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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`v.
`UNILOC 2017 LLC,
`Patent Owner.
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`OPPOSITION TO MOTION FOR JOINDER
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`Samsung Electronics’ America, Inc. (“Samsung”) motion to join IPR2018-
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`01589 (the “HTC IPR”) must be denied because all but one of the claims Samsung
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`seeks to challenge are not part of the HTC IPR. Samsung is essentially seeking to
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`add fourteen claims to the HTC IPR. The Board’s institution decision clearly
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`prohibits HTC from challenging claims 1–4, 6–8, 11–16, and 19 within IPR2018-
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`01589 and mandates that HTC only challenge those claims in IPR2018-00387 (the
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`“Apple IPR”), which HTC joined. Unlike HTC, Samsung cannot challenge those
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`claims within the Apple IPR because Samsung’s deadline to join the Apple IPR has
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`long passed. Further, the Board cannot institute Samsung’s Petition only as to claim
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`20 because this is forbidden under SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354,
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`200 L. Ed. 2d 695 (2018). The Board should also exercise its discretion to deny the
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`motion for joinder under § 325(d) because it represents a serial attack on the ’508
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`patent by Samsung and an attempt by Samsung adopt the roadmap of other IPRs and
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`cure the defects in its own first IPR.
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`BACKGROUND
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`I.
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`A.
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`Samsung was served with a complaint alleging infringement of the
`patent on September 18, 2017.
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`Uniloc filed suit against Samsung for infringing U.S. Patent 7,653,508 (the
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`“’508 patent”) on September 15, 2017. See Uniloc USA, Inc. et al v. Samsung
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`Electronics America, Inc. et al, 2-17-cv-00650 (TXED). Summons was issued as
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`to Samsung on September 18, 2017. On October 4, 2017, Samsung appeared in the
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`2
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`matter, filing an unopposed motion for extension of time to answer. Id. at Dkt. 16.
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`Samsung’s motion for extension admits Samsung was served with the complaint on
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`September 18, 2017. Id.
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`B.
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`Samsung failed to timely join the Apple IPR.
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`Six IPRs have been filed against the ’508 patent. The first was filed by Apple
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`on December 22, 2017. See Apple Inc. v. Uniloc 2017 LLC, IPR2018-00387 (PTAB)
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`(Paper 2). On July 23, 2018, the Board instituted trial in the Apple IPR on claims
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`1–4, 6–8, 11–16, and 19. See IPR2018-00387 (Paper 6). The Apple IPR has been
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`fully briefed1 and a trial hearing was held on April 2, 2019. See IPR2018-00387
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`(Paper 20). The second IPR against the ’580 patent was also filed by Apple.
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`Institution was denied on October 18, 2018. See Apple Inc. v. Uniloc 2017 LLC,
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`IPR2018-01026 (PTAB) (Paper 9 at 7).
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`The third and fourth IPRs against the ’508 patent were filed on August 23,
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`2018 by, respectively, HTC Corporation and HTC America, Inc. (“HTC”)
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`(IPR2018-01589) and LG Electronics, Inc. (IPR2018-01577). On the same day,
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`HTC and LG both moved to join the Apple IPR. See IPR2018-01589 (Paper 3);
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`IPR2018-01577 (Paper 3).
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`1 Patent Owner’s preliminary response was filed May 7, 2018. Paper 7. Patent
`Owner’s response was filed on October 11, 2018. Paper 11. Petitioner’s reply was
`filed January 2, 2019. Paper 12. Patent owner filed a sur-reply on February 4, 2019.
`Paper 14.
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`3
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`Samsung opted not to join the Apple IPR. Instead, Samsung filed its own IPR
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`petition against the ’508 patent on September 18, 2018, exactly one year after it was
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`served with a complaint alleging infringement of the patent. See Samsung
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`Electronics America, Inc. v. Uniloc 2017 LLC, IPR2018-01756 (PTAB) (Paper 1).
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`This was the fifth IPR filed against the ’508 patent. The Board denied institution on
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`March 11, 2019, finding the IPR would not be an efficient use of the Board’s
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`resources. See IPR2018-01756 (Paper 7 at 30).
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`C. The HTC IPR institution decision expressly forbids HTC from
`advancing any arguments related to any claims other than claim
`20.
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`The decision instituting the HTC IPR, which Samsung now seeks to join,
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`expressly forbids HTC from advancing any arguments related to all but one of the
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`claims Samsung challenges in its joinder petition. In its petition, HTC sought to
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`challenge the same claims challenged in the Apple IPR plus claim 20. The Board
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`denied HTC’s attempt to add claim 20 to the Apple IPR “due to the advanced state
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`of the Apple IPR” and the impact joinder of claim 20 would have on the schedule.
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`See IPR2018-01589 (Paper 9 at 9). The Board ordered that HTC challenge only
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`claim 20 in the HTC IPR and that it advance arguments regarding all other claims
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`only in the Apple IPR:
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`Given that Petitioner is being joined as a party to 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
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`4
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`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.
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`Id. at 10 (emphasis added).
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`D.
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`Samsung’s petition seeks to advance arguments concerning
`fourteen claims that the HTC IPR institution decision forbids HTC
`from advancing.
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`Samsung filed this IPR on March 27, 2019, after completion of all briefing
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`in the Apple IPR and only days before the final hearing was held on April 2, 2019.
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`Far from being a simple “me to” petition as Samsung claims, its petition challenges
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`fourteen claims (claims 1–4, 6–8, 11–16, and 19) that the institution decision
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`expressly forbids HTC from challenging within the HTC IPR.
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`II. ARGUMENT
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`A.
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`Samsung’s motion is not a “me too” motion.
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`Samsung’s motion is not a “me too” motion as Samsung claims. Samsung
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`is attempting to challenge, within IPR2018-01589, claims 1–4, 6–8, 11–16, and 19
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`– something the Board has prohibited HTC from doing. In short, Samsung is
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`attempting to add fourteen claims to the HTC IPR. Samsung cannot step into
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`HTC’s shoes and become a petitioner in the Apple IPR because it failed to timely
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`move to join the Apple IPR.
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`The Federal Circuit has expressed disapproval of the practice of using joinder
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`5
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`to add time-barred challenges to an IPR. Nidec Motor Corp. v. Zhongshan Broad
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`Ocean Motor Co. Ltd. Matal, 868 F.3d 1013, 1020 (Fed. Cir. 2017), cert. denied
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`sub nom. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Ltd., 138 S.
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`Ct. 1695, 200 L. Ed. 2d 951 (2018) (“We think it unlikely that Congress intended
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`that petitioners could employ the joinder provision to circumvent the time bar by
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`adding time-barred issues to an otherwise timely proceeding, whether the petitioner
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`seeking to add new issues is the same party that brought the timely proceeding, as
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`in this case, or the petitioner is a new party.”).
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`B.
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`Samsung’s joinder motion is an untimely attempt to circumvent
`the deadline to join Apple’s IPR.
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`Samsung’s joinder motion should be denied because it is an untimely attempt
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`to circumvent the deadline to join Apple’s IPR, and thereby circumvent the one-
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`year bar to Samsung’s petition. Under 35 U.S.C. § 315(b), a party cannot file an
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`IPR petition more than one year after “the petitioner is served with a complaint
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`alleging infringement of the patent.”
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`Samsung was served with a complaint alleging infringement of the ’508
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`patent on September 18, 2017, more than a year ago. Samsung attempts to avoid
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`the one-year bar by seeking to join HTC’s petition, but the HTC petition is itself
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`merely a joinder petition to the Apple IPR. Samsung’s deadline to join the Apple
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`IPR was one month after the institution of the Apple IPR. See 37 C.F.R. §
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`42.122(b). Samsung failed to meet that deadline.
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`6
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`Samsung seeks to “join” HTC in challenging claims 1-4, 6-8, 11-16, and 19-
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`20, but the HTC IPR institution decision allows HTC to challenge only claim 20 in
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`the HTC IPR proceeding. IPR2018-01589 (Paper 9 at 9) (“Accordingly, Petitioner
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`shall not advance any arguments regarding these claims in this proceeding.”). The
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`only proceeding in which HTC (and thus Samsung) can challenge claims 1–4, 6–8,
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`11–16, and 19 is the Apple IPR, but Samsung is time-barred from joining the Apple
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`IPR and is therefore time barred from challenging claims 1–4, 6–8, 11–16, and 19.
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`C. Under SAS, the Board cannot institute Samsung’s petition only as
`to claim 20.
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`Because Samsung cannot join the Apple IPR and challenge claims 1–4, 6–8,
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`11–16, and 19, institution must also be denied as to claim 20. SAS Inst., Inc. v.
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`Iancu, 138 S. Ct. 1348, 1354, 200 L. Ed. 2d 695 (2018). Under SAS, the Board
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`“must address every claim the petitioner has challenged” in a Final Written
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`Decision. Id. There will be a Final Written Decision as to all claims challenged
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`by HTC because HTC’s challenges will either be addressed in the HTC IPR or the
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`Apple IPR. That is not the case for Samsung. Under the clear terms of the
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`institution decision, there can be no Final Written Decision on claims 1–4, 6–8, 11–
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`16, and 19 in IPR2018-01589. And Samsung cannot be joined to the Apple IPR
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`because the time to join the Apple IPR has long passed.
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`D.
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`Samsung’s petition should be denied as a serial attack on the ’508
`patent.
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`Allowing Samsung to now join the Apple IPR by way of HTC’s joinder
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`petition will prejudice Patent Owner and obviate filing deadlines that Congress and
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`the Patent Office saw fit to impose. The prejudice of allowing serial attacks against
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`the same patent are self-evident. Indeed, Director Andrei Iancu recently sat on an
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`IPR panel that expressly made this very point. That panel denied three requests from
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`Valve Corp. for inter partes review of the same patent. Valve Corporation v.
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`Electronic Scripting Products, Inc. IPR2019-00084 (Paper 13); Valve Corporation
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`v. Electronic Scripting Products, Inc. IPR2019-00062 (Paper 11); Valve
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`Corporation v. Electronic Scripting Products, Inc. IPR2019-00063 (Paper 13).
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`The challenges, while they were Valve’s first with respect to the patent, came
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`on the heels of an unsuccessful bid for review brought by HTC. The panel
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`(including Director Iancu) made clear that challenges need not come from the same
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`party in order to be labeled “serial and repetitive attacks.” IPR2019-00084 (Paper
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`13) at 15. Senior members of the US Senate Judiciary Subcommittee on Intellectual
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`Property singled out the ruling in a recent letter urging Direct Iancu to crack down
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`on
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`serial
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`patent
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`challenges
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`on
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`all
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`fronts.
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`See,
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`e.g.,
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`http://www.ippromagazine.com/ippromagazinenews/article.php?article_id=6650.
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`E.
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`Joinder should be denied where the second-filed petition is an
`attempt to cure the deficiencies of the first-filed petition.
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`Even if Samsung’s petition is timely, and it is not, the joinder motion should
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`be denied because it is an attempt to cure the deficiencies of its already-rejected,
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`first-filed petition. The Board has repeatedly denied joinder when a petitioner
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`attempts to use a prior institution decision to remedy deficiencies in the first-filed
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`petition. This is particularly the case where, as here, the petitioner does not offer
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`any explanation why the arguments were not offered during the first-filed petition
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`and where the second--filed petition would be time-barred under 35 U.S.C. §
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`315(b).2
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`The Board has denied joinder under these circumstances even when the
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`patent owner does not oppose the motion. Where “the § 315(b) bar would apply
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`absent joinder, [the Board] hesitate[s] to allow a petitioner a second bite one month
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`2 See, e.g., LG Electronics, IPR2015-01620, slip op. at 10-11 (“Petitioner now
`presents arguments that the Petitioner could have made in the First Petition, had it
`chosen to do so. The Petition is aimed at matters identified in the Decision to Institute
`in [the First Petition] as not adequately addressed to justify inter partes review.”);
`Samsung Electronics Co., Ltd., et al. v. Affinity Labs of Texas, LLC, IPR2015-00820,
`slip op. at 4 (PTAB May 15, 2015) (Paper 12) (petitioner provided no reason why
`the reference “could not have been identified and relied on in earlier, timely-filed
`petitions” and sought to use a prior decision “as guide to remedy deficiencies in the
`earlier filed petition”); Samsung Electronics Co., Ltd., et al. v. Affinity Labs of Texas,
`LLC, IPR2015-00821, slip op. at 4-5 (PTAB May 15, 2015) (Paper 10); Micro
`Motion, Inc. v. Invensys Systems, Inc., IPR2014-01409, slip op. at 14 (PTAB Feb.
`15, 2015) (Paper 14); Standard Innovation Corp. v. Lelo, Inc. , IPR2014- 00907, slip
`op. at 3-4, 10-11 (PTAB Dec. 1, 2014) (Paper 10).
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`after institution in a first case, at the expense of scheduling constraints for everyone,
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`as well as additional costs (and potential prejudice) to Patent Owner, absent a good
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`reason for doing so.” Medtronic, Inc. et al. v. Endotach LLC, IPR2014-00695, slip
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`op. at 4 (PTAB Sept. 25, 2014) (Paper 18).
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`Additionally, the Board has exercised its discretion under § 325(d), denying
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`institution of an inter partes review and dismissing the motion for joinder as moot
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`where “the obviousness grounds asserted in the present Petition are expressly
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`intended to ‘squarely address[] the alleged deficiencies identified by the Board’ …
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`the four obviousness grounds are ‘second bites at the apple,’ which use [the
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`Board’s] prior decision as a road map to remedy [petitioner’s] prior, deficient
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`challenge.” Butamax Adv. Biofuels LLC v. Gevo, Inc., IPR2014-00581, slip op. at
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`12-13 (PTAB Oct. 14, 2014) (Paper 8).
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`III. CONCLUSION
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` For the foregoing reasons, Samsung motion to join must be denied.
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`Date: April 26, 2019
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`/s/ Brett A. Mangrum
`
`Brett A. Mangrum
`brett@etheridgelaw.co
`m Reg. No. 64,783
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`Counsel for Patent Owner
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`Case IPR2019-00889
`U.S. Patent 7,653,508
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing was served electronically on
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`June 22, 2018 on the following counsel of record for Petitioner at the below-listed
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`email address:
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`Date: April 26, 2019
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`/Brett A. Mangrum
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`Brett A. Mangrum
`brett@etheridgelaw.co
`m Reg. No. 64,783
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`Counsel for Patent Owner
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