090
`IPR2017-2087
`IPR2017-2088
`IPR2017-2080
`IPR2017-2081
`IPR2017-2082
`IPR2017-2083
`IPR2017-2084
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`4
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`Date
`3-May-17
`11-May-17
`11-May-17
`2-Jun-17
`2-Jun-17
`22-Jun-17
`22-Jun-17
`15-Jun-17
`16-Jun-17
`16-Jun-17
`16-Jun-17
`16-Jun-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`11-Sep-17
`11-Sep-17
`11-Sep-17
`12-Sep-17
`12-Sep-17
`11-Sep-17
`11-Sep-17
`11-Sep-17
`
`Patent
`'723
`'433
`'433
`'890
`'890
`'622
`'622
`'433
`'890
`'433
`'723
`'890
`'622
`'622
`'747
`'723
`'433
`'890
`'622
`'622
`'622
`'433
`'433
`'622
`'622
`'890
`'890
`'890
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`
`
`
`
`Petitioner
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`Apple
`Apple
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`IPR#
`IPR2017-2067
`IPR2017-2085
`IPR2018-0579
`IPR2018-0580
`IPR2018-0747
`IPR2018-0748
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`Date
`12-Sep-17
`11-Sep-17
`15-Feb-18
`15-Feb-18
`6-Mar-18
`6-Mar-18
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`Patent
`'433
`'747
`'622
`'622
`'890
`'747
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`Petitioner has now filed six petitions for inter partes review against the ’622
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`patent alone.6 Petitioner’s third and fourth petitions against the ’622 patent relied
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`on the same references Petitioner now relies on in its fifth and sixth petitions.7
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`Patent Owner
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`specifically denies Petitioner’s unsupported
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`(and
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`unsupportable) allegation that it “previously performed a reasonable search that did
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`not uncover” the citations relied on in the instant petition. It cannot be disputed that
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`at the time Petitioner filed its earlier (third and fourth petitions) on July 20, 2017, it
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`knew of the references cited in its current petitions because: (1) the current petitions
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`cite the same references as the third and fourth petitions8; and (2) Petitioner admits
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`it knew of these references in December 2016, well before it filed its third and fourth
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`petitions.9 The fact that Petitioner uncovered the current references in December
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`6 See IPR2017-0223, IPR2017-0224, IPR2017-1804, and IPR2017-1805, IPR2018-
`0579 (the present Petition), and IPR2018-0580 (filed concurrently with the present
`Petition).
`7 See IPR2017-1804 and -1805.
`8 Id.
`9 See Pet. at 78.
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`5
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`2016 also shows Petitioner knew or should have known about these references when
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`it filed its first and second petitions.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED.
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`The Blue Coat Systems factors10 weigh against institution and, therefore,
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`joinder. Indeed, under nearly identical circumstances in Petitioner’s third and fourth
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`IPR petitions against the ’622 patent (involving the same challenged claims and the
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`same cited references), the Board already “agree[d] with Patent Owner’s arguments
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`that the factors set forth in Blue Coat Systems . . . do not weigh in Petitioner’s
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`favor.”11
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`Knowing the Blue Coat Systems factors do not favor its petition, Petitioner
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`argues (without argument or authority) that the factors have “marginal” relevance
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`because Petitioner is merely seeking to join IPR’ 1667 and 1668. Petitioner is
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`effectively claiming it should now be able to accomplish through joinder what it
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`could not do through its own petitions. Petitioner should not be able to use joinder
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`as an end run around principles designed to prevent abuse of IPR proceedings.12 The
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`10 IPR2016-01443, Paper 13, pp. 8-9 (collecting cases and listing factors).
`11 IPR2017-1804, paper 8 at 5 n.3 (citing Prelim. Resp. 8-11).
`12 The Board has previously found the Blue Coat System factors a “useful framework
`for analyzing the facts and circumstances present in [a] case . . . in which a different
`petitioner filed a petition challenging a patent that had been challenged already by
`previous petitions.”Netapp Inc. v. Realtime Data LLC, IPR2017-01660, 2018 WL
`575318, at *4 (Patent Tr. & App. Bd. Jan. 25, 2018) (discussing General Plastic
`factors). Those factors are even more relevant here, where Petitioner is attempting
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`6
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`Blue Coat Systems factors weigh heavily against institution (and therefore joinder)
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`and should be applied to prevent Petitioner’s attempt to abuse the IPR process.
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`Factor 1: The first Blue Coat Systems factor, “the finite resources of the
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`Board,” disfavors permitting Petitioner to serially-file multiple petitions against the
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`same patent.
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`Factor 2: The second factor (addressing the one-year requirement under 35
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`U.S.C. § 316(a)(11)) is neutral at best, given that multiplying a proceeding with
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`multiple petitioners can only put further strain on the Board regarding this statutory
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`requirement.
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`Factor 3: It is undisputed that Petitioner has filed four previous petitions
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`against the same patent. It is further undisputed that third and fourth petitions were
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`directed to the same claims (and cited the same references) as the current petitions.
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`Therefore, the third factor, “whether the same petitioner previously filed a petition
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`directed to the same claims of the same patent” alone justifies denial of Petitioner’s
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`motion for joinder and ultimately its petition.
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`Factor 4: The fourth factor, “whether, at the time of filing of the earlier
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`petition, the petitioner knew of the prior art asserted in the later petition or should
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`have known of it,” also alone justifies denial of Petitioner’s motion for joinder and
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`to do via joinder what it was unable to do in its third and fourth petitions against the
`same patent.
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`7
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`ultimately its petition. Petitioner’s claim that it previously conducted a “reasonable
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`search” without uncovering the references cited in the current petitions cannot be
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`true. At the time of filing its earlier third and fourth petitions in July 2017, Petitioner
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`knew of the prior art now asserted in the fifth and sixth petitions. This fact is
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`undisputable because: (1) the third and fourth petitions cite the same references that
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`are now cited in the fifth and sixth petitions; and (2) Petitioner admits it uncovered
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`these references in December 2016,13 well before filing third and fourth petitions.
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`The fact that Petitioner knew of the prior art now relied on when it filed its third and
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`fourth petitions is alone enough to show that the fourth factor justifies denial of
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`Petitioner’s motion.
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`But the evidence also shows Petitioner knew or should have known of the
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`current references when it filed its first and second petitions on November 14, 2016.
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`Petitioner makes no attempt to explain why it was able to uncover the current
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`references in December 2016 but could not have reasonably uncovered them several
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`weeks earlier in November 2016. There is no reasonable explanation. Apple Inc.
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`can hardly be considered a small enterprise without resources to conduct a thorough
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`search for what it considers to be the best prior art.
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`Turning to the references themselves, the primary reference cited in the instant
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`petition (Zydney) is a PCT patent application that is text searchable using the same
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`13 See Pet. at 78.
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`8
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`free online search engines Petitioner no doubt used in selecting the U.S. patents cited
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`in the first and second petitions. The same is true for the Appelman and Clark
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`references, which are both U.S. patents. Similarly, it should not have been difficult
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`for Apple Inc. to have located the Shinder reference a few weeks earlier. Given the
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`overwhelming evidence that Petitioner should have known of these references as of
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`the original petitions, the fourth example factor of Blue Coat Systems independently
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`confirms denial is appropriate.
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`Petitioner, who bears the burden of proof, makes no attempt to support its
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`allegation that it conducted a “reasonable search” without uncovering the references
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`it now cites with a sworn declaration or an explanation of the how it had previously
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`conducted its prior art searches. The available evidence proves otherwise, that
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`Petitioner knew of the currently cited references when it filed its third and fourth
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`petitions against the ’622 patent and that it knew or should have known of the
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`currently cited references when it filed its first and second petitions against the ‘622
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`patent.
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`Factor 5: The fifth factor also favors denial—i.e., “whether, at the time of
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`filing of the later petition, the petitioner already received the patent owner’s
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`preliminary response to the earlier petition or received the Board’s decision on
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`whether to institute review in the earlier petition.” Blue Coat, PR2016-01443, Paper
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`13, pp. 8-9. Here, Petitioner now seeks through joinder to derive the benefit provided
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`9
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`by Patent Owner’s two preliminary responses (both filed on March 3, 2017) and the
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`Board’s two decisions to deny institution (both dated May 25, 2017).
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`Factors 6 and 7: The sixth and seventh factors strongly favor denial. The
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`sixth factor addresses “the length of time that elapsed between the time the petitioner
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`learned of the prior art asserted in the later petition and the filing of the later
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`petition.” Blue Coat, PR2016-01443, Paper 13, pp. 8-9. The seventh factor is
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`“whether the petitioner provides adequate explanation for the time elapsed between
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`the filing dates of multiple petitions directed to the same claims of the same patent.”
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`Id. Petitioner offers no explanation whatsoever for why it waited nearly a year,
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`indeed the very last day before expiration of the statutory time bar, before attempting
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`to challenge the same claims of the ’622 patent (via its third and fourth petitions)
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`based on the references cited in the present Petition. The Board in Blue Coat
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`emphasized similar circumstances as strongly favoring denial:
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`Further, as Patent Owner points out (Prelim. Resp. 12), the
`instant Petition was filed on the one-year anniversary of the
`filing of Patent Owner’s complaint against Petitioner in the
`district court on July 15, 2015—i.e., just before the raising of the
`bar against further challenges by Petitioner to any claims of the
`’494 patent. … Thus, it is appropriate to consider the harassing
`impact that the resulting piecemeal challenges have on Patent
`Owner in defending its patent.
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`10
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`Blue Coat Systems v. Finjan, IPR2016-01443, Paper 13, pp. 14-15 (citations
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`omitted).14
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`Factor 8: The eighth factor also favors denial because “the same or
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`substantially same prior art or arguments were previously presented to the office.”
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`Petitioner provides no explanation for why the arguments and art cited in its current
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`petitions differ in any way from either the art cited during prosecution or the art
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`Petitioner cited in its four previous petitions.
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`Because the Blue Coat Systems factors weigh heavily against institution,
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`Petitioner’s motion to join (and ultimately its petition) should be denied.
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`14 Notably, the Board in Blue Coat stated “[t]hese various considerations also inform
`our consideration of the first and second factors.” Id. (citing Alarm.com Inc. v. Vivint,
`Inc., Case IPR2016-01091, slip op. at 13 (PTAB Nov. 23, 2016) (Paper 11)).
`
`11
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`Date: March 19, 2018
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`Respectfully submitted,
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
`
`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
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`of the foregoing OBJECTION TO JOINDER along with any accompanying exhibits
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`via the Patent Review Processing System (PRPS) on the following:
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`Attorneys for Petitioner:
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Jason D. Eisenberg (Reg. No. 43,447)
`Michael D. Specht
`Trent W. Merrell
`1100 New York Avenue, N.W.
`Washington, D.C. 2005-3934
`(202) 371-2600
`
`
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`12
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`
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