`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`FACEBOOK, INC., WHATSAPP, INC.,
`Petitioners,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`Patent No. 8,199,747
`
`TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`____________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND
`37 U.S.C. §§ 42.22 AND 42.122(b) TO RELATED INTER PARTES
`REVIEW IPR2017-01799
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Facebook, Inc. and WhatsApp, Inc. (“Joinder Petitioners”) respectfully
`
`submit this Motion for Joinder together with a Petition for Inter Partes Review of
`
`U.S. Patent. No. 8,199,747 (“’747 Patent”) (“the Joinder Petition”) filed
`
`contemporaneously herewith.
`
`The Board instituted inter partes review of claims 2 and 12 of the ’747 Patent
`
`in Samsung Electronics America, Inc. v. Uniloc Luxembourg S.A., IPR2017-01799
`
`on February 6, 2018. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and
`
`42.122(b), Joinder Petitioners request institution of inter partes review of claims 2
`
`and 12 of the ’747 Patent and request joinder with IPR2017-01799.
`
`The Joinder Petition is narrowly tailored to the same claims, prior art, and
`
`grounds for unpatentability currently at issue in IPR2017-01799. In fact, the Joinder
`
`Petition and supporting exhibits are substantively the same as the original Petition
`
`submission (“Original Petition”) by Samsung Electronics America, Inc. (“Samsung”
`
`or “Original Petitioner”) in IPR2017-01799.
`
`Joinder is appropriate because it will not burden or prejudice the present
`
`parties to IPR2017-01799, will not cause any undue delay, and will efficiently
`
`resolve the question of the ’747 Patent’s validity on the instituted grounds. Further,
`
`Joinder Petitioners are willing to serve in a limited “understudy” role to streamline
`
`discovery and briefing.
`
`1
`
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On June 14, 2016, Uniloc USA, Inc. and Uniloc Luxembourg, S.A.
`
`(“Uniloc”) filed a civil action for patent infringement against Samsung in the Eastern
`
`District of Texas, asserting that Samsung has infringed four patents related to the
`
`’747 patent. (Complaint, Uniloc USA, Inc. v. Samsung Elecs. Am. Inc. (“Samsung
`
`Action”), Case No. 2:16-CV-642-JRG, ECF No. 1.) On August 3, 2016, Uniloc
`
`USA, Inc. and Uniloc Luxembourg, S.A. (“Uniloc”) filed a Second Amended
`
`Complaint in the Samsung Action, asserting that Samsung has infringed the ’747
`
`patent in addition to the four originally asserted related patents. (Second Amended
`
`Complaint, Samsung Action, ECF No. 30.)
`
`2.
`
`On June 14, 2016, Uniloc filed a civil action for patent infringement
`
`against WhatsApp, Inc. (“WhatsApp”) in the Eastern District of Texas, asserting that
`
`WhatsApp has infringed the ’747 Patent and four other related patents. (Complaint,
`
`Uniloc USA, Inc. v. WhatsApp, Inc. (“WhatsApp Action”), Case No. 2:16-CV-645-
`
`JRG, ECF No. 1.) Uniloc filed a First Amended Complaint against WhatsApp on
`
`July 11, 2016. (WhatsApp Action, ECF No. 12.) On July 21, 2016, the WhatsApp
`
`Action was combined with the Samsung Action. (Order, Samsung Action, ECF No.
`
`14.) Uniloc effectuated service on WhatsApp on July 21, 2016. (WhatsApp Action,
`
`ECF No. 17.)
`
`3.
`
`On July 5, 2016, Uniloc filed a civil action for patent infringement
`
`2
`
`
`
`against Facebook, Inc. (“Facebook”) in the Eastern District of Texas, asserting that
`
`Facebook has infringed the ’747 Patent and four other related patents. (Complaint,
`
`Uniloc USA, Inc. v. Facebook, Inc. (“Facebook Action”), Case No. 2:16-CV-728-
`
`JRG, ECF No. 1.) On October 3, 2016, the Facebook Action was combined with the
`
`Samsung Action. (Order, Samsung Action, ECF No. 98.) Uniloc effectuated service
`
`on Facebook on July 11, 2016. (Facebook Action, ECF No. 14.)
`
`4.
`
`On April 7, 2017, Joinder Petitioners filed a petition for inter partes
`
`review that challenged claims 1-3, 12, and 13 of the ’747 Patent. (IPR2017-01257.)
`
`Institution of a trial in IPR2017-01257 was denied on December 4, 2017. That
`
`petition relied on PCT Patent Application No. PCT/US00/21555 to Herbert Zydney
`
`et al. (filed August 7, 2000, published February 15, 2001 as WO 01/11824 A2)
`
`(“Zydney”) and U.S. Patent No. 6,750,881 to Barry Appelman (“Appelman”) as
`
`prior art to the ’747 Patent. (See id.) Samsung also relies on Zydney as prior art to
`
`the ’747 Patent in IPR2017-01799, but combines it with U.S. Patent No. 8,150,922
`
`(“Griffin”) instead of with Appelman.
`
`5.
`
`On July 20, 2017, Samsung filed a petition for inter partes review
`
`(IPR2017-01799) requesting cancellation of claims 1, 2, 3, 12, and 13 of the ’747
`
`Patent.
`
`6.
`
`On February 6, 2018, the Board in IPR2017-01799 instituted
`
`Samsung’s petition for inter partes review as to claims 2 and 12 of the ’747 Patent.
`
`3
`
`
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Board has statutory authority under 35 U.S.C. § 315(c) to join a properly-
`
`filed inter partes review petition to an instituted inter partes review proceeding. See
`
`35 U.S.C. § 315(c). A motion for joinder should (1) set forth reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
`
`(3) explain what impact (if any) joinder would have on the trial schedule for the
`
`existing review; and (4) address specifically how briefing and discovery may be
`
`simplified. Samsung Electronics, Co., Ltd., et al. v. Raytheon Company, Case
`
`IPR2016-00962, slip op. at 5 (PTAB Aug. 24, 2016) (Paper 20) (citing Kyocera
`
`Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`
`(Paper 15)). In exercising its discretion to grant joinder, the Board is “mindful of
`
`the public interest in securing the just, speeding, and inexpensive resolution of every
`
`proceeding.” Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., Case
`
`IPR2016-01365, slip op. at 7 (PTAB February 4, 2015) (Paper 13) (citing 37 C.F.R.
`
`§ 42.1(b)) (internal quotations omitted).
`
`B.
`
`Petitioners’ Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
`
`February 6, 2018, institution decision of the Samsung IPR. See 37 C.F.R.
`
`§ 42.122(b). The one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply to
`
`4
`
`
`
`the present Joinder Petition because the Joinder Petition is filed concurrently with
`
`this Motion for Joinder. 37 C.F.R. § 42.122(b).
`
`C. Each Factor Weighs in Favor of Joinder
`
`Each of the four factors considered by the Board weighs in favor of joinder
`
`here. The Joinder Petition is substantively the same as the Original Petition and does
`
`not present any new prior art, grounds of unpatentability, exhibits, or arguments.
`
`Joinder is also appropriate so that Joinder Petitioners can maintain the proceeding,
`
`in which a substantial question of invalidity has been raised, in the event that
`
`Original Petitioner ceases to participate in IPR2017-01799 as a result of settlement
`
`or otherwise. Joinder will have minimal, if any, impact on the trial schedule, as the
`
`Joinder Petition presents no new prior art analysis or expert testimony. Discovery
`
`and briefing will be simplified because Joinder Petitioners are willing to accept a
`
`limited “understudy” role so long as Original Petitioner remains a participating
`
`party. Accordingly, joinder is appropriate and warranted here.
`
`1.
`
`Joinder is Appropriate as No New Grounds or Issues Are
`
`Raised
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung v. Raytheon, Case IPR2016-00962, slip op. at 9 (PTAB Aug.
`
`24, 2016) (Paper 12) (internal quotations and citations omitted) (emphases in
`
`5
`
`
`
`original).1 Here, joinder with pending IPR2017-01799 is appropriate because the
`
`Joinder Petition relies on identical arguments and the same grounds raised in the
`
`existing proceeding. The Joinder Petition relies on the same expert declaration and
`
`other supporting exhibits, asserts the same grounds and combinations of prior art,
`
`and challenges the same set of claims already instituted in IPR2017-01799. The
`
`Joinder Petition is substantively identical to the Original Petition, with only non-
`
`substantive differences including discussion regarding joinder, different mandatory
`
`notices, and the omission of the sections in the Original Petition that relate to claims
`
`that were not instituted in IPR2017-01799 and that are not necessary for the analysis
`
`of claims 2 and/or 12 as set forth in the Original Petition.
`
`
`1 See also Sony Corp. et al. v. Memory Integrity, LLC, Case IPR2015-01353, slip op.
`
`at 5-6 (PTAB Oct. 15, 2015) (Paper 11) (granting institution of IPR and motion for
`
`joinder where petitions relied “on the same prior art, same arguments, and same
`
`evidence, including the same expert and a substantively identical declaration”
`
`(citations omitted)); Perfect World Entm’t, Inc. v. Uniloc USA, Inc., Case IPR2015-
`
`01026 (PTAB Aug. 3, 2015) (Paper 10); Fujitsu Semiconductor Ltd. v. Zond, LLC,
`
`Case IPR2014-00845 (PTAB Oct. 2, 2014) (Paper 14); Enzymotec Ltd. v. Neptune
`
`Techs. & Bioresources, Inc., Case IPR2014-00556 (PTAB July 9, 2014) (Paper 19)).
`
`6
`
`
`
`Because the Joinder Petition and the Original Petition are substantively
`
`identical, good cause exists for joining the proceedings so that the Board can
`
`efficiently resolve the common grounds in both Petitions in a single proceeding.
`
`Furthermore, the substantial questions of invalidity as to the ’747 Patent raised in
`
`IPR2017-01799 are issues that affect Joinder Petitioners Facebook and WhatsApp,
`
`who stand accused of infringing certain claims of the ’747 Patent, as well as the
`
`broader public interest in the likely invalidity of an issued patent. Joinder is therefore
`
`appropriate for the additional reason that the invalidity grounds upon which the
`
`Board instituted review can be resolved through the participation of Joinder
`
`Petitioners even if Original Petitioner, Samsung, were to reach a settlement with
`
`Patent Owners or otherwise cease to participate in the proceeding.
`
`2.
`
`Joinder Will Not Negatively Impact the Trial Schedule
`
`Joinder will have minimal impact, if any, on the existing IPR trial schedule
`
`because the Joinder Petition presents no new issues or arguments for Patent Owners
`
`or the Board to consider. See Sony Corp. et al. v. Memory Integrity, Case IPR2015-
`
`01353, slip op. at 6 (PTAB Oct. 15, 2015) (Paper 11) (granting IPR and motion for
`
`joinder where “joinder should not necessitate any additional briefing or discovery
`
`from Patent Owner beyond that already required in [the original IPR].”). Further,
`
`because the Joinder Petition relies on the same expert declaration as the Original
`
`Petition, only a single deposition is needed for the proposed joined proceeding.
`
`7
`
`
`
`Absent any new issues, there is no reason to materially delay or modify the existing
`
`trial schedule.
`
`Accordingly, joinder with pending IPR2017-01799 will not unduly impact the
`
`trial schedule. However, even if a minor adjustment of the trial schedule was
`
`appropriate, the rules provide for such an adjustment, which is a routine undertaking
`
`by parties in IPR proceedings. See 37 C.F.R. § 42.100(c). A reasonable adjustment
`
`in the trial schedule, if needed, should not preclude joinder here.
`
`3.
`
`Joinder Petitioners Agree to an “Understudy” Role
`
`Additionally, Joinder Petitioners agree to take an “understudy” role in the
`
`joined proceeding, absent termination of the Original Petitioner, Samsung, as a
`
`party. In particular, Facebook and WhatsApp agree that, in the joined proceeding,
`
`the following conditions shall apply in this proceeding so long as the Original
`
`Petitioner, Samsung, remains an active party to this proceeding, as previously
`
`approved by the Board in similar circumstances:
`
`(a) all filings by Joinder Petitioners in the joined proceeding be consolidated
`
`with the filings of the Original Petitioner, unless a filing solely concerns issues
`
`that do not involve the Original Petitioner;
`
`(b) Joinder Petitioners shall not be permitted to raise any new grounds not
`
`already instituted by the Board, or introduce any argument or discovery not
`
`already introduced by the Original Petitioner;
`
`8
`
`
`
`(c) Joinder Petitioners shall be bound by any agreement between Patent
`
`Owners and the Original Petitioner concerning discovery and/or depositions;
`
`and
`
`(d) Joinder Petitioners at deposition shall not receive any direct, cross
`
`examination or redirect time beyond that permitted for the petitioner in this
`
`proceeding alone under either 37 C.F.R. § 42.53 or any agreement between
`
`Patent Owners and the Original Petitioner.
`
`See Mylan Pharms. Inc. v. Novartis AG, Case IPR2014-00550, slip op. at 5 (PTAB
`
`Apr. 10, 2015) (Paper 38). Joinder Petitioners would assume a primary role only if
`
`the Original Petitioner ceased to participate in the proceeding.
`
`
`
`The Board has consistently held that that the acceptance of an “understudy”
`
`role removes any undue complications or delay that might allegedly result from
`
`joinder. See, e.g., Sony Corp. et al. v. Memory Integrity, Case IPR2015-01353, slip
`
`op. at 7 (PTAB Oct. 15, 2015) (Paper 11); see also Mylan Pharmaceuticals Inc. et
`
`al. v. Dr. Falk Pharma GmbH, Case IPR2016-01386, slip op. at 6 (PTAB Nov. 30,
`
`2016) (Paper 9).
`
`IV. CONCLUSION
`
`Based on the factors discussed above, Joinder Petitioners respectfully request
`
`that this motion be granted and an inter partes review of the challenged claims 2 and
`
`12 of the ’747 Patent be instituted based on the same grounds authorized and for the
`
`9
`
`
`
`same reasons discussed in the Institution Decision in IPR2017-01799 and that this
`
`proceeding be joined with IPR2017-01799.
`
`
`Dated: March 6, 2018
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`
`
`
`
`
`
` Respectfully submitted,
`
`By: /Heidi L. Keefe/
`
`Heidi L. Keefe
`
`Reg. No. 40,673
`
`Counsel for Petitioners
`Facebook, Inc. and WhatsApp
`Inc.
`
`
`
`
`
`
`
`10
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 U.S.C.
`§§ 42.22 AND 42.122(b) TO RELATED INTER PARTES REVIEW IPR2017-
`01799 is being served in its entirety on the 6th day of March, 2018, the same day as
`the filing of the above-identified document in the United States Patent and
`Trademark Office/Patent Trial and Appeal Board, via Federal Express upon the
`Patent Owner by serving the correspondence address of record with the USPTO as
`follows:
`
`
`UNILOC USA INC.
`LEGACY TOWN CENTER
`7160 DALLAS PARKWAY, SUITE 380
`PLANO, TX 75024
`
`
`and upon counsel of record for the Patent Owner in the litigations pending before
`the U.S. District Court for the Eastern District of Texas entitled Uniloc USA, Inc. et
`al. v. Facebook, Inc., Case No. 2:16-cv-00728-JRG and Uniloc USA, Inc. et al. v.
`WhatsApp, Inc., Case No. 2:16-cv-00645-JRG as follows:
`
`
`Paul J. Hayes
`Kevin Gannon
`James John Foster
`Prince Lobel Tye LLP
`One International Place, Suite 3700
`Boston, MA 02210
`
`Anthony Michael Vecchione
`Edward R Nelson, III
`Nelson Bumgardner PC
`3131 West 7th Street, Suite 300
`Ft Worth, TX 76107
`
`
`
`
`
`
`Dated: March 6, 2018
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`
`
`
`
`11
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
