Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 11
`Entered: August 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APPLE INC. and MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00701
`Patent 6,836,654 B2
`____________
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and JOHN D. HAMANN,
`Administrative Patent Judges.
`
`HAMANN, 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)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 11
`Entered: August 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APPLE INC. and MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00701
`Patent 6,836,654 B2
`____________
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and JOHN D. HAMANN,
`Administrative Patent Judges.
`
`HAMANN, 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)
`
`
`
`
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`
`I.
`
`INTRODUCTION
`On March 11, 2020, Apple Inc. (“Apple”) and Motorola Mobility
`LLC (“Motorola”) (collectively “Petitioner”)1 filed a Petition for inter partes
`review of claims 10–20 of U.S. Patent No. 6,836,654 B2 (Ex. 1001, “the
`’654 patent”). Paper 1 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 11 (“Prelim. Resp.”).
`Petitioner also filed a Motion for Joinder with Microsoft Corporation
`v. Uniloc 2017 LLC, Case IPR2019-01471 (“the 1471 IPR”). Paper 5
`(“Mot.”). Patent Owner did not file an opposition to the Motion for Joinder.
`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 10–20 and grant Petitioner’s Motion for
`Joinder.
`
`II.
`
`RELATED PROCEEDINGS
`The parties indicate that the ’654 patent is the subject of multiple
`
`district court proceedings. Pet. vi–vii; Paper 7, 2–3. The parties further
`indicate that the ’654 patent was the subject of the following proceedings,
`for which we denied institution: (1) IPR2019-01218 and IPR2019-01219,
`filed by Samsung; and (2) IPR2019-01470, filed by Microsoft Corporation
`(“Microsoft”). Pet. vii–viii; Paper 7, 2. Lastly, the parties indicate that the
`
`
`1 Samsung Electronics America, Inc. (“Samsung”) also was a Petitioner
`when the Petition was filed. Subsequently, the proceeding was terminated as
`to Samsung due to settlement. See generally Paper 12.
`
`
`
`2
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`’654 patent is the subject of IPR2019-01471, for which the Board instituted
`trial on February 11, 2020. Pet. viii; Paper 7, 2.
`
`In the 1471 IPR, we instituted an inter partes review of claims 10–20
`of the ’654 patent on the following grounds:
`
`Claims Challenged
`10–20
`10–20
`
`35 U.S.C. §
`103(a)
`103(a)
`
`Reference(s)/Basis
`Nokia2 and Barvesten3
`Barvesten and Schultz4
`
`
`Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01471, Paper 7 at 8, 24
`(PTAB Feb. 11, 2020) (“1471 Decision” or “1471 Dec.”).
`
`INSTITUTION OF INTER PARTES REVIEW
`III.
`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 1471 IPR. Compare Pet. 2, with 1471 Dec. 8, 24.
`Indeed, Petitioner argues that the Petition and the 1471 Petition “are
`substantially identical; they contain the same grounds (based on the same
`prior art combinations and supporting evidence) against the same claims.”
`Mot. 1 (citing Ex. 1016) (“Comparison between the Current Petition and
`Petition in IPR2019-01471”). Petitioner also indicates that it relies on the
`same declaration from the same expert as in the 1471 IPR. Id. at 3, 7–8.
`We have considered Patent Owner’s Preliminary Response. Patent
`Owner raises arguments therein that it did not raise in its Preliminary
`Response in the 1471 IPR. Compare generally Prelim. Resp., with
`
`
`2 Owner’s Manual for the Nokia 9000i Communicator, Issue 1.1 (Ex. 1003).
`3 U.S. Patent No. 5,940,773 (issued Aug. 17, 1999) (Ex. 1006).
`4 Charles P. Schultz, Communication Device Inactivity Password Lock, 29
`MOTOROLA TECH. DEVS. 14–15 (Nov. 1996) (Ex. 1008).
`
`
`
`3
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01471, Paper 6. For
`example, Patent Owner argues here that the asserted combinations of
`references (i.e., Nokia and Barvesten, and Barvesten and Schultz) fail to
`teach a limitation of the independent claims, and that one of skill in the art
`would not have combined the relevant teachings of the references. See
`Prelim. Resp. 6–13. For reasons discussed below, Patent Owner’s
`arguments are unpersuasive.
`First, Patent Owner argues that the asserted grounds fail to teach
`“verifying a user identification module mounted inside the mobile
`radiotelephony device is linked to the mobile radiotelephony device,” as
`recited in independent claims 10 and 17. Id. To that end, Patent Owner
`argues that this claim limitation should be given its plain and ordinary
`meaning, but the Petition misconstrues its plain and ordinary meaning. Id. at
`6–7. According to Patent Owner, this step also includes “limiting the use of
`the user identification module only to the device that it is linked with.” Id. at
`8; see also id. at 7–8 (citing Ex. 1001, Fig. 3, 2:61–3:43, 4:23–30) (arguing
`that embodiments in the ’654 patent teach this limiting use requirement).
`Patent Owner argues that the Petition thus fails because the references do not
`teach “any user identification module that is linked to a device such that it
`can only function with that device.” Id. at 7 (emphasis added); see also id. at
`6–13 (arguing that Barvesten, Nokia, and Schultz fail to teach this
`limitation).
`At this stage of the proceeding, we conclude that rather than seeking
`to apply the plain and ordinary meaning of this step, Patent Owner seeks to
`import limitations from the Specification into the claim language. However,
`even if the cited portions of the Specification disclose what Patent Owner
`
`
`
`4
`
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`
`IPR2020-00701
`Patent 6,836,654 B2
`
`alleges, Patent Owner does not provide sufficient justification for importing
`“such that [the user identification module] can only function with that
`device” from certain embodiments in the Specification into this step.
`Prelim. Resp. 7; see Superguide Corp. v. DirecTV Enterprises, Inc., 358
`F.3d 870, 875 (Fed. Cir. 2004) (“[I]t is important not to import into a claim
`limitations that are not a part of the claim.”). Accordingly, on this record we
`are not persuaded by Patent Owner’s arguments, which are premised on this
`importation, that Nokia, Barvesten, and Schultz fail to teach the claimed
`verifying step. We also are not persuaded by Patent Owner’s arguments that
`Nokia, Barvesten, and Schultz fail to teach this step to the extent that the
`arguments focus on the references individually, rather than the combined
`teachings of the references. See In re Merck & Co., 800 F.2d 1091, 1097
`(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
`references individually where the rejection is based upon the teachings of a
`combination of references”).
`Second, we also are not persuaded by Patent Owner’s argument that
`Nokia is not enabled. Prelim. Resp. 8–9. This argument “is misplaced,
`since even ‘[a] non-enabling reference may qualify as prior art for the
`purpose of determining obviousness,’ . . . and even ‘an inoperative device
`. . . is prior art for all that it teaches.’” ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350, 1360 n.2 (Fed. Cir. 2015) (quoting Beckman Instruments,
`Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) and Symbol
`Tech., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991)).
`Third, we also are not persuaded by Patent Owner’s argument that
`“Barvesten cannot be reasonably combined with Nokia because it was well
`known to any [person of ordinary skill in the art] at the time of the ’654
`
`
`
`5
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`Patent that a network operator subsidized use of the phone in return for
`profits associated with providing its communication services.” Prelim.
`Resp. 11–12. Patent Owner continues that “[w]ere the SIM card checking
`technique of Barvesten to be implemented in the Communicator described in
`Nokia, the network operator could not monitor or control how the
`Communicator is used.” Id. at 12. Patent Owner similarly argues that
`“Barvesten effectively teaches away from a SIM card checking technique
`used by Barvesten because such a system would not allow a network
`operator to control when and how its subsidized phones are used.” Id. We
`are not persuaded by these arguments, including because the premise of
`Patent Owner’s arguments (i.e., a subsidizing network operator could not
`monitor or control how the device is used) is unsupported by record
`evidence, and thus we afford it little, if any weight. See In re Geisler, 116
`F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments that
`are unsupported by factual evidence are entitled to little probative value).
`Furthermore, Patent Owner does not identify any specific teaching in
`Barvesten or Nokia that supports its argument that they teach away from the
`claimed invention — a reference teaches away if it criticizes, discredits, or
`otherwise discourages modifying the reference to arrive at the claimed
`invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
`Lastly, Patent Owner argues that Administrative Patent Judges are
`unconstitutionally appointed principal officers. Prelim. Resp. 13–17. We
`decline to consider Patent Owner’s constitutional challenge as the issue was
`addressed by the Federal Circuit’s decision in Arthrex Inc. v. Smith &
`Nephew, Inc., 941 F.3d 1320, 1337 (Fed. Cir. 2019) (“This as-applied
`severance . . . cures the constitutional violation.”); see also Arthrex, Inc. v.
`
`
`
`6
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (en banc) (Moore,
`J., concurring in denial of rehearing) (“Because the APJs were
`constitutionally appointed as of the implementation of the severance, inter
`partes review decisions going forward were no longer rendered by
`unconstitutional panels.”).
`In summary, we are not persuaded by Patent Owner’s above
`arguments at this stage of the proceeding. In addition, what we said in the
`Institution Decision of the 1471 IPR as to the sufficiency of the showing of
`unpatentability equally applies here and need not be repeated. Thus, we
`conclude that Petitioner has demonstrated a reasonable likelihood of success
`in prevailing on its assertion that at least one claim would have been obvious
`over an asserted ground. Accordingly, we institute an inter partes review of
`claims 10–20 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.”).
`
`IV. GRANT OF MOTION FOR JOINDER
`The Petition in this proceeding was accorded a filing date of March
`11, 2020. See Paper 6, 1. The 1471 IPR was instituted on February 11,
`2020. 1471 Dec. 1. Petitioner filed a Motion for Joinder on March 11,
`2020. Paper 5. Thus, Petitioner’s Motion for Joinder is timely because
`joinder was requested no later than one month after the February 11, 2020
`institution date of the 1471 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:
`
`
`
`7
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`
`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, 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 1471 IPR.
`Compare Pet. 2, with 1471 Dec. 8, 24. Petitioner indicates that it relies on
`the same technical expert declaration as that relied on by Microsoft in the
`1471 IPR. Mot. 6. Petitioner also represents that in this Petition “there are
`no changes to the facts, citations, evidence, or arguments introduced in the
`[1471] Petition.” Id. Thus, this inter partes review does not present any
`ground or matter not already at issue in the 1471 IPR.
`Petitioner represents that if joinder is granted, it consents to the
`existing trial schedule in the 1471 IPR. Id. at 7. Petitioner also “agree[s] to
`take an ‘understudy’ role, which will simplify briefing and discovery.” Id. at
`8. More specifically, Petitioner represents that
`so long as the current petitioner in IPR2019-01471 remains an
`active party:
`
`a) Petitioner[] shall not make any substantive filings and
`shall be bound by the filings of Microsoft, unless a filing
`
`
`
`8
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`
`concerns termination and settlement, or issues solely involving
`Petitioner[];
`
`b) Petitioner[] shall not present any argument or make any
`presentation at the oral hearing on issues not solely involving
`Petitioner[];
`
`c) Petitioner[] shall not seek to cross-examine or defend
`the cross-examination of any witness, unless the topic of cross-
`examination concerns issues solely involving Petitioner[]; and
`
`d) Petitioner[] shall not seek discovery from Uniloc on
`issues not solely involving Petitioner[].
`
`
`Id. (emphases added). Moreover, Petitioner represents that it is “further
`willing to agree to any other reasonable conditions the Board deems
`necessary.” Id. at 9. Lastly, Petitioner represents that Microsoft, the
`Petitioner in the 1471 IPR, does not oppose joinder. Id. at 2.
`We agree with Petitioner that joinder with the 1471 IPR is appropriate
`under the circumstances. However, we find Petitioner’s caveat relating to
`“issues solely involving Petitioner” to be vague and potentially overbroad.
`Thus, unless and until Microsoft ceases to participate in the 1471 IPR,
`Petitioner will remain an understudy and will not assume an active role, as
`ordered below. To the extent that Petitioner believes that an issue exists that
`solely involves Petitioner, Petitioner can seek our authorization to file for
`relief from the Board at that time. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`
`
`V. ORDER
`Accordingly, it is:
` ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 10–20 of the ’654 patent is instituted in IPR2020-00701;
`
`
`
`9
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`
`FURTHER ORDERED that the Motion for Joinder with IPR2019-
`01471 is granted, and Apple and Motorola are joined as parties to IPR2019-
`01471;
`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 IPR2019-01471;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds and
`claims for trial in IPR2019-01471 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2019-01471 (Paper 8) remains unchanged, subject to
`any change already made by stipulation between Microsoft and Patent
`Owner;
`FURTHER ORDERED that, subsequent to joinder, Petitioner is
`bound by every paper filed by and every representation made by Microsoft
`in IPR2019-01471, except for papers and representations regarding
`settlement between Microsoft and Patent Owner;
`FURTHER ORDERED that Apple and Motorola shall make no filing
`and take no action in the joined proceeding unless (1) Microsoft settles with
`Patent Owner, and a Motion to Terminate Microsoft from the joined
`proceeding has been filed, or (2) the filing is a motion to terminate the
`proceeding with respect to Apple and/or Motorola, a settlement agreement
`between Apple and/or Motorola and Patent Owner, or a request to keep
`settlement agreement separate under 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that counsel for Microsoft will conduct the
`cross-examination of any witness produced by Patent Owner and the redirect
`of any witness produced by Microsoft in IPR2019-01471;
`
`
`
`10
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`
`FURTHER ORDERED that the case caption in IPR2019-01471 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 IPR2019-01471.
`
`
`
`11
`
`
`
`IPR2020-00701
`Patent 6,836,654 B2
`
`FOR PETITIONER:
`Todd M. Siegel
`Andrew M. Mason
`John M. Lunsford
`Joseph T. Jakubek
`KLARQUIST SPARKMAN, LLP
`todd.siegel@klarquist.com
`andrew.mason@klarquist.com
`john.lunsford@klarquist.com
`joseph.jakubek@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
`
`
`
`
`
`12
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`
`IPR2020-00701
`Patent 6,836,654 B2
`
`
`
`EXAMPLE CAPTION
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`MICROSOFT CORPORATION, APPLE INC., and
`MOTOROLA MOBILITY LLC,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-014715
`Patent 6,836,654 B2
`____________
`
`
`5 Apple Inc. and Motorola Mobility LLC, having filed a petition in IPR2020-
`00701, have been joined as petitioners in this proceeding.
`
`
`
`13
`
`
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