UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HTC CORPORATION and HTC AMERICA, INC.
`Petitioners
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,653,508
`Case IPR No.: To Be Assigned
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HTC CORPORATION and HTC AMERICA, INC.
`Petitioners
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,653,508
`Case IPR No.: To Be Assigned
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners HTC
`
`Corporation and HTC America, Inc. (together “HTC” or “Petitioners”) move for
`
`joinder with the Inter Partes Review of U.S. Patent No. 7,653,508 (“the ’508
`
`patent”), Apple Inc. v. Uniloc USA, Inc., IPR2018-00387 (“the Apple IPR”), for
`
`which trial was recently instituted on July 23, 2018. See IPR2018-00387, Paper 8.
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`This motion is timely because it is filed within one month of institution of the Apple
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`IPR. See 37 C.F.R. § 42.122(b). Petitioners understand that the petitioner in the
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`Apple IPR (“the Apple Petitioner”) does not oppose Petitioners’ requests for joinder.
`
`Petitioners request institution of the concurrently-filed Petition for Inter
`
`Partes Review. The Petition substantially copies the original Apple IPR petition.
`
`Substantive changes have only been made (1) to identify the correct Petitioners and
`
`the mandatory notices under 37 C.F.R. § 42.8(b) and (2) to add dependent claim 20
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`as a challenged claim. The concurrently-filed Petition challenges all of the claims
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`in the Apple IPR petition and, because dependent claim 20 involves substantially
`
`similar limitations as dependent claims 3 and 13, the concurrently-filed Petition
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`-1-
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`
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`presents the same grounds and relies on the same prior art and evidence, including a
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`declaration nearly identical in substance from the same expert.1
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`In addition to the arguments advanced for claim 20, Petitioners agree to
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`proceed on the grounds, evidence, and arguments advanced, or that will be advanced,
`
`in the Apple IPR as instituted. Thus, the Petition warrants institution under
`
`35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits Petitioners’ joinder to the Apple
`
`IPR.
`
`Further, if joined, Petitioners agree to adhere to all applicable deadlines in the
`
`Apple IPR and coordinate all filings with the Apple Petitioner in the Apple IPR. The
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`Apple Petitioner will maintain the lead role in the proceedings so long as it is a party
`
`to the proceedings and is not estopped under § 315(e)(1). Petitioners will only
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`assume the lead role in the proceedings if the Apple Petitioner is no longer a party
`
`to the proceedings or unable to advance arguments for one or more claims, or
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`grounds, for example, because of § 315(e)(1). Petitioners agree to consolidated
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`filings for all substantive papers in the proceeding. The Apple Petitioner and
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`Petitioners will be jointly responsible for the consolidated filings. Absent a Board
`
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`1 The declaration has been updated only to reflect retention by Petitioners and to
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`incorporate the expert’s analysis of claim 20 and is otherwise identical to the
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`declaration submitted in the Apple IPR.
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`-2-
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`
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`order precluding the Apple Petitioner from making arguments that would otherwise
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`be available to Petitioners, Petitioners will not advance any arguments separate from
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`those advanced by the Apple Petitioner in the consolidated filings. These limitations
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`will avoid lengthy and duplicative briefing. Also, Petitioners will not seek additional
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`depositions or deposition time, and will coordinate deposition questioning and
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`hearing presentations with the Apple Petitioner. Petitioners agree to the foregoing
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`conditions even in the event that other IPRs filed by other, third-party petitioners are
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`joined with the Apple IPR.
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`Joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Apple IPR
`
`this Petition for all interested parties. Further, the Patent Owner has asserted the
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`’508 patent in district court against HTC America, Inc. Joinder will estop HTC from
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`asserting in district court those issues resolved in a final decision from the Apple
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`IPR, thus narrowing the issues in the district court actions. See 35 U.S.C.
`
`§ 315(e)(2). Finally, joinder would not complicate or delay the Apple IPR, and
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`would not adversely affect any schedule set in that proceeding. In sum, joinder
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`would promote efficient adjudication in multiple forums. On the other hand, if
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`instituted, maintaining the Petitioners’ IPR proceeding separate from that of the
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`Apple IPR would entail needless duplication of effort.
`
`-3-
`
`
`
`Joinder will not unduly prejudice any party. Because joinder will not add any
`
`new prior art or combinations thereof, delay the schedule, burden deponents, or
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`increase needless filings, any additional costs on the Patent Owner would be
`
`minimal. On the other hand, denial of joinder would prejudice HTC. Its interests
`
`may not be adequately protected in the Apple IPR proceedings, particularly if the
`
`Apple Petitioner settles with the Patent Owner. Petitioners should be allowed to join
`
`in a proceeding affecting a patent asserted against them.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`Uniloc Luxembourg S.A. (the “Patent Owner”) is the owner of the ’508
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`patent. The Patent Owner asserted the ’508 patent against HTC in Uniloc USA, Inc.
`
`v. HTC America, Inc., Case No. 2:17-cv-01629 (W.D. Wash. filed on Nov. 1, 2017)
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`(consolidated with Uniloc USA, Inc. v. HTC America, Inc., Case No. 2:17-cv-01558
`
`(W.D. Wash.) (Lead case) on May 3, 2018). In addition, the Patent Owner asserted
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`the ’508 patent against Huawei Device USA, Inc.; LG Electronics U.S.A., Inc.,
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`Samsung Electronics America, Inc.; and Apple Inc. (“Apple”). See Uniloc USA, Inc.
`
`v. Huawei Device USA, Inc., 2:17-cv-00737 (E.D. Tex. filed on Nov. 9, 2017);
`
`Uniloc USA, Inc. v. LG Elecs. U.S.A., Inc., Case No. 4:17-cv-00832-O (N.D. Tex.
`
`filed on Oct. 13, 2017) (transferred and is now Uniloc USA, Inc. v. LG Elecs. U.S.A.,
`
`Inc., Case No. 4:18-cv-02918-PJH (N.D. Cal. filed on May 17, 2018)); Uniloc USA,
`
`Inc. v. Samsung Elecs. America, Inc., 2:17-cv-00650 (E.D. Tex. filed on Sept. 15,
`
`-4-
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`
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`2017); and Uniloc USA, Inc. v. Apple Inc., 2:17-cv-00522 (E.D. Tex. filed on June
`
`30, 2017) (transferred and is now Uniloc USA, Inc. v. Apple Inc., 4:18-cv-00364
`
`(N.D. Cal. filed on Jan. 17, 2018)). On December 22, 2017, Apple filed its IPR
`
`petition, IPR2018-00387, against the ’508 patent. The Board instituted the Apple
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`IPR on July 23, 2018. Petitioners timely move for joinder with the Apple IPR.
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`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A. Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an IPR
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`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
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`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
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`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
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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, and
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`other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear the
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`burden of proof in establishing entitlement to the requested relief. 37 C.F.R.
`
`§§ 42.20(c), 42.122(b). A motion for joinder should:
`
`(1) set forth the 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
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`-5-
`
`
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`review; and (4) address specifically how briefing and discovery may be
`simplified.
`
`Dell, IPR2013-00385, Paper 19, at 4.
`
`B.
`
`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
`The Petition is based on the same grounds and combinations of prior art that
`
`the Board considered in deciding to institute the Apple IPR. For simplicity and
`
`efficiency, Petitioners have copied the substance of Apple’s petition and
`
`accompanying expert declaration. Petitioners also request that the Board’s inter
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`partes review be extended to include claim 20 of the ’508 patent. But, because of
`
`the substantial similarity between claim 20 and claims 3 and 13, Petitioners do not
`
`seek to introduce new grounds or arguments.2
`
`Instituted claims 3 and 13
`3. The method of claim 1, further
`comprising:
`
`[3.1] maintaining a cadence window,
`wherein
`the cadence window
`is
`continuously updated as an actual
`cadence changes; and
`
`
`claim 20
`20. The device of claim 19, wherein
`
`
`[20.1] the cadence logic adjusts the
`cadence windows based on a measured
`cadence associated with the periodic
`human motion.
`
`
`2 Because claim 20 depends from claim 19, which was challenged in the Apple IPR,
`
`no additional argument related to the preamble of claim 20 is necessary.
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`-6-
`
`
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`[3.2] counting a periodic human motion
`when an acceleration measurement that
`meets motion criteria is within the
`cadence window.
`
`13. The device of claim 11, further
`comprising:
`
`[13.1] a cadence logic to continuously
`update a dynamic cadence window; and
`
`[13.2] the counting logic to count a
`periodic human motion when an
`acceleration measurement that meets
`motion criteria is taken within the
`cadence window.
`
`
`As seen above, claim elements 13.1 and 20.1 both require a “cadence logic.” The
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`Apple IPR petition shows where the prior art discloses a “cadence logic” with regard
`
`to instituted claims 13 and 19. See Apple, IPR2018-00387, Paper 8 at 59-60, 69.
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`And claim elements 3.1 and 20.1 both require a “cadence window” to be
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`“updated”/“adjusted” based on “an actual cadence”/“measured cadence associated
`
`with the periodic human motion.” The Apple IPR petition also demonstrates (with
`
`regard to instituted claim 3 that the “cadence window” is continuously updated and,
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`therefore, adjusted. See id. at 64-65. Moreover, the ’508 patent does not
`
`differentiate between an “actual cadence” and a “measured cadence.” For example,
`
`the ’508 patent discloses that a “cadence window may be set based on the period
`
`and/or cadence of the actual motion cycle (e.g., a stepping period).” ’508 patent at
`
`-7-
`
`
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`3:67-4:2. The “period and/or cadence” is determined by measured data. See id. at
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`11:14-15 (“The cadence window may be set based on previous measurement data.”).
`
`Accordingly, the same prior art that discloses a cadence window “updated as an
`
`actual cadence changes” similarly discloses a cadence window “adjust[ed] . . . based
`
`on a measured cadence.”3
`
`Petitioners have also retained the same expert, who has submitted an identical
`
`declaration for all claims challenged in the Apple IPR and has provided a an analysis
`
`for claim 20 that recites substantially similar grounds and arguments used for claims
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`3 and 13. The Patent Owner should not require any discovery beyond that which it
`
`may need in the Apple IPR—nor should the Board permit any. The Petition presents
`
`no new substantive issues relative to the Apple IPR and does not seek to broaden the
`
`scope of the Apple IPR beyond the addition of claim 20.
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`For efficiency’s sake, Petitioners will:
`
`1. Adhere to all applicable deadlines in the Apple IPR;
`
`
`3 Claim 13 also requires “a cadence logic to continuously update a dynamic cadence
`
`window.” The Board’s institution decision noted that claim 13 “recites similar
`
`limitations” to claim 3 although the claim language is not identical. Apple, IPR2018-
`
`00387, Paper 8 at 26.
`
`-8-
`
`
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`2. Submit “consolidated” filings with the Apple Petitioner, as set forth
`
`above in the statement of precise relief requested;
`
`3. Refrain from requesting or reserving any additional depositions or
`
`deposition time;
`
`4. Refrain from requesting or reserving additional oral hearing time; and
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`5. Assume a second-chair role as long as the Apple Petitioner remains in
`
`the proceeding.4
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`In view of these provisions, joinder should not affect the trial schedule.
`
`C.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioners present identical arguments and supporting evidence as the Apple
`
`IPR. Joinder will simplify briefing and discovery. Given that the Apple IPR and
`
`the Petition address the same prior art and grounds for rejection, joining these
`
`proceedings allows for joint submissions and discovery, further streamlining the
`
`
`4 These limitations are consistent with previously granted joinder motions. See, e.g.,
`
`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
`
`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
`
`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
`
`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
`
`-9-
`
`
`
`proceedings. This should promote efficiency and conserve the Board’s and the
`
`parties’ resources. Further, joinder will estop HTC from asserting in district court
`
`those issues resolved in a final written decision in the Apple IPR, thus narrowing the
`
`issues in the district court actions. See 35 U.S.C. § 315(e)(2).
`
`D.
`Joinder is Appropriate
`The Board has previously stated that it is “mindful of a policy preference for
`
`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
`
`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
`
`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
`
`anticipates that joinder will be allowed as of right – if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical petition
`
`will be joined to that proceeding, and thus allowed to file its own briefs and make
`
`its own arguments.”)). Here, because Petitioners seek institution solely on the
`
`grounds, evidence, and arguments advanced, or that will be advanced, in the Apple
`
`IPR, institution is warranted under 35 U.S.C. § 314 and Petitioners’ joinder to the
`
`Apple IPR is appropriate under 35 U.S.C. § 315(c). No new grounds of
`
`unpatentability are asserted. As explained above, joinder would not adversely
`
`impact the trial schedule, briefing, or discovery in the Apple IPR, and the remaining
`
`equities compel joinder.
`
`-10-
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`
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`Petitioners are filing this Petition and joinder motion to ensure that the trial is
`
`completed in the event that the Apple Petitioner reaches settlement with the Patent
`
`Owner.
`
`
`
`1.
`Joinder will not unduly prejudice any party.
`The Petition raises issues already before the Board and long known to the
`
`Patent Owner. Addressing patent validity in this proceeding, well on its way towards
`
`a final determination, serves the parties’ and Board’s interests.
`
`2.
`
`Uniloc will not be subject to an undue additional burden to
`address claim 20.
`The Board has previously joined petitions that included challenges to different
`
`claims where the joinder petition “presents substantially similar arguments and
`
`evidence as presented in the [instituted IPR],” and where “any differences are not
`
`substantial enough to impose an undue burden on [the Patent Owner] beyond its
`
`existing burden in the [instituted IPR].” See Facebook Inc. v. Windy City
`
`Innovations, LLC, IPR2017-00709, Paper 11, at 8 (PTAB Aug. 1, 2017). As shown
`
`above, the difference between the claim language in claims 3, 13, and 20 is
`
`“sufficiently minor such that it would not unduly burden [Uniloc] to analyze and
`
`address it.” Id. at 8. Moreover, the concurrently-filed Petition maps dependent claim
`
`20 to Pasolini and/or Fabio, which are the same prior art references used in the Apple
`
`IPR for claims 3 and 13. See Pet. at 72-73. And the grounds and expert testimony
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`-11-
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`
`
`cited in support thereof for claims 3 and 13 are substantially similar to those for
`
`claim 20. Accordingly, the Patent Owner will bear the same burden to defend claims
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`3 and 13 as it will defending claim 20.
`
`3. Without joinder, HTC will be prejudiced.
`A denial of joinder would prejudice HTC. Its substantial interests, as a party
`
`against whom the ’508 patent has been asserted in a federal district court action, may
`
`not be adequately protected by the Apple Petitioner in the Apple IPR proceedings.
`
`For example, HTC has an interest that the Apple IPR reach a final determination to
`
`facilitate a timely and cost-effective end to the controversy between HTC and the
`
`Patent Owner. HTC should be allowed to join in a proceeding affecting a patent
`
`asserted against it.
`
`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Apple
`
`IPR. Petitioners file this motion under the statutory joinder provisions as
`
`contemplated by the Leahy-Smith America Invents Act (AIA). Joinder will simplify
`
`the issues and promote efficiency, justice, and speed.
`
`-12-
`
`
`
`For the foregoing reasons, Petitioners respectfully request inter partes review
`
`of U.S. Patent No. 7,653,508 and joinder with Apple Inc. v. Uniloc USA, Inc.,
`
`IPR2018-00387.5
`
`Dated: August 23, 2018
`Vinson & Elkins LLP
`2001 Ross Avenue, Suite 37000
`Dallas, TX 75201
`Customer No. 22892
`Phone: (214) 220-7700
`Fax: (214) 220-7716
`
`
`/Todd E. Landis/
`Todd E. Landis
`USPTO Reg. No. 44,200
`
`
`
`
`
`
`5 Although no fee is believed to be required, the Commissioner is authorized to
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`charge any additional fees required for this Motion to Deposit Account No. 220365.
`
`-13-
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and 37
`
`C.F.R. § 42.105, the foregoing MOTION FOR JOINDER TO INTER PARTES
`
`REVIEW (35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)) is being served via
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`overnight mail on the 23rd day of August 2018, the same day as the filing of the
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`above-identified documents in the United States Patent and Trademark Office/Patent
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`Trial and Appeal Board, upon the Patent Owner by serving the correspondence
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`address of record with the USPTO as follows:
`
`Sean Burdick
`Uniloc USA Inc.
`Legacy Town Center
`7160 Dallas Parkway, Suite 380
`Plano, TX 75024
`(972) 905-9580
`
`
`
`
`
`Dated: August 23, 2018
`
`/Todd E. Landis/
`Todd E. Landis
`Lead Counsel for Petitioner
`USPTO Reg. No. 44,200
`
`
`
`
`
`
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