UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`Ericsson Inc.,
`
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
`_______________
`
`Case IPR2019-01550
`Patent 7,016,676
`
`____________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`RELATED PROCEEDINGS .......................................................................... 2
`
`III. THE PETITION SHOULD BE DENIED UNDER THE BOARD’S
`DISCRETION .................................................................................................. 5
`
`IV. THE ’676 PATENT .......................................................................................21
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ...........................................26
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD OF
`UNPATENTABILITY FOR ANY CHALLENGED CLAIM ......................26
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Claim Construction—Performance of the “Renders” Portion of Claim
`1 is Required ........................................................................................27
`
`The Petition does not establish that Shellhammer teaches “wherein the
`control station … 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
`recited in Claims 1 and 2. (Ground 1) .................................................29
`
`The Petition does not establish that Shellhammer in view of Haartsen
`renders Claim 8 obvious. (Ground 2) ..................................................33
`
`The Petition does not establish that Shellhammer in view of Panasik
`renders Claim 8 obvious. (Ground 3) ..................................................36
`
`Lansford Does Not Disclose “a control station which controls the
`alternate use of the frequency band” and which “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” (Claim 1) (Ground 4) ..............................................40
`
`VII. CONCLUSION ..............................................................................................42
`
`
`
`- i -
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc 2017 LLC (the
`
`“Patent Owner” or “Uniloc”) submits Uniloc’s Preliminary Response to the
`
`Petition for Inter Partes Review (“Pet.” or “Petition”) of United States Patent No.
`
`7,016,676 (“the '676 Patent” or “Ex. 1001”) filed by Ericsson Inc. (“Petitioner” or
`
`“Ericsson”) in IPR2019-01550.
`
`The Board should exercise its discretion to deny this burdensome,
`
`redundant, and inefficient Petition. Ericsson presents no justifiable reason for there
`
`to be six petitions filed against the ’676 patent. Moreover, as will be developed
`
`below, Ericsson delayed in presenting its Petition. Rather than come before the
`
`Board and fully explain its delay, Ericsson resorted to trying to understate its prior
`
`knowledge of the references in this IPR, even going as far as to misrepresent when
`
`it learned of the lead reference in three of its four challenges. Under these facts,
`
`the Board would be well within its discretion to deny the petition and should do so.
`
`Should the Board reach the merits, the Petition should be denied in its
`
`entirety as failing to meet the threshold burden of proving there is a reasonable
`
`likelihood that at least one challenged claim is unpatentable.
`
`Uniloc addresses each ground and provides specific examples of how
`
`Petitioner failed to establish that it is more likely than not that it would prevail with
`
`
`
`-1-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`respect to at least one of the challenged ’676 Patent claims. As a non-limiting
`
`example described in more detail below, the Petition fails the all-elements-rule by
`
`failing to address every feature of every challenged claim.
`
`Accordingly, Uniloc respectfully requests that the Board decline institution
`
`of trial on claims 1, 2, and 8 of the '676 Patent.
`
`II. RELATED PROCEEDINGS
`
`The following district court proceedings currently involve U.S. Pat. No.
`
`7,016,676 (’676 patent):
`
`Case Name
`
`Case Number
`
`Court
`
`Filing Date
`
`Uniloc 2017 LLC v. Microsoft
`Corporation
`
`8-18-cv-02053
`
`CACD Nov 17, 2018
`
`Uniloc 2017 LLC et al v. Google
`LLC
`
`2-18-cv-00495
`
`TXED Nov. 17, 2018
`
`Uniloc 2017 LLC v. Verizon
`Communications Inc. et al
`
`2-18-cv-00513
`
`TXED Nov. 17, 2018
`
`Uniloc 2017 LLC v. AT&T Services,
`Inc. et al
`
`2-18-cv-00514
`
`TXED Nov. 17, 2018
`
`
`
`The ’676 patent is also the subject of six inter partes review proceedings:
`
`
`
`-2-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`Case Name
`
`Case Number
`
`Court
`
`Filing Date
`
`Google, LLC v. Uniloc 2017 LLC
`
`IPR2019-01541
`
`PTAB Aug. 29, 2019
`
`Ericsson Inc. et al v. Uniloc 2017
`LLC
`
`IPR2019-01550
`
`PTAB Aug. 29, 2019
`
`Marvell Semiconductor, Inc. v.
`Uniloc 2017 LLC
`
`IPR2019-01349
`
`PTAB
`
`July 22, 2019
`
`Marvell Semiconductor, Inc. v.
`Uniloc 2017 LLC
`
`IPR2019-01350
`
`PTAB
`
`July 22, 2019
`
`Microsoft Corporation et al v. Uniloc
`2017 LLC
`
`IPR2019-01116
`
`PTAB May 29, 2019
`
`Microsoft Corporation et al v. Uniloc
`2017 LLC
`
`IPR2019-01125
`
`PTAB May 29, 2019
`
`
`
`Institution was denied in IPR2019-01125.
`
`The challenges presented to the claims of the ’676 patent in this and other
`
`inter partes review proceedings are set forth below:
`
`Claim Basis
`
`Shellhammer (Ground 1 of this IPR)
`
`Lansford (Ground 4 of this IPR)
`
`-3-
`
`1
`
`1
`
`
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`Claim Basis
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`3
`
`3
`
`4
`
`5
`
`5
`
`Home RF (Ground 1 of IPR2019-01116)
`
`Home RF in view of Home RF Tutorial (Ground 2 of IPR2019-01116)
`
`Home RF in view of Home RF Liaison Report (Ground 3 of IPR2019-
`
`01116)
`
`Lansford (Ground 4 of IPR2019-01116)
`
`Sherman (Ground 1 of IPR2019-01349)
`
`Shellhammer (Ground 3 of IPR2019-01349)
`
`Gardner in view of Marth and Balachandran (Ground 1 of IPR2019-1541)
`
`Shellhammer (Ground 1 of this IPR)
`
`Lansford (Ground 4 of this IPR)
`
`Home RF (Ground 1 of IPR2019-01116)
`
`Home RF in view of Home RF Tutorial (Ground 2 of IPR2019-01116)
`
`Home RF in view of Home RF Liaison Report (Ground 3 of IPR2019-
`
`01116)
`
`Lansford (Ground 4 of IPR2019-01116)
`
`Sherman (Ground 1 of IPR2019-01349)
`
`Shellhammer (Ground 3 of IPR2019-01349)
`
`Gardner in view of Marth and Balachandran (Ground 1 of IPR2019-1541)
`
`Sherman (Ground 1 of IPR2019-01350)
`
`Shellhammer (Ground 3 of IPR2019-01350)
`
`Gardner in view of Marth and Balachandran (Ground 1 of IPR2019-1541)
`
`Home RF (Ground 1 of IPR2019-01125)
`
`Home RF in view of Tutorial and SWAP Spec (Ground 2 of IPR2019-
`
`
`
`-4-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`Claim Basis
`
`01125)
`
`Home RF in view of Haartsen (Ground 3 of IPR2019-01125)
`
`Home RF in view of Home RF Tutorial and Haartsen (Ground 4 of
`
`IPR2019-01125)
`
`Sherman in view of Trompower (Ground 2 of IPR2019-01349)
`
`Shellhammer in view of Trompower (Ground 4 of IPR2019-01349)
`
`Shellhammer in view of Panasik (Ground 5 of IPR2019-01349)
`
`Sherman (Ground 1 of IPR2019-01350)
`
`Shellhammer (Ground 3 of IPR2019-01350)
`
`Shellhammer in combination with Haartsen (Ground 2 of this IPR)
`
`Shellhammer in combination with Panasik (Ground 3 of this IPR)
`
`Sherman in view of Trompower (Ground 2 of IPR2019-01350)
`
`Shellhammer in view of Trompower (Ground 4 of IPR2019-01350)
`
`Shellhammer in view of Panasik (Ground 5 of IPR2019-01350)
`
`Sherman (Ground 1 of IPR2019-01350)
`
`Shellhammer (Ground 3 of IPR2019-01350)
`
`Gardner in view of Marth and Balachandran (Ground 1 of IPR2019-1541)
`
`5
`
`5
`
`5
`
`5
`
`5
`
`6
`
`7
`
`8
`
`8
`
`8
`
`8
`
`8
`
`9
`
`9
`
`9
`
`
`
`III. THE PETITION SHOULD BE DENIED UNDER THE BOARD’S
`DISCRETION
`
`This Petition stands as a paragon of the burdens and inefficiencies presented
`
`when multiple petitions are filed to attack a single patent.
`
`
`
`-5-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`The ’676 patent has only nine claims. Yet, six IPRs have been filed
`
`challenging the ’676 patent, presenting an array of assertions against the individual
`
`claims, including multiple challenges against the same claims challenged in this
`
`Petition presented across four different petitions. Despite the Petition’s arguments
`
`to the contrary, the facts show undue burden, inefficient overlap, and unexplained
`
`differences across the various petitions and challenges. The table above in the
`
`Related Proceedings section shows all of the IPR challenges levelled against the
`
`claims of the ’676 patent (to date). The table below focuses on the claims
`
`challenged in this IPR (highlighted in yellow) to show the repeated attacks against
`
`these claims, including where the exact same grounds based on the exact same
`
`references were presented in other IPRs filed by other Petitioners (highlighted in
`
`orange).
`
`Claim Basis
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`Shellhammer (Ground 1 of this IPR)
`
`Lansford (Ground 4 of this IPR)
`
`Home RF (Ground 1 of IPR2019-01116)
`
`Home RF in view of Home RF Tutorial (Ground 2 of IPR2019-01116)
`
`Home RF in view of Home RF Liaison Report (Ground 3 of IPR2019-
`
`01116)
`
`Lansford (Ground 4 of IPR2019-01116)
`
`
`
`-6-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`Claim Basis
`
`Sherman (Ground 1 of IPR2019-01349)
`
`Shellhammer (Ground 3 of IPR2019-01349)
`
`Gardner in view of Marth and Balachandran (Ground 1 of IPR2019-1541)
`
`Shellhammer (Ground 1 of this IPR)
`
`Lansford (Ground 4 of this IPR)
`
`Home RF (Ground 1 of IPR2019-01116)
`
`Home RF in view of Home RF Tutorial (Ground 2 of IPR2019-01116)
`
`Home RF in view of Home RF Liaison Report (Ground 3 of IPR2019-
`
`01116)
`
`Lansford (Ground 4 of IPR2019-01116)
`
`Sherman (Ground 1 of IPR2019-01349)
`
`Shellhammer (Ground 3 of IPR2019-01349)
`
`Gardner in view of Marth and Balachandran (Ground 1 of IPR2019-1541)
`
`Shellhammer in combination with Haartsen (Ground 2 of this IPR)
`
`Shellhammer in combination with Panasik (Ground 3 of this IPR)
`
`Sherman in view of Trompower (Ground 2 of IPR2019-01350)
`
`Shellhammer in view of Trompower (Ground 4 of IPR2019-01350)
`
`Shellhammer in view of Panasik (Ground 5 of IPR2019-01350)
`
`1
`
`1
`
`1
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`8
`
`8
`
`8
`
`8
`
`8
`
`
`
`The precedential decision in General Plastic Industrial Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357 (PTAB Sep. 6, 2017) (Paper 19) identifies
`
`seven non-exclusive factors that bear on the issue of whether the Board should
`
`
`
`-7-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`invoke its discretion to deny institution under 35 U.S.C. § 314(a) and 37 C.F.R.
`
`§ 42.108(a). These factors include:
`
`1.
`
`whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent;
`
`2.
`
`whether at the time of filing of the first petition the
`
`petitioner knew of the prior art asserted in the second
`
`petition or should have known of it;
`
`3.
`
`whether at the time of filing of the second petition the
`
`petitioner
`
`already
`
`received
`
`the patent owner’s
`
`preliminary response to the first petition or received the
`
`Board’s decision on whether to institute review in the
`
`first petition;
`
`4.
`
`the length of time that elapsed between the time the
`
`petitioner learned of the prior art asserted in the second
`
`petition and the filing of the second petition;
`
`5.
`
`whether the petitioner provides adequate explanation for
`
`the time elapsed between the filings of multiple petitions
`
`directed to the same claims of the same patent;
`
`6.
`
`the finite resources of the Board; and
`
`
`
`-8-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`7.
`
`the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on
`
`which the Director notices institution of review.
`
`See General Plastic, IPR2016-01357, Paper 19, 9–10 (citations omitted).
`
`Moreover, the Board has statutory authority to use its discretion to manage
`
`multiple proceedings before the Board involving the same patent. 35 U.S.C.
`
`§ 325(d).
`
`Each of the General Plastic factors 1, 2, and 4-7 weigh in favor of
`
`exercising discretion to deny the Petition.
`
`General Plastic Factor 1
`
`Regarding General Plastic factor 1, directed to whether a petitioner filed any
`
`previous petition directed to the same claims of the same patent, the table above
`
`shows that not only were the same claims challenged, the same references were
`
`also applied. And when all challenges against the ’676 patent are considered,
`
`Ericsson’s contention that its Petition presents “a different set of claims than has
`
`been challenged in any single pending petition” (Petition, p. 69) should ring
`
`hollow. Not only does Ericsson cite no authority to limit the General Plastic
`
`analysis to “a single” petition, Ericsson also cites no authority to contend that other
`
`IPRs filed by defendants in parallel district court litigation should not be
`
`
`
`-9-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`considered. Rather, the opposite is true. Given the overlap, Ericsson provides no
`
`explanation as to why it elected to file its own Petition rather than coordinating
`
`with the other defendants (or relying on the joinder process of 37 C.F.R. §
`
`42.122(b) for the overlapping challenges). Ericsson makes no assertion that it
`
`tried, and failed, to coordinate with the other defendants.
`
`For the one redundant ground that presents a different formulation of the
`
`previously used references (Ground 2: asserting Shellhammer in view of Haartsen
`
`against claim 8), Ericsson does not explain why this challenge is any different than
`
`other four challenges to claim 8. See Medtronic, Inc. v. NuVasive, Inc., Case
`
`IPR2014-00487, Paper 8 at 6 (Sept. 11, 2014) (informative) (denying institution,
`
`explaining in part that “[w]hile Petitioner argues that the grounds are not redundant
`
`to those instituted on in the ’506 Proceeding, Petitioner does not provide any
`
`specific reasoning to support that argument, other than to state that the grounds are
`
`based on different prior art references.”); see also Apple Inc. v. Corephotonics Ltd.,
`
`IPR2018-01356, Paper 9 at 7-8 (Feb. 5, 2019) (finding that where a petitioner
`
`“merely argues that its Petition ‘is not redundant’” because the asserted reference
`
`was not raised in another petition this circumstance “weigh[s] in favor of
`
`exercising our discretion to deny institution ... on the basis of 35 U.S.C. § 314(a)”).
`
`
`
`-10-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`Indeed, Ericsson goes so far as to argue that the overlap between its own
`
`challenges and those asserted in “earlier-filed petitions” are advantageous in that
`
`the overlap “would allow the Board to evaluate the petitions efficiently.” (Petition,
`
`p. 72). General Plastic factor 1 weighs in favor of exercising discretion to deny
`
`the Petition.
`
`General Plastic Factor 2
`
`Regarding General Plastic factor 2 relating to prior knowledge of the
`
`references, Ericsson admits that the references used in its Petition were all
`
`references brought to its attention by reviewing earlier IPRs filed by other parallel
`
`district court defendants. (Petition, p. 70). Thus, while Ericsson may boast that it
`
`“conducted its own searching” (Petition, p. 70), that searching yielded nothing new
`
`before the Board.
`
`In fact, Ericsson has known of each of the references well before any
`
`petition against the ’676 patent was first filed. Ericsson directly admits it knew of
`
`the Lansford, Panasik, and Haartsen references “before Microsoft’s petitions were
`
`filed.” The Board may presume from Ericsson’s failure to define “before” that
`
`Ericsson had prior knowledge of the references for a considerable time. For
`
`example, Haartsen was assigned to Ericsson as early as 2003. See Ex. 1008, item
`
`(73).
`
`
`
`-11-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`It can also be established that Ericsson incorrectly claimed that it learned of
`
`the Shellhammer reference only recently when, in fact, evidence conclusively
`
`proves Ericsson knew of the Shellhammer reference much earlier. On July 13,
`
`2018, Ericsson submitted Shellhammer as an exhibit and included Shellhammer on
`
`an exhibit list in IPR2017-01661. See IPR2017-01661, Petitioner’s Updated
`
`Exhibit List, Paper 39 (July 13, 2018); IPR2017-01661, Ex. 1036 (submitted July
`
`13, 2018) (U.S. Patent No. 7,039,358, the Shellhammer reference). Like this IPR,
`
`Ericsson was a petitioner in IPR2017-01661 and was represented by Mssrs. Lowes
`
`and Wilkins of Haynes and Boone. See IPR2017-01661 (Paper 3). Mr. Lowes
`
`certified service of the Shellhammer reference in IPR2017-01661. See IPR2017-
`
`01661, Reply at 28 (Mr. Lowes certifying service of Ex. 1036, “Documents served
`
`PETITIONER’S REPLY and Exhibits 1036, 1038-1040”). Nevertheless, Mr.
`
`Lowes, again acting on behalf of Ericsson in this IPR, made the representations
`
`that “Petitioner only learned of the Shellhammer reference, utilized in the present
`
`Petition for three of the four grounds, by reviewing the Marvell petitions after they
`
`were filed on July 22nd [i.e., July 22, 2019]” (Petition, p. 70); “the primary
`
`reference used in three of the four grounds, Shellhammer, was not known to
`
`petitioner when the earlier petitions were filed,” (Petition, p. 70); “at least with
`
`respect to the Shellhammer reference, at the time of filing of the earlier petitions,
`
`
`
`-12-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`Petitioner did not know of the prior art that is now being asserted in the present
`
`Petition” (Petition, p. 70); “Petitioner first learned of the Shellhammer reference
`
`by reading the petitions after they were filed by Marvell on July 22nd” (Petition, p.
`
`71); “Since learning of the Shellhammer reference identified in Marvell petitions
`
`filed July 22nd, Petitioner has been considering the newly identified prior art
`
`utilized by Marvell and drafting the present Petition, filed just over a month after
`
`learning of the reference” (Petition, p. 71); “this Petition was filed promptly after
`
`learning of the Shellhammer reference” (Petition, p. 68); (emphasis added in each
`
`citation).
`
`Each of Ericsson’s representations concerning the lack of prior knowledge is
`
`false and should have been found to be false by Ericsson “after an inquiry
`
`reasonable under the circumstances.” 37 C.F.R. § 11.18(b)(2); see also 37 C.F.R.
`
`§ 11.18(b)(2)(iii) (requiring the “allegations and other factual contentions have
`
`evidentiary support.”); compare Petition, p. 70 (contending Ericsson “conducted its
`
`own searching”). As Ericsson’s discussion of General Plastic factors 2 (and 4 and
`
`5 addressed below) largely relies on its misrepresentations, the Board is well-
`
`within its discretion to disregard all of Ericsson’s presentation concerning the
`
`General Plastic factors. See Lambert v. Blackwell, 387 F.3d 210, 256 (3d Cir.
`
`2004) (“This concept is embodied in the common jury instruction known as the
`
`
`
`-13-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`‘falsus in uno, falsus in omnibus’ charge, which provides: ‘If you find that any
`
`witness testified falsely about any material fact, you may disregard all of his
`
`testimony, or you may accept such parts of it as you wish to accept and exclude
`
`such parts of it as you wish to exclude.’”).
`
`General Plastic factor 2 weighs heavily in favor of exercising discretion to
`
`deny the Petition.1
`
`General Plastic Factors 4 and 5
`
`Regarding General Plastic factors 4 and 5, regarding whether the length of
`
`time between when petitioner knew of the references and filed the petition was
`
`adequately explained, Ericsson argues the period of delay should begin on July 22,
`
`2019. Pet., 71. But as noted above concerning factor 2, Ericsson knew of each of
`
`the references, including Shellhammer, well-before July 22, 2019, and well-before
`
`filing the first IPR against the ’676 patent. Thus, in trying to limit its explanation
`
`of the delay, Ericsson does not answer the relevant question of why it did not file
`
`its challenges earlier. The Board should not countenance a petitioner who fails to
`
`
`
`1General Plastic factor 3 is neutral as no preliminary response or decision to
`
`institute was filed in a prior IPR prior to Ericsson’s filing.
`
`
`
`
`
`-14-
`
`

`

`IPR2019-01550
`U.S. Patent No. 7,016,676
`
`
`acknowledge the full extent of its delay in seeking inter partes review based on
`
`references that it already knew of, much less explain the reason behind such delay.
`
`Moreover, Ericsson does not account for what it did during the full period of
`
`delay, even the delay after reviewing the other petitions. The first petition Ericsson
`
`copied from was filed on May 29, 2019. The second and third petitions were filed
`
`on July 22, 2019. Thus, Ericsson had nothing more to do than copy the challenges.
`
`Instead, it decided to craft a new petition with its own spin on the references. See
`
`TomTom, Inc. v. Blackbird Tech, LLC, IPR2017-02025, Paper 7 at 15-17 (March
`
`12, 2018).
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`In an attempt to understate its lack of diligence even further, Ericsson claims
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`that its delay in asserting Lansford in Ground 4 of this IPR “is reasonable because
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`Petitioner was not even part of the district court proceedings involving Verizon and
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`AT&T until April 22 and 23, 2019, respectively, when Petitioner’s corresponding
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`motions to intervene were granted.” (Petition, p. 71). These are the incorrect dates
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`to consider when evaluating Ericsson’s delay in bringing the current challenge
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`based on Lansford. First, Ericsson moved to intervene in the Verizon and AT&T
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`cases on March 8, 2019 on the basis that it “sells base stations to [Verizon/AT&T]
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`that implement the accused LTE-LAA feature.” Ex. 1019, 2; Ex. 1020, 2 (quoting
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`Ericsson’s motions). Ericsson would have the Board believe that it could not
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`U.S. Patent No. 7,016,676
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`prepare and/or file its petition for IPR until the District Court ruled on its motions.
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`This is incorrect, as Ericsson could have filed its Petition earlier, regardless of the
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`outcome of its District Court motions, or even without moving to intervene. The
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`date when the District Court granted its motions is irrelevant to the correct
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`determination of Ericsson’s delay.
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`Second, Ericsson fails to inform the Board when it was first notified of
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`Uniloc’s complaints against Verizon and AT&T, or when it decided to actively
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`defend the accused products through intervention. Presumably, Ericsson did not
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`file its motions to intervene on the very day it learned of these actions against its
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`customers. Where a party seeks a favorable ruling from the adjudicator, such as
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`the Board, but also fails to inform the adjudicator of certain prerequisite facts, no
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`relief should be granted.
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`General Plastic factors 4 and 5 thus heavily weigh in favor of exercising
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`discretion to deny the Petition.
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`General Plastic Factors 6 and 7
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`General Plastic factors 6 and 7 are directed to efficiency and the Board’s
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`resources and are informed by the Board’s guidance in the July 2019 Trial Practice
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`Guide Update:
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`Based on the Board’s prior experience, one petition
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`should be sufficient to challenge the claims of a patent in
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`most situations. Two or more petitions filed against the
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`same patent at or about the same time (e.g., before the
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`first preliminary response by the patent owner) may place
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`a substantial and unnecessary burden on the Board and
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`the patent owner and could raise fairness, timing, and
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`efficiency concerns. See 35 U.S.C. § 316(b). In addition,
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`multiple petitions by a petitioner are not necessary in the
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`vast majority of cases. To date, a substantial majority of
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`patents have been challenged with a single petition.
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`Trial Practice Guide Update, 26 (July 2019); Consolidated Trial Practice Guide
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`(November 2019), 59.
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`The unnecessary burdens identified by the Board are certainly presented
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`here. And, in copying challenges from three different IPRs, Ericsson creates a
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`complex
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`logistical challenge
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`to ensuring consistency across
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`the various
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`proceedings, to the extent petitioners would contend each has their own spin on the
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`references.
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`Ericsson’s delayed IPR prejudices Patent Owner, and even the other
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`petitioners, by seeking to stand on the shoulders of the other defendant petitioners.
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`Ericsson’s omniscient review of the other petitioners’ work and crafting of the
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`current Petition based on the buffet of theories and positions taken by the other
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`defendants does not promote an efficient inter partes review system. Denial of
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`institution for this Petition (and the two other petitions) is thus appropriate under
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`the Board’s discretionary authority in 35 U.S.C. § 314(a).
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` In claiming that these factors support institution, Ericsson essentially
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`ignores this prejudice in allowing a petitioner to select what it believes are the
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`choicest challenges made by others and then make Patent Owner respond to
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`Petitioner and its expert’s updated interpretation of those references and implicit
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`critique of the other IPRs. Ericsson does not even explain how its Petition differs
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`from the prior challenges and why it should be permitted to benefit from the
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`review of the other petitions. See TomTom, Inc. v. Blackbird Tech, LLC, IPR2017-
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`02025, Paper 7 at 15-17 (March 12, 2018) (noting that the Board is “mindful of the
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`potential inequity of parties filing multiple petitions,” where Petitioner has
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`“relie[d] on substantially similar references and analyses” and “[has] not shown
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`sufficiently, how the [asserted] references are different enough to warrant
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`institution”).
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`Moreover, given the delays in presenting its challenges, Ericsson has all but
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`assured that any IPR in this case will have a different schedule than any other IPR
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`against the ’676 patent. The Board has already instituted IPR2019-01116 and set a
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`schedule in that proceeding.
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`For all these reasons, General Plastic factors 6 and 7, and factors 1, 2, 4, and
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`5 heavily weigh in favor of exercising discretion to deny the Petition. No factor
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`supports Petitioner. Under these facts, not only would the Board be well-within its
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`discretion to deny the Petition, the Board should also consider how denying
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`institution would discourage petitioners from making representations concerning
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`the General Plastic factors without reasonable diligence. Ericsson’s Petition
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`should be denied.
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`Discretion Under § 325(d)
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`The Petition’s arguments as to the Becton, Dickinson factors include cursory
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`assertions as to the cumulative nature of the challenges and faulty reasoning that
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`highlights the case for denying institution based on the board’s discretion.
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`Rather than review each of the factors pertaining to § 325(d), the Petition
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`states that “one of Petitioner’s prior art combinations (Shellhammer and Haartsen)
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`was not raised in the pending petitions for any claim.” (Petition, p. 74.) First, this
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`argument acknowledges that the three other grounds presented in the Petition are
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`based on the same references presented in prior petitions, and no distinctions are
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`explained as to these grounds.2 In addition, contrary to Petitioner’s argument,
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`325(d) does not require the Board to consider the merits of a ground created simply
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`by combining two references from prior petitions that were not previously
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`combined. Petitioner provides no analysis as to the cumulative nature of the
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`Shellhammer/Haartsen
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`combination
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`as
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`compared
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`to
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`the
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`previous
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`Shellhammer/Panasik ground (based on the same primary reference) in IPR2019-
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`01350. (See Petition, pp. 26–37, 74–75.) The Board should weigh Petitioner’s
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`lack of explanation in these circumstances against institution. See Medtronic, Inc.
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`v. NuVasive, Inc., Case IPR2014-00487, slip op. at 6 (Paper 8) (Sept. 11, 2014)
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`(informative) (denying institution, explaining in part that “[w]hile Petitioner argues
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`that the grounds are not redundant to those instituted on in the ’506 Proceeding,
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`Petitioner does not provide any specific reasoning to support that argument, other
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`than to state that the grounds are based on different prior art references.”).
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`The Petition also incorrectly suggests that § 325(d) plays no role where
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`previous Office proceedings are still pending, even if the present Petition raises the
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`
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`2 Although Patent Owner notes infra one aspect in which the Petition argues
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`the ground based on Lansford differently, this does not preclude the Petition from
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`being denied under § 325(d) considering the remaining similarities.
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`same art. (See Petition, pp. 75–76.) The cases cited by the Petition on this point
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`relate to cases terminated in circumstances that are entirely hypothetical as they
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`relate to the petitions filed challenging the ’676 patent. Where Ericsson may seek
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`other, more efficient ways of joining proceedings, it has not justified maintaining
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`an additional proceeding only because it challenges a different combination of the
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`same claims challenged in other proceedings. Institution should be denied based
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`on the Board’s discretion.
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`IV. THE ’676 PATENT
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`The ’676 patent is titled “Method, network and control station for the two-
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`way alternate control of radio systems of different standards in the same frequency
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`band.” The ʼ676 patent issued March 21, 2006, from U.S. Patent Application No.
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`10/089,959 filed April 4, 2002, which was a National Stage Entry of PCT No.
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`PCT/EP01/09258 filed August 8, 2001 and published as W002/13457, which in
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`turn claims priority to German Application No. DE10039532.5 filed August 8,
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`2000.
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`The inventors of the ’676 patent observed that, at the time of the invention, a
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`radio system for wireless transmission of information was allowed to use
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`transmission power only in accordance with standards by the national regulation
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`authority. The national regulation authority determined on what frequencies with
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`what transmission power and in accordance with what radio interface standard a
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`radio system is allowed to transmit. There was also provided so-called ISM
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`frequency bands (Industrial Scientific Medical) where radio systems transmitted in
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`the same frequency band but in accordance with different radio interface standards.
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`’676 patent, column 1, lines 10-23. And in the event of interference, methods were
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`standardized for an active switching to another frequency within the permitted
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`frequency band, for controlling transmission power, and for the adaptive coding
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`and modulation to reduce interference. However, despite operating in the same
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`frequency band, different radio systems have different Medium Access Controls
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`(MAC), and despite the utilization of methods such as Transmitter Power Control
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`(TPC) and Dynamic Frequency Selection (DFS), those methods did not make
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`optimum use of spreading radio channels over the stations which operate under
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`different radio standards. ‘676 patent, column 1, line 24 to column 2, line 10.
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`According to the ’676 Patent, there is provided a method, a wireless network
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`and a control station which make efficient use of radio transmission channels
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`possible by an interface control protocol method for a radio system, which system
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`comprises at least a frequency band provided for the alternate use of a first and a
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`second radio interface standard, the radio system comprising stations which
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`operate in accordance with a first radio interface standard and/or a second radio
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`interface standard, respectively, a control station being provided which controls the
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`alternate use of the frequency band. This is based on th