Paper 10
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 16, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNIOLOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01116
`Patent 7,016,676 B2
`____________
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 16, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNIOLOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01116
`Patent 7,016,676 B2
`____________
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2019-01116
`Patent 7,016,676 B2
`
`
`Introduction
`
`On January 3, 2020, Ericsson Inc. (“Ericsson”) filed a petition for
`
`inter partes review of US Patent No. 7,016,676 B2 (“the ’676 patent”) and a
`
`Motion for Joinder (“Joinder Motion”) with the instant case, IPR2019-
`
`01116, which also involves the ’676 patent. IPR2020-00376, Papers 2, 3.
`
`The Board conducted a conference call with the parties in IPR2019-
`
`01116 on January 15, 2020. The initially scheduled participants were Judges
`
`Lee, Turner, and Wormmeester, counsel for Petitioner and counsel for Patent
`
`Owner. Counsel for Ericsson, however, also was present. Counsel for
`
`Patent Owner, Mr. Brett Mangrum, represented that he also represents the
`
`patent owner in IPR2020-00376, the same patent owner as in IPR2019-
`
`01116. Petitioner (hereinafter “Microsoft”) and Patent Owner did not object
`
`to participation in the conference call by the parties in IPR2020-00376.
`
`Thus, the conference call expanded to include the participation of counsel
`
`for Ericsson, and with Mr. Mangrum also as counsel for the patent owner in
`
`IPR2020-00376.
`
`In the Joinder Motion, Ericsson states that “Petitioner in the Microsoft
`
`IPR [IPR2019-01116] does not oppose Ericsson’s instant motion.”
`
`IPR2020-00376, Paper 3, 1. Ericsson also represents that “so long as
`
`Microsoft remains an active party in the joined proceeding,” “[a]ll filings by
`
`Ericsson in the joined proceeding shall be consolidated with the filings of
`
`Microsoft unless a filing solely concerns issues that do not involve
`
`Microsoft.” Id. at 8. We are not certain what has been proposed by Ericsson
`
`or what has been agreed to by Petitioner, and sought clarification through the
`
`conference call.
`
`2
`
`
`
`IPR2019-01116
`Patent 7,016,676 B2
`
`
`Discussion
`
`It would seem that Ericsson would have few occasions, if any, but for
`
`rare exceptions involving issues directed solely to Ericsson, to make any
`
`substantive filing in the joined proceeding, if it merely is taking an
`
`“understudy” role, as Ericsson asserts in the Joinder Motion. We are
`
`uncertain what is meant by “[a]ll filings by Ericsson in the joined proceeding
`
`shall be consolidated with the filings of Microsoft.”
`
`For instance, that could mean Ericsson will prepare its own
`
`substantive filings and have that material included within a “joint paper” that
`
`also includes separately the substantive arguments and assertions of
`
`Petitioner. That kind of “consolidation” substantially increases the
`
`complexity of the proceeding. Alternatively, the alleged “consolidation”
`
`could mean a filing with all positions therein binding on both Microsoft and
`
`Ericsson, and agreed to by both Microsoft and Ericsson prior to filing.
`
`We explained on the conference call that, in our view, an “understudy
`
`role,” if taken by Ericsson, means Ericsson will not be making any
`
`substantive filings and will be bound by whatever substantive filings
`
`Microsoft makes, so long as Microsoft remains a party in the proceeding.
`
`The same is true for oral hearing presentations. Also, Ericsson will not seek
`
`to take cross-examination testimony of any witness or have a role in
`
`3
`
`
`
`IPR2019-01116
`Patent 7,016,676 B2
`
`defending the cross-examination of any witness,1 so long as Microsoft
`
`remains a party in the proceeding. Likewise with other discovery matters. If
`
`and when Microsoft’s participation in the proceeding terminates, Ericsson
`
`can make its own filings as Petitioner. In short, in its “understudy role,”
`
`Ericsson will remain completely inactive, but for issues that are solely
`
`directed and pertinent to Ericsson. The bullet points on pages 8 and 9 of the
`
`Joinder Motion are not consistent with our understanding of an “understudy”
`
`role.
`
`Counsel for Ericsson explained during the conference call that the Board’s
`
`understanding of an “understudy role” is what Ericsson had intended to
`
`express in the Joinder Motion. Counsel for Microsoft likewise indicated that
`
`what Microsoft had agreed to as an understudy role for Ericsson is what the
`
`Board understands as an understudy role. Counsel for Ericsson requested
`
`permission to file, in IPR2020-00376, a Supplemental Joinder Motion to
`
`make all necessary clarification. We suggested that Ericsson work together
`
`with Patent Owner to prepare a Supplemental Joinder Motion to clarify the
`
`“understudy role” requested, to minimize, if possible, objections from Patent
`
`Owner. Per our order below, we will authorize the filing of a Supplemental
`
`Joinder Motion in IPR2020-00376 after Patent Owner has filed its
`
`
`
`1 A possible exception exists only with respect to defending the
`potential cross-examination by Patent Owner of Jennifer Stephens, a
`librarian with the law firm of Haynes and Boone, LLP, regarding the
`dates of publication of certain references. Her declaration is filed in
`IPR2020-00376 as Exhibit 1011 and she does not provide testimony
`in the IPR2019-01116 proceeding.
`
`4
`
`
`
`IPR2019-01116
`Patent 7,016,676 B2
`
`Mandatory Notices in response to the Notice of Filing Date Accorded to the
`
`petition in that proceeding.
`
`ORDER
`
`
`
`
`
`It is
`
`ORDERED that an order authorizing the filing of a Supplemental
`
`Joinder Motion by Ericsson will be forthcoming in IPR2020-00376; and
`
`
`
`FURTHER ORDERED that no Supplemental Joinder Motion shall be
`
`filed by Ericsson until a specific order authorizing such has been entered in
`
`IPR2020-00376.
`
`
`
`
`
`5
`
`
`
`IPR2019-01116
`Patent 7,016,676 B2
`
`FOR PETITIONER:
`
`Derrick W. Toddy
`Andrew M. Mason
`Todd M. Siegel
`KLARQUIST SPARKMAN, LLP
`derrick.toddy@klarquist.com
`andrew.mason@klarquist.com
`todd.siegel@klarquist.com
`
`
`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
`
`
`6
`
`
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