Case 2:19-cv-00126-JRG Document 40 Filed 01/31/20 Page 1 of 11 PageID #: 337
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`UNILOC 2017 LLC,
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`Civil Action No. 2:19-cv-00126-JRG
`
`
`PATENT CASE
`
`
`JURY TRIAL DEMANDED
`
`Plaintiff,
`
`
`Defendants.
`
`
`v.
`
`SAMSUNG ELECTRONICS AMERICA,
`INC. and SAMSUNG ELECTRONICS CO.
`LTD.,
`
`
`
`
`
`
`
`
`DEFENDANTS’ MOTION TO STAY PENDING INTER PARTES REVIEW
`OF ALL ASSERTED CLAIMS OF THE PATENT-IN-SUIT
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`ACTIVE 48461962v3
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`SAMSUNG EXHIBIT 1015
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC
`IPR2020-00117
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`Page 1 of 293
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`Case 2:19-cv-00126-JRG Document 40 Filed 01/31/20 Page 2 of 11 PageID #: 338
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`INTRODUCTION
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`Defendants Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd.
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`(collectively “Samsung”) respectfully move the Court to stay this action involving Uniloc’s
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`allegations of infringement of U.S. Patent No. 7,136,999 (“the ’999 Patent”) until completion of
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`two inter partes review (“IPR”) proceedings based upon two distinct IPR petitions, one filed by
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`Apple, which was instituted on January 21, 2020, and one filed by Samsung.
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`This case is in its early stages. Claim construction briefing has not begun, no depositions
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`have taken place, fact discovery is ongoing, and trial is nearly nine months away. Under similar
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`factual circumstances, Uniloc has told federal courts, including this Court, that a stay would be an
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`efficient use of both judicial and party resources. In fact, in the only other litigation currently
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`pending in district court over the ’999 Patent, Uniloc has told Apple that it will not oppose a stay
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`of litigation pending the completion of the Apple IPR proceeding. Sommer Decl., Ex. C at 1.1
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`As explained further below, a stay of this litigation will promote efficiency, conserve
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`judicial resources, and result in substantial savings to the parties. Indeed, each of the three factors
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`that district courts consider when deciding whether to stay a case favor staying this case pending
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`the completion of the IPR proceedings and any appeals that may result from those proceedings.
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`
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`BACKGROUND
`A.
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`This Litigation
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`Uniloc has asserted claims 13 and 17 of the ’999 Patent against Samsung. See Dkt. 33-1
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`(Sommer Decl.), ¶ 4 & Ex. B (exhibit to infringement contentions). Claim construction briefing
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`1 All references to “Ex. __” in this Motion refer to Exhibits to the Declaration of Andrew R.
`Sommer submitted with this Motion.
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`1
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`Case 2:19-cv-00126-JRG Document 40 Filed 01/31/20 Page 3 of 11 PageID #: 339
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`has not started. Fact discovery is ongoing but no depositions have taken place. Jury selection is
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`scheduled for September 14, 2020.
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`B.
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`The IPR Proceedings
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`On January 21, 2020, the PTAB instituted trial on the IPR petition filed by Apple in Apple
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`Inc. v. Uniloc 2017 LLC, IPR2019-01337. See Ex. A at 2, 21. All claims of the ’999 Patent are
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`subject to trial in the Apple IPR proceeding. Id. at 21. A final written decision is expected in that
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`proceeding no later than January 21, 2021. Uniloc has agreed not to oppose a motion to stay the
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`Apple case based on that IPR proceeding. See Ex. C (A. Jacob’s email to Apple’s counsel).
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`Samsung filed its own IPR petition raising additional prior art on October 31, 2019—before
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`Samsung served its invalidity contentions in this case. Ex. B at 2-3. Samsung’s petition challenges
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`both of the patent claims asserted in this case. Id. An institution decision is expected on Samsung’s
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`petition on or before June 9, 2020, and a final decision is expected within a year of that date.
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` LEGAL STANDARD
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`“A district court has the inherent power to control its own docket, including the power to
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`stay proceedings before it.” Ericsson Inc. v. TCL Commc’n Tech., Holdings, Ltd., 2016 WL
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`1162162, at *1 (E.D. Tex. Mar. 23, 2016); see also Landis v. N. Am. Co., 299 U.S. 248, 254 (1936)
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`(“[T]he power to stay proceedings is incidental to the power inherent in every federal court to
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`control disposition of the causes on its docket with economy of time and effort for itself, for
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`counsel, and for litigants.”). “A stay is particularly justified when ‘the outcome of a PTO
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`proceeding is likely to assist the court in determining patent validity or eliminate the need to try
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`infringement issues.’” Ericsson, 2016 WL 1162162, at *1 (quoting NFC Tech., LLC v. HTC Am.,
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`2015 WL 1069111, at *1 (E.D. Tex. Mar. 11, 2015)); see also Evolutionary Intelligence, LLC v.
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`Case 2:19-cv-00126-JRG Document 40 Filed 01/31/20 Page 4 of 11 PageID #: 340
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`Millennial Media, Inc., 2014 WL 2738501, at *2 (N.D. Cal. Jun. 11, 2014); 3rd Eye Surveillance,
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`LLC v. Stealth Monitoring, Inc., 2015 WL 179000, at *1 (E.D. Tex. Jan. 14, 2015).
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`Indeed, since the Federal Circuit’s decision in VirtualAgility, Inc. v. Salesforce.com, Inc.,
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`759 F.3d 1307 (Fed. Cir. 2014), “courts have been nearly uniform in granting motions to stay
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`proceedings in the trial court after the PTAB has instituted inter partes review proceedings.” NFC
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`Tech., 2015 WL 1069111, at *6 (citing cases); see also Ericsson, 2016 WL 1162162, at *2;
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`MemStart Semiconductor Corp. v. AAC Techs. Pte. Ltd., 2015 WL 10936046, at *2 (E.D. Tex. Jul.
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`10, 2015) (Gilstrap, J.).
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`“District Courts typically consider three factors when determining whether to grant a stay
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`pending inter partes review of a patent in suit: (1) whether the stay will unduly prejudice the
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`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
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`including whether discovery is complete and a trial date has been set, and (3) whether the stay will
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`likely result in simplifying the case before the court.” NFC Tech., 2015 WL 1069111, at *2.
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`“Based on th[ese] factors, courts determine whether the benefits of a stay outweigh the inherent
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`costs of postponing resolution of the litigation.” Id.
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` ARGUMENT
`A.
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`Uniloc’s Own Actions Show It Will Suffer No Prejudice From a Stay
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`There are two current litigations involving the ’999 Patent: this case and Uniloc 2017 LLC
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`v. Apple Inc., No. 3:19-cv-01904-WHO (N.D. Cal.). On January 24, 2020, Uniloc agreed to stay
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`its action against Apple pending resolution of the instituted IPR. See Ex. C. Accordingly, Uniloc’s
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`own actions demonstrate that it is willing to wait for the resolution of IPR proceedings to vindicate
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`its patent rights when it comes to the ’999 Patent. NFC Tech., 2015 WL 1069111, at *2.
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`Uniloc’s willingness to stay litigation while an IPR is pending has been demonstrated time
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`and time again in various federal courts. For example, in Uniloc 2017 LLC v. Motorola Mobility,
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`LLC, 1:18-cv-01841-RGA-SRF, Uniloc sought a continuance of a claim construction hearing in
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`the District of Delaware because an IPR institution decision was expected shortly after the
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`scheduled claim construction hearing. Ex. E at 1. Uniloc explained that if the IPR was instituted,
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`it “would agree to a stay of this litigation, thereby rendering moot (and perhaps wasted) the time
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`and effort the Court will expend in preparing for” the claim construction hearing. Id. As another
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`example, Uniloc has agreed to stay litigation before this Court in Uniloc 2017 LLC v. Verizon
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`Communications, Inc., No. 2:18-cv-00513-JRG, pending the resolution of an IPR, even though all
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`asserted claims were not at issue in the IPR proceeding and claim construction briefing had already
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`begun. See Ex. F at 2; see also Ex. G (Uniloc agreeing to stay litigation when two of four asserted
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`claims were subject to IPR); Ex. D (Uniloc agreeing to stay litigation when most asserted claims
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`were subject to IPR). In its motion to this Court in the Verizon case, Uniloc represented that the
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`stay “may efficiently resolve some or many of the issues in the case while preserving the Parties’
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`resources and the Court’s resources . . . .” Id. This is true here too.
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`Uniloc’s own willingness to stay litigation pending the resolution of IPR proceedings
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`demonstrates that any delay in resolving district court litigation is outweighed by efficiency. In
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`Uniloc’s own words, a stay will preserve “the Parties’ resources,” including its own. Ex. F at 2.
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`But, even if Uniloc points to the delay caused by a stay as weighing against a stay, such delay “is
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`present in every case in which a patentee resists a stay, and it is therefore not sufficient, standing
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`alone, to defeat a stay motion.” NFC Tech., 2015 WL 1069111, at *5.
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`Therefore, this factor weighs in favor of staying this action.
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`Case 2:19-cv-00126-JRG Document 40 Filed 01/31/20 Page 6 of 11 PageID #: 342
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`B.
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`This Case is At a Very Early Stage
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`The relatively early stage of this case also favors granting a stay pending the resolution of
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`the IPRs. When determining whether to institute a stay pending IPR, the Court considers the stage
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`of the proceedings, including the diligence in filing the IPR petition and moving to stay. NFC
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`Tech., 2015 WL 1069111 at *3. Here, the case is in its relatively early stages and closely mirrors
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`other cases in which Uniloc has agreed to stay proceedings, such as the Apple, Motorola Mobility,
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`and Verizon cases discussed above. See supra § IV.A. The complaint and answer in this action
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`were filed in April 2019 and July 2019, respectively. See Dkt. 1 & 13. Uniloc served its
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`infringement contentions on September 6, 2019. Dkt. 33-1 (Sommer Decl.), ¶ 4 & Ex. B. This
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`Court held a case management conference on October 16, 2019. Claim construction briefing has
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`not begun. A claim construction hearing is scheduled for March 25, 2020. Expert discovery has
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`not begun, and significant fact discovery remains to be completed. For example, the parties have
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`not taken any fact depositions. Trial is scheduled for September 14, 2020.
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`Moreover, Samsung filed its IPR petition on October 31, 2019. See Ex. B at 65. This was
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`even before Samsung served invalidity contentions in this case. Dkt. 25 at 3. Samsung was
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`therefore diligent in pursuing its petition for IPR.
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`Given the significant work that remains in this case, and the fact that both Apple’s instituted
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`IPR and Samsung’s IPR petition will simplify the issues in this case, this factor also weighs in
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`favor of a stay. This is especially true here, where the docket control order was just entered a few
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`months ago. See Dkt. 25; see also e.g., MemStart Semiconductor, 2015 WL 10936046, at *2
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`(finding that “the relatively early stage of this case at present . . . weighs in favor of granting a
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`stay” when the docket control order was entered three months prior to the decision).
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`Uniloc has admitted that the stage of litigation favored a stay even when cases were more
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`advanced than this one. In fact, Uniloc has agreed not to oppose a motion to stay in the case it
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`brought over the ’999 Patent against Apple. See Ex. C (A. Jacobs email to Apple’s counsel). Claim
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`construction briefing was already well underway in that action. As another example showing that
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`Uniloc does not view the stage of this case as being too advanced for a stay, in Uniloc 2017 LLC
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`v. Verizon Communications, Inc., No. 2:18-cv-00513-JRG, Uniloc contended that a stay was
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`warranted because claim construction briefing “was not complete.” Ex. F at 2. In other
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`circumstances, Uniloc admitted it would agree to a stay if an IPR was instituted even though claim
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`construction had been fully briefed. See Ex. E at 1 (“If an IPR is instituted, Uniloc would agree to
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`a stay of this litigation, thereby rendering moot (and perhaps wasted) the time and effort the Court
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`will expend in preparing for a . . . claim construction hearing.”). In yet another case—one Uniloc
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`filed against Samsung no less—Uniloc and Samsung agreed that even when the case “is at an
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`advanced stage,” a stay was warranted because “the Court has not yet conducted pretrial
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`proceedings or trial.” Ex. H at 3. This is certainly true here too.
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`Based on the foregoing, the relatively early stage of this case weighs in favor of granting a
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`stay while the pending IPR proceedings—one of which has already been instituted—are being
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`litigated in front of the PTAB.
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`C.
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`A Stay Will Simplify This Case
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`“[T]he most important factor bearing on whether to grant a stay in this case is the prospect
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`that the inter partes review proceeding will result in simplification of the issues before the Court.”
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`NFC Tech., 2015 WL 1069111, at *4. “[T]he PTAB’s decision to institute inter partes review
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`ordinarily means that there is a substantial likelihood of simplification of the district court
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`litigation.” Id.; Evolutionary Intelligence, LLC v. LivingSocial, Inc., 2014 WL 213179, at *2 (N.D.
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`Case 2:19-cv-00126-JRG Document 40 Filed 01/31/20 Page 8 of 11 PageID #: 344
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`Cal. Jan. 17, 2014) (“This case will be simplified if the PTO narrows or cancels any of the asserted
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`claims, even if other claims remain in their original form.”) (emphasis in original). Indeed, based
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`on recent PTO statistics, 81% of instituted IPR petitions have resulted in some or all instituted
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`claims being found invalid. See Ex. M, U.S. Patent & Trademark Office, “Trial Statistics” (April
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`2019)
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`at
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`10,
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`available
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`at
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`https://www.uspto.gov/sites/default/files/documents/trial_statistics_apr_2019.pdf.
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`It cannot be disputed that a stay of this litigation will simplify this case. The PTAB has
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`already concluded that Apple has demonstrated a reasonable likelihood that all claims of the ’999
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`Patent are unpatentable. See Ex. A at 2. Samsung’s invalidity contentions served in this litigation
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`rely, in part, on the same prior art that is being relied on by Apple in the instituted IPR proceedings.
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`Compare Ex. A at 4 (identifying grounds for trial as including Varadharajan and Hind) with Ex. I
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`(claim chart based on Hind reference) & Ex. J (claim chart for Varadharajan). Moreover, Samsung
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`has provided invalidity contentions that rely in part on the same prior art that is at issue in its IPR
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`petition. Compare Ex. B at 2-3 (identifying Hokkanen, Dent, Aditham, and Beadle references)
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`with Ex. K (claim chart for Hokkanen and Dent prior art challenge) & Ex. L (claim chart providing
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`Aditham and Beadle prior art challenge). Because the Apple IPR was instituted on all asserted
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`claims based upon prior art at issue in this action and Samsung’s IPR proceeding presents
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`additional prior art also at issue in this action, a stay would simplify the issues in the case. Uniloc
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`USA, Inc. v. Samsung Elec. Am., Inc., 2017 WL 9885168, at *1 (E.D. Tex. June 13, 2017) (“[E]ven
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`if the PTAB does not invalidate every claim on which it has instituted IPR, there is a significant
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`likelihood that the outcome of the IPR proceedings will streamline the scope of this case to an
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`appreciable extent.”). Indeed, none of the asserted claims would remain should the PTAB
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`invalidate the claims challenged in the IPRs.
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`To further simplify this case, Samsung is willing to agree to be bound by the same estoppel
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`that limits Apple should Apple’s IPR result in a final written decision as set forth by 35 U.S.C. §
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`315(e)(2). Such agreement ensures that post-stay proceedings before the district court would be
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`simplified even if the PTAB were to confirm the asserted claims in that IPR. This Court has granted
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`defendants’ motions to stay pending the final resolution of the IPR institution if they agree to be bound
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`by the outcome of the IPR(s) filed by a non-party or co-defendant. See, e.g., Intellectual Ventures I
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`LLC v. HCC Insurance Holdings, Inc., No. 6:15-cv-00660-JRG-KNM, Dkt. No. 126 (E.D. Tex. Oct.
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`26, 2016) (granting HCC’s motion to stay pending IPRs in which HCC agreed to be fully bound by the
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`outcome of the IPR proceedings filed by BITCO which was a defendant in a separate case); Realtime
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`Data, LLC v. Dell Inc., No. 6:16-cv-00089-RWS-JDL, Dkt. No. 117 (E.D. Tex. Feb. 7, 2018) (granting
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`EMC’s motion to stay after EMC filing a notice stating that it agrees to be bound by the full statutory
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`estoppel that limits HP, Dell, and Oracle as set forth by 35 U.S.C. § 315). In short, “[w]hen IPR is
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`instituted on all asserted claims and when all defendants are bound by the estoppel provisions of 35
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`U.S.C. § 315[(e)(2)], this factor generally favors a stay.” SSL Services LLC v. Cisco Systems Inc., 2016
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`WL 3523871, at *3 (E.D. Tex. June 28, 2016).
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`CONCLUSION
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`For all of the forgoing reasons, Defendants’ Motion to Stay Pending Inter Partes Review
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`of All Asserted Claims of the Patent-In-Suit should be granted and this case stayed pending the
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`final resolution of the Apple IPR petition as well as the IPR petition filed by Samsung (including
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`appeals therefrom).
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`Case 2:19-cv-00126-JRG Document 40 Filed 01/31/20 Page 10 of 11 PageID #: 346
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`Dated: January 31, 2020
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`Respectfully submitted,
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`
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`By: /s/ Andrew R. Sommer
`Andrew R. Sommer
`GREENBERG TRAURIG, LLP
`1750 Tysons Boulevard, Suite 1000
`McLean, VA 22102
`Telephone: (703) 749-1370
`Email: sommera@gtlaw.com
`
`Richard A. Edlin
`Allan A. Kassenoff
`GREENBERG TRAURIG, LLP
`MetLife Building, 200 Park Avenue
`New York, NY 10002
`Telephone: (212) 801-9200
`Facsimile: (212) 801-6400
`Email: edlinr@gtlaw.com
`Email: kassenoffa@gtlaw.com
`
`Vivian S. Kuo
`GREENBERG TRAURIG, LLP
`2101 L Street NW, Suite 1000
`Washington, DC 20037
`Telephone: (202) 331-3158
`Email: kuov@gtlaw.com
`
`Melissa R. Smith
`Bar No. 24001351
`GILLAM & SMITH LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
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`Counsel for Defendants Samsung Electronics Co.,
`Ltd., and Samsung Electronics America, Inc.
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`Case 2:19-cv-00126-JRG Document 40 Filed 01/31/20 Page 11 of 11 PageID #: 347
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`CERTIFICATE OF CONFERENCE
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`On January 27, 2020, Allan Kassenoff, Tom Gorham, and Andrew Sommer, counsel
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`for Samsung, conferred with Brian Tollefson, Shawn Latchford, and Aaron Jacobs, counsel for
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`Uniloc, as required by Local Rule 7(h). Counsel for Uniloc confirmed that Uniloc opposes this
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`motion. Discussions conclusively ended at an impasse, leaving an open issue for the Court to
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`resolve.
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`/s/ Andrew R. Sommer
`Andrew R. Sommer
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 31st day of January, 2020, I caused the foregoing
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`DEFENDANTS’ MOTION TO STAY PENDING INTER PARTES REVIEW OF ALL
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`ASSERTED CLAIMS OF THE PATENT-IN-SUIT to be served on all parties in this action
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`via the Court’s CM/ECF system.
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`/s/ Andrew R. Sommer
`Andrew R. Sommer
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`Case 2:19-cv-00126-JRG Document 40-1 Filed 01/31/20 Page 1 of 4 PageID #: 348
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`UNILOC 2017 LLC
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`Civil Action No. 2:19-cv-00126-JRG
`
`
`PATENT CASE
`
`
`JURY TRIAL DEMANDED
`
`Plaintiff,
`
`
`Defendants.
`
`
`v.
`
`SAMSUNG ELECTRONICS AMERICA,
`INC. and SAMSUNG ELECTRONICS CO.
`LTD.,
`
`
`
`
`
`
`
`
`DECLARATION OF ANDREW R. SOMMER IN SUPPORT OF DEFENDANTS’
`MOTION TO STAY PENDING INTER PARTES REVIEW OF
`ALL ASSERTED CLAIMS OF THE PATENT-IN-SUIT
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`Case 2:19-cv-00126-JRG Document 40-1 Filed 01/31/20 Page 2 of 4 PageID #: 349
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`I, Andrew R. Sommer, hereby declare as follows:
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`1.
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`I am an attorney with the law firm of Greenberg Traurig, LLP, attorneys for
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`Defendants Samsung Electronics America, Inc. and Samsung Electronics Co. Ltd. in this action
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`(“Samsung”). I submit this declaration in support of Defendants’ Motion to Stay Pending Inter
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`Partes Review of All Asserted Claims of the Patent-in-Suit.
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`2.
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`Attached as Exhibit A to my Declaration is a true and correct copy of DECISION
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`Institution of Inter Partes Review filed as Paper 7 in Apple Inc. v. Uniloc 2017 LLC, IPR2019-
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`01337 pending before the United States Patent & Trademark Office’s Patent Trial and Appeal
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`Board on or about January 21, 2020.
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`3.
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`Attached as Exhibit B to my Declaration is a true and correct copy of the Petition
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`for Inter Partes Review of U.S. Patent No. 7,136,999 filed by Samsung Electronic America, Inc.
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`with the United States Patent & Trademark Office’s Patent Trial and Appeal Board on October
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`31, 2019.
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`4.
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`Attached as Exhibit C to my Declaration is a true and correct copy of an email
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`chain including an email between Aaron Jacobs and Christine Corbett obtained from the federal
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`courts’ PACER system and filed in case 3:19-cv-01904-WHO as Dkt. 86-6.
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`5.
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`Attached as Exhibit D to my Declaration is a true and correct copy of a Joint
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`Stipulation and Motion for Stay filed in Uniloc 2017 LLC v. AT&T Mobility Services, Inc., No.
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`2:19-cv-00102 as Dkt. 45 on December 3, 2019.
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`6.
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`Attached as Exhibit E to my Declaration is a true and correct copy of Plaintiff’s
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`Motion to Continue Claim Construction Hearing in Uniloc 2017 LLC v. Motorola Mobility, LLC,
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`No. 1:18-cv-01841-RGA-SRF as Dkt. 60 on December 11, 2019.
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`7.
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`Attached as Exhibit F to my Declaration is a true and correct copy of a Joint
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`Stipulation and Motion for Stay filed in Uniloc 2017 LLC v. Verizon Communications, Inc., No.
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`2:18-cv-00513-JRG as Dkt. 63 on December 18, 2019.
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`8.
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`Attached as Exhibit G to my Declaration is a true and correct copy of a Joint
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`Stipulation With Proposed Stay filed in Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00495-
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`JRG-RSP, filed as Dkt. 139 on December 6, 2019.
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`9.
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`Attached as Exhibit H to my Declaration is a true and correct copy of a Joint
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`Motion to Stay Pending Inter Partes Review of U.S. Patent No. 7,167,487 filed in Uniloc USA,
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`Inc. v. Samsung Electronics America, Inc., No. 2:18-cv-00044 (JRG-RSP) as Dkt. 118 on June 7,
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`2019.
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`10.
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`Attached as Exhibit I to my Declaration is a true and correct copy of a claim chart
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`mapping disclosures of U.S. Patent No. 6,772,331 to Hind to the elements of claim 13 as served
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`with Samsung’s invalidity contentions in this action.
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`11.
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`Attached as Exhibit J to my Declaration is a true and correct copy of a claim chart
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`mapping disclosures of U.S. Patent No. 5,887,063 to Varadharajan and, inter alia Specification
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`of the Bluetooth System-Core, v.1.0B (Dec. 1, 1999) to the asserted claims as served with
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`Samsung’s invalidity contentions in this action.
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`12.
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`Attached as Exhibit K to my Declaration is a true and correct copy of a claim
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`chart mapping disclosures of PCT Patent Application Publication No. WO 98/28929 to
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`Hokkanen and, inter alia, U.S. Patent No. 5,812,955 to Dent against the asserted claims as
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`served with Samsung’s invalidity contentions in this action.
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`13.
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`Attached as Exhibit L to my Declaration is a true and correct copy of a claim
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`chart mapping disclosures of U.S. Patent No. 6,766,373 to Beadle and U.S. Patent No. 5,706,349
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`Case 2:19-cv-00126-JRG Document 40-1 Filed 01/31/20 Page 4 of 4 PageID #: 351
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`to Aditham against the asserted claims as served with Samsung’s invalidity contentions in this
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`action.
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` declare under penalty of perjury under the laws of the United States of America that the
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` I
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`foregoing is true and correct to the best of my knowledge.
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`
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`January 31, 2020
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`
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`/s/ Andrew R. Sommer
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`EXHIBIT A
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` Paper 7
`Trials@uspto.gov
`571-272-7822
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`Entered: January 21, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`IPR2019-01337
`Patent 7,136,999 B1
`____________
`
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314; 37 C.F.R. § 42.4(a)
`
`
`
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`IPR2019-01337
`Patent 7,136,999 B1
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`
`I. INTRODUCTION
`Apple filed a Petition requesting an inter partes review of claims 1–17
`of U.S. Patent No. 7,136,999 B1 (Ex. 1001, “the ’999 patent”). Paper 2
`(“Pet.”). Uniloc 2017, identified as a real party-in-interest to the ’999 patent
`(Paper 4, 1), filed a Preliminary Response to the Petition. Paper 6 (“Prelim.
`Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the
`record, we conclude that Petitioner is reasonably likely to prevail with
`respect to at least one of the challenged claims.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties identify several district court cases involving the ’999
`patent. Pet. 1–2; Prelim. Resp. 8.
`
`B. The ’999 Patent
`The ’999 patent, titled Method and System for Electronic Device
`Authentication, issued November 14, 2006. Ex. 1001, code (45), (54). In
`particular, the ’999 patent describes the process of authenticating devices
`using Bluetooth. Id. at 1:11–59. Specifically, according to the ’999 patent,
`to establish a link using Bluetooth when the devices are less than 100 meters
`apart, a user enters the same numerical code (key) in the two devices, the
`devices then communicate to verify that the numbers match, and, if so, each
`
`2
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`device stores the key and uses it to authenticate the two devices for any
`subsequent Bluetooth link between them. Id. at 1:39–53. The ’999 patent
`also describes basic authentication over wide area networks, including the
`Internet, which typically requires a user to enter a user ID and password
`combination. Id. at 1:60–67.
`The ’999 patent recognizes that once two devices are authenticated on
`a restricted network, using an authentication scheme such as Bluetooth, the
`two devices can be re-connected through another, unrestricted network, such
`as the Internet by, for example, reusing the stored restricted network
`authentication information. Id. at 2:24–30, 2:43–49, 4:40–55. According to
`the ’999 patent, security is maintained because the initial authentication and
`exchange of key information occurs in the secure system, for example, in a
`context where physical proximity is required. Id. at 4:56–64.
`
`C. Illustrative Claim
`Claims 1, 13, 14, and 17 are independent. Claims 1 and 13 are
`
`illustrative of the subject matter at issue and read as follows:
`1. A method of authenticating first and second electronic
`devices, comprising:
`upon link set-up over a short-range wireless link,
`executing an authentication protocol by exchanging
`authentication information between the first and second
`electronic devices to initially authenticate communication
`between the first and second devices;
`later, when the first and second electronic devices
`are beyond the short-range wireless link, executing the
`authentication protocol by exchanging the authentication
`information between the first and second electronic
`devices over an alternate communications link, then only
`allowing communication between the first and second
`
`3
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`
`devices if the first and second devices had initially been
`successfully authenticated.
`13. A method of authenticating first and second electronic
`devices, comprising:
`upon link set-up over a first link, executing an
`authentication protocol by exchanging authentication
`information between the first and second electronic
`devices to initially authenticate communication between
`the first and second devices;
`later, when the first and second electronic devices
`are connected using a second link, executing the
`authentication protocol by exchanging the authentication
`information between the first and second electronic
`devices over the second link, then only allowing
`communication between the first and second devices if
`the first and second devices had initially been
`successfully authenticated.
`Ex. 1001, 5:17–31, 6:1–14 (emphases added to disputed limitation).
`Claims 14 and 17—and, therefore, all challenged claims—contain a
`limitation substantially similar to that emphasized above. See id. at
`6:22–23, 6:47.
`
`
`
`D. Proposed Grounds of Unpatentability
`Claims
`35 U.S.C. §
`Reference(s)/Basis
`Challenged
`103
`1–3, 6–8, 11–14, 16, 17
`1, 2, 4, 5, 7–10, 13–15, 17 103
`13
`103
`
`1 U.S. Patent No. 5,887,063 (filed July 29, 1996, issued March 23, 1999)
`(Ex. 1003).
`2 Specification of the Bluetooth System, Wireless Connections Made Easy,
`Core, Volume 1, Version 1.0B, (December 1, 1999) (Ex. 1004).
`3 U.S. Patent No. 6,772,331 B1 (filed May 21, 1999, issued Aug. 3, 2004)
`4
`
`Varadharajan1
`Varadharajan and BT Core2
`Hind3
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`Pet. 4, 8–68. Petitioner also relies on the Declaration of Jon Weissman
`Ph.D. (Ex. 1006).
`Petitioner asserts that Varadharajan is prior art to the ’999 patent
`under 35 U.S.C. § 102(b), BT Core is prior art under § 102(a), and Hind is
`prior art under § 102(e). Id. at 3, 30–31 (citing Ex. 1008 (the Declaration of
`Michael Foley) along with Exs. 1006, 1009, and 1010–12 to show the public
`accessibility of BT Core). Patent Owner does not, at this stage of the
`proceeding, challenge the prior art status of any cited reference. On this
`record, the references asserted by Petitioner appear to qualify as prior art to
`the challenged claims of the ’999 patent.
`
`III. ANALYSIS
`
`A. Level of Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. See Al-Site
`Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing Graham
`v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The level of skill in the art
`also informs the claim construction analysis. See Teva Pharm. USA, Inc. v.
`Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (explaining that claim construction
`seeks the meaning “a skilled artisan would ascribe” to the claim term “in the
`context of the specific patent claim”).
`Petitioner asserts that a person of ordinary skill in the art “would have
`had at least a bachelor’s degree in computer science, computer engineering,
`or a related subject, and two years of experience, including industry and
`
`
`(Ex. 1005).
`
`5
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`graduate experience, working with security system, including
`encryption/decryption and authentication processes.” Pet. 5–6 (citing Ex.
`1006 ¶¶ 31–32). Patent Owner does not dispute Petitioner’s characterization
`of the level of ordinary skill in the art. Prelim. Resp. 8 (“For purposes of
`this Preliminary Response only, the Patent Owner does not dispute
`Pe