UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case No. IPR2019-01558
`
`U.S. Patent No.: 8,724,622
`
`
`_________________
`
`STATEMENT REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case No. IPR2019-01558
`
`U.S. Patent No.: 8,724,622
`
`
`_________________
`
`STATEMENT REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`IPR2019-01558
`Patent 8,724,622
`Petitioner Microsoft Corporation, (“Microsoft”) submits this paper pursuant
`
`to the July 2019 Update to the AIA Trial Practice Guide (pp. 26-27), in order to
`
`explain why the Board should institute review based on each of the following two
`
`petitions challenging U.S. Patent No. 8,724,622 (“the ’622 patent”):
`
`• IPR2019-01558, challenging claims 1, 2, 9, 36, 37 and
`
`• IPR2019-01559 challenging claim 5.
`
`While Microsoft raises only a single ground against each challenged claim, two
`
`petitions were necessary to fully address each limitation of the challenged claims
`
`and their respective parent claim(s). Institution of both petitions will be an efficient
`
`use of resources because it requires minimal additional work for the Board, and
`
`would prevent prejudice to Microsoft.
`
`Microsoft ranks the petition challenging claims 1, 2, 9, 36, and 37 (IPR2019-
`
`01558) first and the petition challenging claim 5 (IPR2019-01559) second.
`
`Microsoft so ranks the petitions because IPR2019-01559 challenges a single claim
`
`not currently asserted against Microsoft. However, Microsoft would be severely
`
`prejudiced if its petition challenging claim 5 were denied merely for being presented
`
`in a separate petition, because doing so would encourage patent owner to attempt
`
`assertion of that claim in litigation.
`
`
`
`
`
`Statement Regarding Multiple Petitions
`
`Page 1
`
`
`
`IPR2019-01558
`Patent 8,724,622
`TWO PETITIONS WERE NEEDED TO PREVENT PREJUDICE
`
`I.
`
`Uniloc asserted the ’622 Patent against Microsoft in April 2019, thereby
`
`triggering the one year bar on filing an IPR petition. Wi-Fi One, LLC v. Broadcom
`
`Corp., 878 F.3d 1364, 1367 (Fed. Cir. 2018). While Uniloc currently only asserts
`
`claims 1 and 2 in litigation (in its preliminary infringement contentions), its litigation
`
`history shows that it may later seek to assert different claims in its final infringement
`
`contentions, thus necessitating the challenge of the remaining claims not yet found
`
`unpatentable (5, 9, 36, and 37) in order to prevent prejudice to Microsoft. As
`
`explained below in Section II, two petitions were necessary to fully address claims
`
`1, 2, 5, 9, 36, and 37.
`
`II. TWO PETITIONS WERE NEEDED TO
`ADDRESS ALL LIMITATIONS OF THE CHALLENGED CLAIMS
`Microsoft presents its claim 5 challenge in a separate petition due to word
`
`count limitations. The following table is provided to aid the Board in identifying the
`
`similarities and differences between the petitions:
`
`Cited References
`Challenged Claims
`Petition
`Zydney and Shinder
`IPR2019-01558 9 (depends from 3)
`36 and 37 (depend from 27) Zydney and Shinder
`1 (independent)
`Zydney, Shinder, and Kirkwood
`2 (depends from 1)
`Zydney, Shinder, Kirkwood,
`and Boneh
`Griffin and Zydney
`
`IPR2019-01559 5 (depends from 3 and 4)
`
`As the table shows, the Challenged Claims of the petitions have differing
`
`dependencies. Multiple grounds are not being raised against a same claim, although
`
`Statement Regarding Multiple Petitions
`
`Page 2
`
`
`
`IPR2019-01558
`Patent 8,724,622
`the separate grounds challenging claims 5 and 9 each implicates underlying
`
`independent claim 3. As discussed in Section III of each petition, claim 3 was
`
`previously found unpatentable in view of Zydney and Shinder in IPR2017-01667
`
`and separately unpatentable in view of Griffin and Zydney in IPR2017-01797. These
`
`different grounds both implicate claim 3 because different challenged claims (5 and
`
`9) depend from it. Although claims 5 and 9 both depend from independent claim 3,
`
`claim 5 further depends from dependent claim 4, which was also found unpatentable
`
`in view of Griffin and Zydney. (IPR2017-01797, Paper 32 at 60-63.)
`
`Microsoft challenges claim 5 under a combination of Griffin and Zydney
`
`because the Board previously found that both parent claims of claim 5 (claims 3 and
`
`4) were unpatentable in view of Griffin and Zydney. (IPR2017-01797, Paper 32 at
`
`37-63 (claim 5 was not challenged).) Furthermore, in a different proceeding the
`
`Board previously found claim 5 was not shown to be unpatentable over a
`
`combination including Zydney and Shinder. (IPR2017-01668, Paper 37 at 98-103.)
`
`Thus, in order to promote efficient use of the Board’s resources, and to present a
`
`Statement Regarding Multiple Petitions
`
`Page 3
`
`
`
`IPR2019-01558
`Patent 8,724,622
`single, strongest ground for each claim, claim 5 is challenged under a combination
`
`of Griffin and Zydney.1
`
`Despite the fact that only a single ground is raised for each challenged claim,
`
`Microsoft was unable to fully address all the limitations of the relevant parent claims
`
`for all the Grounds (claims 3 and 27 for Ground 1 in IPR2019-01558 and claims 3
`
`and 4 for Ground 1 in IPR-01559), as well as the limitations of the Challenged
`
`Claims, and still satisfy the word limitation imposed by 37 C.F.R. § 42.24. Since
`
`claim 5 is challenged using a different combination of references than the other
`
`claims, Microsoft elected to file a separate petition challenging claim 5.
`
`III. THE SECOND PETITION ADDS MINIMAL ADDITIONAL WORK
`
`Microsoft raises only a single ground as to each challenged claim. Thus,
`
`Microsoft does not rely on multiple petitions to challenge the same claim using
`
`multiple grounds. Therefore, the second petition adds minimal additional work.
`
`Accordingly, both petitions should be fully considered and instituted.
`
`
`1 While Microsoft believes that claim 5 is unpatentable in view of a combination of
`
`references including Zydney and Shinder, Microsoft has opted not to raise such a
`
`ground in order to avoid redundant challenges to the same claim.
`
`Statement Regarding Multiple Petitions
`
`Page 4
`
`
`
`IPR2019-01558
`Patent 8,724,622
`
`IV. CONCLUSION
`
`As explained above, institution of both petitions would be an efficient use of
`
`the Board’s resources and would require minimal additional work. Microsoft raises
`
`only a single ground as to each challenged claim and, thus, does not seek to raise
`
`redundant challenges to any claim. Microsoft files two petitions only because
`
`adequately presenting the single, strongest ground for each challenged claim
`
`(including addressing all limitations of the challenged claims and the claims from
`
`which they depend) required more than 14,000 words. Furthermore, denial of the
`
`petitions would prejudice Microsoft by depriving it of a fair opportunity to challenge
`
`all the claims of the ’622 patent that Uniloc may attempt to assert against Microsoft.
`
`Dated: September 13, 2019
`
`
`
`Respectfully submitted,
`
`By: /Andrew M. Mason/
`Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`John M. Lunsford, Reg. No. 67,185
`john.lunsford@klarquist.com
`Todd M. Siegel, Reg. No. 73, 232
`Todd.siegel@klarquist.com
`Joseph T. Jakubek, (Reg. No. 34,190)
`joseph.jakubek@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`Statement Regarding Multiple Petitions
`
`Page 5
`
`
`
`IPR2019-01558
`Patent 8,724,622
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that the Statement Regarding Multiple Petitions
`
`was served on September 13, 2019, via Federal Express on the Patent Owner at the
`
`following address of record as listed on PAIR:
`
`Uniloc USA Inc.
`102 N. College Avenue, Suite 303
`Tyler, TX 75702
`The undersigned certifies that a copy of the Statement Regarding Multiple
`
`Petitions was also sent via electronic mail to the attorneys of record for Plaintiff in
`
`the concurrent litigation matters:
`
`
`
`
`
`M. Elizabeth Day - eday@feinday.com
`David Alberti - dalberti@feinday.com
`Sal Lim - slim@feinday.com
`Marc Belloli - mbelloli@feinday.com
`Hong Syd Lin - hlin@feinday.com
`Jeremiah A. Armstrong - jarmstrong@feinday.com
`Kate E. Hart - khart@feinday.com
`Robert Francois Kramer - rkramer@feinday.com
`Russell S. Tonkovich - rtonkovich@feinday.com
`
`
`
`
`
`
`
`By: /Andrew M. Mason/
`Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`John M. Lunsford, Reg. No. 67,185
`john.lunsford@klarquist.com
`Todd M. Siegel, Reg. No. 73, 232
`Todd.siegel@klarquist.com
`Joseph T. Jakubek, (Reg. No. 34,190)
`joseph.jakubek@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`
`
`IPR2019-01558
`Patent 8,724,622
`
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 2
`
`
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