Trials@uspto.gov
`571-272-7822
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`
`
`
`
`Paper No. 13
`Entered: September 5, 2019
`
`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 IPR2019-00889
`Patent 7,653,508 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Granting Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 13
`Entered: September 5, 2019
`
`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 IPR2019-00889
`Patent 7,653,508 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Granting Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`
`I. INTRODUCTION
`
`A. Background
`Samsung Electronics America, Inc. (“Petitioner” or “Samsung”) filed
`
`a Petition for inter partes review of claims 1–4, 6–8, 11–16, 19, and 20 of
`U.S. Patent No. 7,653,508 B1 (Ex. 1001, “the ’508 patent”). Paper 1
`(“Pet.”), 1. Concurrently with its petition, Samsung filed a Motion for
`Joinder with HTC Corp. v. Uniloc 2017 LLC, Case IPR2018-01589 (“the
`HTC IPR”). Paper 3 (“Motion” or “Mot.”). Uniloc 2017 LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 9, “Prelim. Resp.”) and an
`Opposition to the Motion for Joinder (Paper 7, “Opposition” or “Opp.”).
`Samsung subsequently filed a Reply to the Opposition. Paper 8 (“Reply”).
`In its Reply, Petitioner stated that it “consents to limit its petition and joinder
`motion to claim 20.” Id. at 4.
`
`For the reasons explained below, we institute an inter partes review of
`claim 20 of the ’508 patent, and grant Petitioner’s Motion for Joinder.
`
`B. Real Parties-in-Interest
`The statute governing inter partes review proceedings sets forth
`
`certain requirements for a petition for inter partes review, including that “the
`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a)(2); see also
`37 C.F.R. § 42.8(b)(1) (requiring identification of real parties-in-interest in
`mandatory notices). The Petition identifies Samsung Electronics America,
`Inc. and Samsung Electronics Co., Ltd. as real parties-in-interest. Pet. 1.
`Patent Owner states that its sole real party-in-interest is Uniloc 2017 LLC.
`Paper 4, 1.
`
`2
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`
`C. Related Matters
`The parties indicate that the ’508 patent is the subject of the several
`
`litigation proceedings:
`Uniloc USA, Inc. v. Apple Inc., No. 2-17-cv-00522 (E.D. Tex.
`filed June 30, 2017),
`Uniloc USA, Inc. v. Samsung Electronics America, Inc., No. 2-
`17-cv-00650 (E.D. Tex. filed Sept. 15, 2017),
`Uniloc USA, Inc. v. LG Electronics USA, Inc., No. 4-12-cv-
`00832 (N.D. Tex. filed Oct. 13, 2017),
`Uniloc USA, Inc. v. HTC America, Inc., No. 2-17-cv-01629
`(W.D. Wash. filed Nov. 1, 2017),
`Uniloc USA, Inc. v. Huawei Devices USA, Inc., No. 2-17-cv-
`00737 (E.D. Tex. filed Nov. 9, 2017),
`Uniloc USA, Inc. v. Apple Inc., No. 4-18-cv-00364 (N.D. Cal.
`filed Jan. 17, 2018), and
`Uniloc USA, Inc. v. LG Electronics USA, Inc., No. 4:18-cv-
`02918 (N.D.Cal. filed May 17, 2018).
`Pet. 1–2; Paper 4, 2. The ’508 patent is also the subject of several
`proceedings before the Board:
`Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-00387,
`Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-01026,
`LG Electronics, Inc. v. Uniloc 2017 LLC, Case IPR2018-01577,
`HTC Corp. v. Uniloc 2017 LLC, Case IPR2018-01589, and
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC, Case
`IPR2018-01756.
`See Pet. 2; Paper 4, 2.
`
`3
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`
`D. Procedural Posture
`In the HTC IPR, we instituted an inter partes review of claim 20 of
`
`the ’508 patent as being unpatentable under 35 U.S.C. § 103(a) in view of
`Pasolini1 and Fabio.2 Although HTC sought review of claims 1–4, 6–8, 11–
`16, 19, and 20 in the HTC IPR, we explained that only claim 20 would be
`reviewed:
`Given that Petitioner is being joined as a party to
`
`[IPR2018-00387 (“the Apple IPR”)] and that “Petitioner[]
`agree[s] to proceed on the grounds, evidence, and arguments
`advanced, or that will be advanced, in the Apple IPR as
`instituted,” Petitioner is bound by the ultimate determination
`made in the Apple IPR regarding claims 1–4, 6–8, 11–16, and
`19. See 35 U.S.C. §§ 315(e)(1), 325(d); 37 C.F.R.
`§ 42.73(d)(1). Accordingly, Petitioner shall not advance any
`arguments regarding these claims in this proceeding; all
`grounds raised by Petitioner regarding these claims will be
`addressed in the Apple IPR. The parties are limited to
`advancing arguments regarding claim 20 in this proceeding.
`HTC IPR, Institution Decision (IPR2018-01589, Paper 9, “HTC Decision”
`or “HTC Dec.”), 10 (all but first alteration in original).
`
`A Final Written Decision in the Apple IPR issued on June 17, 2019.
`Apple IPR, Paper 21. In the Decision, we determined claims 1–4, 6–8, 11–
`16, and 19 of the ’508 patent to be unpatentable. Id. at 49. As such, the
`HTC Petitioner is estopped from maintaining any challenges to claims 1–4,
`6–8, 11–16, and 19 in the HTC IPR. See 35 U.S.C. § 315(e)(1); 37 C.F.R.
`
`
`1 US 7,463,997 B2 (filed Oct. 2, 2006, issued Dec. 9, 2008) (Ex. 1005,
`“Pasolini”).
`2 US 7,698,097 B2 (filed Oct. 2, 2006, issued Apr. 13, 2010) (Ex. 1006,
`“Fabio”).
`
`4
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`§ 42.73(d)(1). The HTC IPR, therefore, is limited to the challenge of claim
`20.
`In its Reply, Petitioner stated that it “consents to limit its petition and
`
`joinder motion to claim 20.” Reply 4. We understand Petitioner to
`withdraw its challenges in the Petition regarding claims 1–4, 6–8, 11–16,
`and 19, and to withdraw its requests in the Motion to join any challenge to
`claims 1–4, 6–8, 11–16, and 19 to the HTC IPR. As such, the challenges to
`claims 1–4, 6–8, 11–16, and 19 are withdrawn from consideration in this
`proceeding. The sole ground of unpatentability remaining in dispute is the
`challenge to claim 20 as being unpatentable under 35 U.S.C. § 103(a) in
`view of Pasolini and Fabio.
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same ground of
`
`unpatentability regarding claim 20 as asserted in the HTC IPR. Compare
`Pet. 16, with HTC IPR, Paper 1, 16 (“HTC Petition”). Indeed, Petitioner
`contends that the Petition “introduces identical arguments and the same
`ground[] raised in the existing HTC [IPR],” there are no new arguments for
`the Board to consider, and the Petitioner relies on the same exhibits and
`expert declaration as in the HTC IPR. Mot. 4–5.
`
`We acknowledge Patent Owner’s arguments and evidence supporting
`its position that claim 20 would not have been obvious. Prelim. Resp. 34–
`38. Certain of Patent Owner’s arguments against the merits of the Petition
`have been previously addressed in the HTC Decision, and we need not
`address them here again. Certain other arguments against the merits of the
`Petition closely mirror arguments made in the Patent Owner Response filed
`
`5
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`in the HTC IPR (compare Prelim. Resp. 34–38, with HTC IPR Paper 11,
`15–19). Those common arguments will be fully considered in the HTC IPR
`after HTC has filed its Reply and Patent Owner has filed its Sur-Reply, and
`with the benefit of a complete record. In sum, based on the current record,
`Patent Owner’s arguments made in its Preliminary Response in this case do
`not persuade us that Petitioner has not demonstrated a reasonable likelihood
`of success in prevailing on the same ground as instituted in the HTC IPR.
`
`III. MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`
`a filing date of March 27, 2019. See Paper 6, 1. Thus, Petitioner’s Motion
`for Joinder is timely because joinder was requested no later than one month
`after the institution date of the HTC IPR, i.e., February 27, 2019. See
`37 C.F.R. § 42.122(b).
`
`The statutory provision governing joinder in inter partes review
`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.
`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. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`
`6
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15); see also Office Patent
`Trial Practice Guide, July 2019 Update, 42.3
`
`As noted, the Petition in this case asserts the same challenge to claim
`20 as asserted in the HTC IPR. See Mot. 4–5. Samsung also relies on the
`same prior art analysis and expert testimony submitted by the HTC
`Petitioner. See id. Indeed, the Petition is nearly identical to the petition filed
`by the HTC Petitioner. See id. Thus, this inter partes review does not
`present any new ground or add any new matter to the HTC IPR.
`
`If joinder is granted, Samsung anticipates participating in the
`proceeding in a limited capacity absent termination of the HTC Petitioner as
`a party. Id. at 6–8. “Samsung explicitly agrees to take an ‘understudy’ role
`. . . so long as the current petitioner in [the HTC IPR] remains an active
`party.” Id. at 6. Samsung further represents that it “presents no new issues
`or grounds of unpatentability” and that “joinder with the HTC IPR does not
`unduly burden or negatively impact the trial schedule.” Id. at 5–6; see also
`Reply 2 (“no new issues would be added to the HTC IPR because Samsung
`has merely filed a copy-cat petition against the same patent claim[] on the
`same unpatentability ground[] using the same expert declaration as that in
`the HTC IPR”).
`
`Patent Owner presents several arguments opposing joinder. First,
`Patent Owner argues that because the Petition addresses claims 1–4, 6–8,
`11–16, and 19, “Samsung is attempting to add fourteen claims to the HTC
`IPR.” Opp. 5. However, as noted above, Petitioner has withdrawn all
`
`
`3 The Office Patent Trial Practice Guide, July 2019 Update, is available at
`https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`update3.pdf.
`
`7
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`challenges other than its challenge to claim 20. See Reply 4. As such, like
`the HTC Petitioner, if Samsung were to be joined to and take an active role
`in the HTC IPR, it too would be “limited to advancing arguments regarding
`claim 20.” See HTC Dec. 10.
`
`Next, Patent Owner avers that “Samsung was served with a complaint
`alleging infringement of the ’508 patent on September 18, 2017,” and notes
`that the HTC Petition sought to join the Apple IPR. Opp. 6. Patent Owner
`argues that the Motion “is an untimely attempt to circumvent the deadline to
`join Apple’s IPR, and thereby circumvent the one-year bar to Samsung’s
`[P]etition.” Id. We do not agree with Patent Owner’s contentions for the
`same reasons as stated above. Petitioner has withdrawn all challenges other
`than its challenge to claim 20, which is not challenged in the Apple IPR, and
`Petitioner avers that it “is not seeking to join the Apple IPR. Instead,
`Samsung is simply seeking to join the HTC IPR.” Reply 2. Furthermore,
`because Petitioner filed the Motion concurrently with the Petition, the one-
`year time limit does not apply to the Petition. See 35 U.S.C. § 315(b) (“The
`time limitation set forth in the preceding sentence shall not apply to a request
`for joinder under subsection (c).”).
`
`Next, Patent Owner argues that, “[u]nder [SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018),] the Board ‘must address every claim the petitioner
`has challenged’ in a Final Written Decision.” Opp. 7 (citing SAS, 138 S. Ct.
`at 1354). Thus, Patent Owner asserts, Samsung cannot be joined to the HTC
`IPR because, although “HTC’s challenges will either be addressed in the
`HTC IPR or the Apple IPR[, t]hat is not the case for Samsung.” Id.
`However, as noted above, Petitioner has withdrawn all challenges other than
`its challenge to claim 20. See Reply 4. The sole ground of unpatentability
`
`8
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`remaining in dispute is the challenge to claim 20, which will be addressed in
`the HTC IPR.
`
`Next Patent Owner characterizes the Petition as a serial attack on the
`’508 patent and argues that “[a]llowing Samsung to now join the Apple IPR
`by way of HTC’s joinder petition will prejudice Patent Owner and obviate
`filing deadlines that Congress and the Patent Office saw fit to impose.”
`Opp. 8. We are not persuaded by Patent Owner’s arguments because
`Samsung seeks to join the HTC IPR, not the Apple IPR. See Reply 2.
`
`Finally, Patent Owner argues that “the joinder motion should be
`denied because it is an attempt to cure the deficiencies of its already-
`rejected, first-filed petition.” Opp. 9. According to Patent Owner, “[t]he
`Board has denied joinder under these circumstances even when the patent
`owner does not oppose the motion.” Id.; see also id. at n.2 (citing five Board
`decisions). We disagree with Patent Owner’s contentions. The Petition
`largely copies the HTC Petition (see Ex. 1007, 74–75), and Petitioner seeks
`to be joined as a party to the HTC IPR (see Mot. 1); see also id. at 2 (“The
`Samsung Petition and the Petition in the HTC IPR are substantially
`identical; they contain the same ground[] (based on the same prior art
`combinations and supporting evidence) against the same claim[].”). Thus,
`the Petition does not seek to cure any deficiencies noted in Petitioner’s prior
`petition challenging the ’508 patent (see IPR2018-01756). Nor are we
`persuaded by Patent Owner’s citation to prior Board decisions (see Opp. 9,
`n.2), all of which sought to add issues to an existing proceeding and none of
`which involved a “me too” petition such as in the present case.
`
`9
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`For the foregoing reasons, we agree with Petitioner that joinder with
`
`the HTC IPR is appropriate under the circumstances. Accordingly, we grant
`Petitioner’s Motion for Joinder.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that an inter partes review is instituted in IPR2019-
`
`00889;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`01589 is granted, and Samsung Electronics America, Inc. is joined as a
`petitioner in IPR2018-01589;
`
`FURTHER ORDERED that IPR2019-00889 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2018-
`01589;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-01589 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2018-01589 (Paper 10) remains unchanged;
`
`FURTHER ORDERED that in IPR2018-01589, the HTC Petitioner
`and Samsung will file each paper, except for a motion that does not involve
`the other party, as a single, consolidated filing, subject to the page limits set
`forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
`consolidated filing;
`
`FURTHER ORDERED that for any consolidated filing, if Samsung
`wishes to file an additional paper to address points of disagreement with the
`HTC Petitioner, Samsung must request authorization from the Board to file a
`
`10
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`motion for additional pages, and no additional paper may be filed unless the
`Board grants such a motion;
`
`FURTHER ORDERED that the HTC Petitioner and Samsung shall
`collectively designate attorneys to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
`by the HTC Petitioner and Samsung, within the timeframes set forth in
`37 C.F.R. § 42.53(c) or agreed to by the parties;
`
`FURTHER ORDERED that the HTC Petitioner and Samsung shall
`collectively designate attorneys to present at the oral hearing, if requested
`and scheduled, in a consolidated argument;
`
`FURTHER ORDERED that the case caption in IPR2018-01589 shall
`be changed to reflect joinder of Samsung Electronics America, Inc. as a
`petitioner in accordance with the attached example; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01589.
`
`11
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`For PETITIONER:
`Naveen Modi
`Joseph E. Palys
`Chetan Bansal
`Paul Hastings LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.co
`
`
`For PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`12
`
`
`
`IPR2019-00889
`Patent 7,653,508 B1
`
`
`EXAMPLE CAPTION
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-015891
`Patent 7,653,508 B1
`___________
`
`
`
`
`
`1 Samsung Electronics America, Inc., which filed a petition in IPR2019-
`00889, has been joined as a petitioner in this proceeding.
`
`13
`
`
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