Paper 13
`
`Trials@uspto.gov
`571-272-7822 Entered: May 22, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00376
`Patent 7,016,676 B2
`____________
`
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`I. INTRODUCTION
`On January 3, 2020, Ericsson Inc. (“Petitioner”) filed a Petition for inter
`partes review of claims 1 and 2 of U.S. Patent No. 7,016,676 B2 (Ex. 1001, “the
`
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`IPR2020-00376
`Patent 7,016,676 B2
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`’676 patent”).1 Paper 2 (“Pet.”). Petitioner also filed a Motion for Joinder with
`Microsoft Corporation v. Uniloc 2017 LLC, Case IPR2019-01116 (“the 116 IPR”).
`Paper 4 (“Mot.”). Petitioner further filed a Supplemental Motion for Joinder,
`authorized by the Board. Paper 9 (“Supp. Mot”).
`Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 15 (“Prelim. Resp.”). Patent Owner also filed an Opposition to the
`Motion for Joinder and Supplemental Motion for Joinder. Paper 11 (“Opp.”).
`Petitioner filed a Reply to Patent Owner’s Opposition. Paper 13 (“Reply”).
`We have authority under 35 U.S.C. § 314(a), which provides that an inter
`partes review may not be instituted “unless . . . there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” For reasons discussed below, we institute an inter partes review of
`claims 1 and 2 and grant Petitioner’s Motion for Joinder, as supplemented by the
`Supplemental Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`The parties indicate that the ’676 patent is the subject of multiple court
`proceedings and the 116 IPR. Pet. ix, x; Paper 6, 2. The parties further indicate
`that the ’676 patent also is the involved patent in IPR2019-01125 (filed by
`Microsoft Corporation), IPR2019-01349 and IPR2019-01350 (filed by Marvell
`Semiconductor, Inc.), IPR2019-01541 (filed by Google, LLC), and IPR2019-
`01550 (filed by Ericsson Inc.). Id.
`
`
`1 This is the second petition for inter partes review filed by Petitioner against
`claims of the ’676 patent. Ericsson is also the Petitioner in IPR2020-01550 which
`seeks review of claims 1, 2, and 8 of the ’676 patent. On March 17, 2020, we
`declined institution of review in IPR2019-01550. IPR2019-01550, Paper 8.
`2
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`IPR2020-00376
`Patent 7,016,676 B2
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`In the 116 IPR, we instituted an inter partes review of claims 1 and 2 of the
`’676 patent on the following grounds:
`
`Claims Challenged
`
`1 and 2
`
`1 and 2
`
`1 and 2
`
`1 and 2
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`References
`HomeRF2
`HomeRF and HomeRF
`Tutorial3
`HomeRF and HomeRF
`Liaison Report4
`Lansford5
`
`Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01116, Paper 8 at 10, 54 (PTAB
`Dec. 4, 2019) (“116 Decision” or “116 Dec.”).
`
`III. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of unpatentability,
`directed to the same claims, as the ones on which we instituted review in the 116
`IPR. Compare Pet. 2, with 116 Dec. 10, 54. Petitioner states that it “seeks
`institution on the same claims, prior art, and grounds for unpatentability that were
`instituted in the Microsoft IPR.” Mot. 1. Petitioner further states that its Petition
`“is based on the same grounds and same technical expert declaration testimony
`
`
`2 Kevin J. Negus et al., HomeRF: Wireless Networking for the Connected Home, 7
`IEEE PERSONAL COMMUNICATIONS 20–27 (2000).
`3 Jim Lansford et al., HomeRF: Bringing Wireless Connectivity Home, IEEE
`802.11, 1–27 (1999), http://www.ieee802.org/11/Documents/
`DocumentArchives/1999_docs/90548S-WPAN-HomeRF-Tutorial-Office-97.pdf.
`4 Tim Blaney, HomeRFTM Working Group 3rd Liaison Report, IEEE 802.11, 1–13
`(1998), http://www.ieee802.org/11/Documents/
`DocumentArchives/1998_docs/82997S-HomeRF-3rd-Liaison.pdf.
`5 US 6,937,158 B2, issued Aug. 30, 2005 (Ex. 1012, “Lansford”).
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`relied upon in the Microsoft Petition,” and “is substantively identical to the
`Microsoft Petition.” Id. at 4. With respect to differences, Petitioner states:
`The only minor changes include (1) changes necessary for proper
`identification of the party filing the petition and corresponding
`documents; (2) a substantively identical declaration (signed by a
`librarian at Haynes and Boone, LLP, rather than a paralegal from the
`law firm of Microsoft’s counsel in IPR2019-01116) regarding details
`related to the public accessibility of certain documents; and (3)
`correction of minor typographical errors.
`
`Id.
`
`We have considered Patent Owner’s Preliminary Response. Certain of
`Patent Owner’s arguments and evidence supporting its position that claims 1 and 2
`would not have been obvious were previously addressed in the 116 Decision and
`need not be addressed here again. However, certain other arguments are new and
`those new arguments closely track arguments made in the Patent Owner Response
`filed in the 116 IPR. Because we need to conclude only that Petitioner has shown
`a reasonable likelihood that it would prevail in establishing that at least one claim
`is unpatentable, we only reach the alleged unpatentability of claim 1 as
`unpatentable over Lansford. In that regard, what we said in the Institution
`Decision of the 116 IPR equally applies here and need not be repeated. We
`address only Patent Owner’s new arguments which were not in the Preliminary
`Response of the 116 IPR. For reasons discussed below, those arguments are
`unpersuasive.
`
`
`
`
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`All of the new arguments with regard to alleged obviousness over Lansford
`pertain to our application of the Board’s precedential decision in Ex parte
`Schulhauser, Appeal No. 2013–007847 (PTAB April 28, 2016) (Precedential).
`Prelim. Resp. 49–55. Claim 1 reads as follows:
`1. An interface-control protocol method for a radio system
`which has at least one common frequency band that is provided for
`alternate use by a first and a second radio interface standard, the radio
`system comprising:
`stations which operate in accordance with a first radio interface
`standard and/or a second radio interface standard, and
`a control station which controls the alternate use of the
`frequency band,
`wherein the control station controls the access to the common
`frequency band for stations working in accordance with the
`first radio interface standard and—renders the frequency
`band available for access by the stations working in
`accordance with the second radio interface standard if
`stations working in accordance with the first radio interface
`standard do not request access to the frequency band.
`As we stated in the Institution Decision of the 116 IPR, we read the wherein clause
`of claim 1 as setting forth two steps, both carried out by the control station:
`(1) “controls access to the common frequency band for stations working in
`accordance with the first radio interface standard,” and (2) “renders the frequency
`band available for access by the stations working in accordance with the second
`radio interface standard if stations working in accordance with the first radio
`interface standard do not request access to the frequency band.” 116 IPR, Paper 8,
`16.
`
`In the Institution Decision of the 116 IPR, we explained:
`The insufficient accounting by Petitioner of step (2) of claim 1,
`however, is harmless, because step (2) is a conditional step. With
`regard to application of conditional steps, we are bound by the
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`IPR2020-00376
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`Board’s precedential decision in Ex parte Schulhauser, Appeal No.
`2013–007847 (PTAB April 28, 2016) (Precedential). Under
`Schulhauser, for a conditional step, if the condition is not met, then
`the associated action need not be performed. Schulhauser, at 6–7. In
`the case of Lansford, because as presented by Petitioner Lansford
`makes no reference to the circumstance in which there is no request
`from Device C, the condition is not met that stations working in
`accordance with the first radio interface standard do not request
`access to the frequency band. Consequently, the action corresponding
`to that action need not be performed. Thus, the lack of satisfaction
`with respect to step (2) is inconsequential, based on binding authority
`from Schulhauser.
`Id. at 52 (footnote omitted).
`
`First, Patent Owner argues that because Petitioner did not identify step (2) of
`claim 1 as a conditional step under Schulhauser, our doing so would render any
`institution decision beyond the scope of 35 U.S.C. § 314(b), as we would not be
`instituting “pursuant to a petition.” Prelim. Resp. 52. We disagree. It is not
`beyond the scope of a petition for the Board to perform claim construction and
`apply applicable law, even if Petitioner does not. We have not changed the alleged
`ground of unpatentability, which is obviousness over Lansford, and we have not
`applied any disclosure of Lansford that was not relied on by Petitioner.
`
`Second, Patent Owner argues that Ex parte Schulhauser applied the broadest
`reasonable interpretation standard to reading the claims at issue, whereas here we
`use a claim construction standard based on the ordinary and customary meaning of
`such claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent. Id. at 53–54. But Schulhauser, on its face, does
`not limit its application to circumstances where the broadest reasonable
`interpretation rule applies, and it is a precedential decision of the Board to which
`we are bound. Further, the word “if” is conditional under either standard. Patent
`Owner does not contend that the Specification of the ’676 patent specially defines
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`IPR2020-00376
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`the term “if” such that it has a special or unique meaning that does not denote a
`condition. At the stage of institution, we are not inclined to narrow the apparent
`reach of Schulhauser. The issue will be considered again at the time of rendering a
`final written decision.
`Patent Owner further argues that while Schulhauser involves two
`conditions that are mutually exclusive to each other, that is not so in the
`context of claim 1. Id. at 54. We do not see significance in that distinction.
`The conditions are nonetheless conditions whether or not they are mutually
`exclusive to each other. As discussed above, it is the conditional or
`exclusive nature of “if” discussed in Schulhauser that we address herein, as
`opposed to mutual exclusivity. Patent Owner further argues that “it is clear
`that claim 1 requires rendering the frequency band available for access by
`the stations working in accordance with the second radio interface standard
`in response to the condition being fulfilled that stations working in
`accordance with the first radio interface standard do not request access to the
`frequency band.” Id. In making this argument, Patent Owner has rewritten
`the claim to be without the conditional term “if.” That is inappropriate. We
`read the claims as they are written, and are without power to rewrite them.
`See SRAM Corp. v. AD-II Eng’g Inc., 465 F.3d 1351, 1359 (Fed. Cir. 2006);
`K-2 Corp. v. Solomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999).
`Finally, Patent Owner argues that during examination, application
`claim 1 was rejected over prior art and application claim 2 was not, and the
`limitation at issue here was taken from claim 2 and inserted into claim 1 to
`secure allowance of claim 1. Prelim. Resp. 55 (citing Ex. 1002, 14). On that
`basis, Patent Owner asserts:
`Thus, considering claim 1 in light of the prosecution history, one of
`ordinary skill would understand that rendering the frequency band
`
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`IPR2020-00376
`Patent 7,016,676 B2
`
`available for access by the stations working in accordance with the
`second radio interface standard in response to the condition being
`fulfilled that stations working in accordance with the first radio
`interface standard do not request access to the frequency band.
`Id. The argument is not understood, as the text quoted above is an incomplete
`sentence and is missing the alleged understanding of one with ordinary skill in the
`art. Moreover, Patent Owner does not explain whether the prior art applied during
`examination actually discloses occurrence of the claimed condition, in which case
`the limitation has to be met even under Schulhauser. In any event, the
`circumstance simply is that the Examiner allowed application claim 2 (Ex. 1002,
`28) which includes the limitation at issue and depends from claim 1, and the
`Applicant rewrote application claim 2 in independent form as claim 1. That does
`not show disavowal of anything by the Applicant. Further, as noted above, we are
`powerless to rewrite the claim to eliminate the conditional term “if,” and with
`regard to a conditional step, we are bound to follow Schulhauser.
`We conclude that Petitioner has demonstrated a reasonable likelihood of
`success in prevailing on its assertion that claim 1 would have been obvious over
`Lansford. Accordingly, we institute an inter partes review of claims 1 and 2 on all
`of the alleged grounds of unpatentability. See Trial Practice Guide Update 31 (July
`2019), https://www.uspto.gov/TrialPracticeGuide3 (“In instituting a trial, the
`Board will either (1) institute as to all claims challenged in the petition and on all
`grounds in the petition, or (2) institute on no claims and deny institution.”). We
`decline to discretionarily deny this Petition under 35 U.S.C. § 314(a), as Patent
`Owner urges, for reasons discussed in Section V. below.
`
`IV. GRANT OF MOTION FOR JOINDER
`The Petition in this proceeding was accorded a filing date of January 3,
`2020. See Paper 5. The 116 IPR was instituted on December 4, 2019. Petitioner
`
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`IPR2020-00376
`Patent 7,016,676 B2
`
`filed a Motion for Joinder on January 3, 2020. Paper 4. Thus, Petitioner’s Motion
`for Joinder is timely because joinder was requested no later than one month after
`the December 4, 2019 institution date of the 116 IPR. 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), which reads as follows:
`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) explain what impact (if any) joinder would have on the trial schedule for the
`existing review; and (3) address specifically how briefing and discovery may be
`simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013).
`The Petition in this case asserts the same unpatentability grounds, directed to
`the same claims, on which we instituted review in the 116 IPR. See Mot. 1.
`Petitioner further explains that it relies on the same technical expert declaration as
`that relied on by Microsoft Corporation in the 116 IPR. Id. at 4. Petitioner also
`represents that the Petition “is substantively identical to the Microsoft Petition.”
`Id. Thus, this inter partes review does not present any ground or matter not
`already at issue in the 116 IPR.
`Petitioner represents that if joinder is granted, it consents to the existing trial
`schedule in the 116 IPR. Supp. Mot. 8. Petitioner represents that if joinder is
`granted, it agrees to take an “understudy role,” so long as Microsoft Corporation
`remains an active party in the joined proceeding, as follows:
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`1. Ericsson will not be making any substantive filings, and Ericsson
`agrees that Microsoft alone will be responsible for all substantive
`petitioner filings in the joined proceeding;
`2. Ericsson agrees to be bound by all filings by Microsoft in the
`joined proceeding, except for filings regarding termination and
`settlement;
`3. Ericsson must obtain prior Board authorization to file any paper or
`to take any action on its own in the joined proceeding;
`4. Ericsson shall not be permitted to raise any new grounds not
`already instituted by the Board in the Microsoft IPR, or introduce
`any argument or discovery not already introduced by Microsoft;
`5. Ericsson shall be bound by any agreement between Patent Owner
`and Microsoft concerning discovery and/or depositions;
`6. Ericsson will not cross examine or defend any witness at
`deposition, with one possible exception being the scenario in
`which Patent Owner sought to depose Ericsson’s librarian
`representative of Ex. 1011;
`7. Microsoft will be responsible for any oral hearing presentation,
`including the preparation of demonstrative exhibits.
`Only if Microsoft ceases participation in the proceeding:
`8. Ericsson would assume a primary role, meaning it would take over
`the role previously filled by Microsoft.
`Id. at 9–10 (internal citation omitted). Petitioner represents that under these
`conditions, Microsoft Corporation, the Petitioner in the 116 IPR, does not oppose
`joinder. Id. at 10.
`Patent Owner asserts that the above-noted conditions do not put Petitioner in
`a true “understudy role” in the joined proceeding, because Petitioner does not
`represent that it will “remain completely inactive, but for issues that are solely
`directed and pertinent to Ericsson” as suggested by the Board in a telephone
`conference call in which the requested joinder was discussed. Paper 11, 2. We
`disagree. The suggestion was not mandatory and, in any event, the above-noted
`
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`IPR2020-00376
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`
`conditions already fully satisfy what we referred to as “completely inactive, but for
`issues that are solely directed and pertinent to Ericsson.”
`Patent Owner asserts that Petitioner refused Patent Owner’s suggestion that
`Petitioner agrees that Petitioner shall not participate in the drafting of any filing
`while the original petitioner (Microsoft Corporation) remains active in IPR2019-
`01116. Id. at 3. We do not see absence of that stipulation as material. Our
`reference to Petitioner being “completely inactive” is in the context of engaging in
`discovery and making representations to the Board. So long as Petitioner does not
`make its own filings, and Microsoft Corporation is responsible for its own filings,
`whether Microsoft Corporation invites Petitioner to participate in drafting
`Microsoft Corporation’s filings does not change Petitioner’s “understudy role.”
`Also, such a stipulation would likely become the source of numerous potential
`disputes, as every communication between counsel of Microsoft Corporation and
`counsel for Petitioner may be suspected as a violation. Such an agreement by
`Petitioner is unnecessary.
`Patent Owner argues that Petitioner refused to accept Patent Owner’s
`proposed compromise language stipulating that Ericsson will not file its own
`appeal briefs, if Microsoft Corporation remains active through appeal and files
`appeal briefing. Paper 11, 3–4. Petitioner’s ability to file its own appeal brief
`before our reviewing court, if and when a final written decision is rendered in the
`joined proceeding and appealed, does not affect Petitioner’s “understudy role” in
`this proceeding before the Board. If Patent Owner believes Petitioner should not
`be able to file its own appeal brief before the Court of Appeals for the Federal
`Circuit, that is a matter it may raise at the Federal Circuit when a final written
`decision in the joined proceeding has been appealed. We see no merit in Patent
`Owner’s contention.
`
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`Patent Owner further expresses a concern that “it is unclear whether
`Microsoft agrees to the risk of estoppel that would potentially attach under
`Ericsson’s apparent interpretation of the effect of joinder under the overbroad
`definition for ‘understudy’ it proposes.” Id. at 5. Patent Owner refers to
`Petitioner’s indication that should joinder be granted, Petitioner will be listed as a
`real-party-in-interest in the 116 IPR. Id. (citing Supp. Mot. 2). According to
`Patent Owner, Petitioner’s view would risk tainting Microsoft Corporation with the
`effects of estoppel, should estoppel apply to Petitioner, and vice versa. Id.
`Whether estoppel attaches is not a question before us, and Petitioner has
`represented that Microsoft Corporation does not oppose the requested joinder.
`Paper 4, 1; Paper 9, 2. It is also speculative whether Microsoft Corporation will
`revise the identification of real-party-in-interest in the 116 IPR. In this
`circumstance, Patent Owner’s concern does not meaningfully affect the decision on
`whether to grant the requested joinder.
`Patent Owner argues:
`
`Patent Owner objects to Ericsson seeking to skirt the page limit
`requirements for motions by filing both a motion for joinder and a
`notice purporting to address Ericsson’s filing of two petitions
`addressing overlapping challenges and art. See Papers 3 and 9.
`Collectively, Ericsson’s Notice (Paper 3, consisting of 5 pages) and its
`Supplemental Motion for Joinder (Paper 9, consisting of 13 pages)
`exceed the allowed page count. See 27 CFR § 42.24.
`Paper 11, 8. Patent Owner does not identify the source of any requirement that
`Petitioner’s Notice Regarding Filing Two Petitions not be submitted as a separate
`paper apart from the Joinder Motion. We do not consider Petitioner to be in
`violation of any rule.
`We agree with Petitioner that joinder with the 116 IPR is appropriate under
`the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.
`
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`V. Discretionary Denial under 35 U.S.C. § 314(a)
`Petitioner asserts: “Given that [this Petition] is a joinder petition, Ericsson’s
`two petitions are not the sort of parallel petitions contemplated by the Trial
`Practice Guide as placing ‘a substantial and unnecessary burden on the Board and
`the patent owner.’ Consolidated Trial Practice Guide at 59.” Paper 3, 1. We
`agree, in light of the conditions of joinder as agreed to by Petitioner and
`enumerated above, which put Petitioner in an “understudy role” in the joined
`proceeding. Similarly, in this circumstance where the one follow-on petition is a
`joinder petition, it is not necessary to analyze the factors presented in General
`Plastic Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6,
`2017) (precedential as to Section II.B.4.i) regarding the filing of multiple petitions.
`Joinder is expressly provided for in 35 U.S.C. § 315(c). It is not unexpected,
`given Petitioner’s “understudy role” and the joinder nature of the Petition, that the
`first filed petition serves as a roadmap for the joinder petition. Indeed, as noted
`above, Petitioner represents that this Petition is substantively identical to the
`Petition in the 116 IPR. Mot. 4. Further, with regard to Petitioner’s own filing of
`two petitions, we already discretionarily denied the Petition in IPR2019-01550 on
`March 17, 2019. IPR2019-01550, Paper 8. Given the conditions of joinder agreed
`to by Petitioner, we see no substantial burden, if any, to Patent Owner to join
`Petitioner to IPR2019-01116. Because of the “understudy role” Petitioner has
`agreed to assume in the joined proceeding, there is little, if any, efficiency concern
`for instituting review and then joining Petitioner to IPR2019-01116. Although
`Patent Owner complains that Petitioner has filed two petitions, in serial manner,
`the discretionary denial of the Petition in IPR2019-01550 leaves just one petition,
`i.e., the joinder petition that is substantially identical to the Petition in the 116 IPR.
`Paper 11, 6–7.
`
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`Finally, Patent Owner argues:
`Ericsson also fails to bring to the Board’s attention the fact that
`Patent Owner had filed its preliminary response to Ericsson’s first
`petition (IPR2019-01[5]50) on December 19, 2019. While Microsoft
`did not have the benefit of Patent Owner’s preliminary response when
`it filed its petition in IPR2019-01116, Ericsson is now seeking to take
`advantage of its knowledge of that response by seeking to join
`IPR2019-01116. Ericsson should not be allowed to benefit from
`filing a petition after Patent Owner’s preliminary response, which is
`precisely what would happen if Ericsson takes a lead role in the
`petition it seeks to join.
`Id. at 6. We see no merit in this argument.
`Patent Owner does not explain the so called “benefit” obtained by Petitioner,
`based on having knowledge of the Preliminary Response in IPR2019-01550, when
`filing the instant Petition which is substantially identical to the Petition in
`IPR2019-01116. Petitioner did not file a petition that is substantively different
`from the Petition in IPR2019-01116 which was filed prior to the filing of the
`Preliminary Response in IPR2019-01550, based on knowledge gained from
`reading the Preliminary Response in IPR2019-01550. Also, Petitioner will not
`have a lead role in the joined proceeding unless Microsoft Corporation is
`terminated from the proceeding. To say that there is a benefit to Petitioner if and
`only if Petitioner assumes a leading role is tenuous and speculative. Further, the
`Preliminary Response in IPR2019-01550 is a public record and accessible by
`Microsoft Corporation. Patent Owner does not explain what Petitioner can do with
`that information that Microsoft Corporation cannot.
`
`For the foregoing reasons, we decline to discretionarily deny the Petition
`under 35 U.S.C. § 314(a).
`
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`VI. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of
`claims 1 and 2 of the ’676 patent is instituted in IPR2020-00376;
`FURTHER ORDERED that the Motion for Joinder with IPR2019-01116 is
`granted, and Petitioner is joined as a party to IPR2019-01116;
`FURTHER ORDERED that all further filings by Petitioner and Patent
`Owner, except for those which concern a request for rehearing of this decision,
`shall be made only in IPR2019-01116;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds and claims
`for trial in IPR2019-01116 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling Order in
`place for IPR2019-01116 (Paper 9) remains unchanged, subject to any change
`already made by stipulation between Microsoft Corporation and Patent Owner;
`FURTHER ORDERED that, subsequent to joinder, Ericsson Inc. is bound
`by every paper filed by and every representation made by Microsoft Corporation in
`IPR2019-01116, except for papers and representations regarding settlement
`between Microsoft Corporation and Patent Owner;
`FURTHER ORDERED that Ericsson Inc. shall make no filing and take no
`action in the joined proceeding unless (1) Microsoft Corporation settles with Patent
`Owner, and a Motion to Terminate Microsoft Corporation from the joined
`proceeding has been filed by Microsoft Corporation, or (2) the filing is a motion to
`terminate the proceeding with respect to Ericsson Inc., a settlement agreement
`between Ericsson Inc. and Patent Owner, or a request to keep settlement agreement
`separate under 37 C.F.R. § 42.74(c), or (3) the action relates to defending Jennifer
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`Stephens, a librarian with the law firm Haynes and Boone, LLP, whose Declaration
`is Exhibit 1011 in this proceeding, at cross-examination by Patent Owner;
`FURTHER ORDERED that counsel for Microsoft Corporation will
`conduct the cross-examination of any witness produced by Patent Owner and
`the redirect of any witness produced by Microsoft in IPR2019-01116;
`FURTHER ORDERED that the case caption in IPR2019-01116 shall be
`changed in accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered into the
`record of IPR2019-01116.
`
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`IPR2020-00376
`Patent 7,016,676 B2
`
`PETITIONER:
`
`Andrew Lowes
`Clint Wilkins
`Angela Oliver
`HAYNES AND BOONE, LLP
`andrew.lowes.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`angela.oliver.ipr@haynesboone.com
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`PATENT OWNER:
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`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Brian Koide
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`brian@etheridgelaw.com
`jeff@etheridgelaw.com
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`17
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`IPR2020-00376
`Patent 7,016,676 B2
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`EXAMPLE CAPTION
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MICROSOFT CORPORATION,
`and ERICSSON INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-011166
`Patent 7,016,676 B2
`_______________
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`6 Ericsson Inc., who filed a petition in IPR2020-00376, has been joined as a
`petitioner in this proceeding.
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