IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`__________________
`
`
`IPR2020-00376
`U.S. Patent No. 7,016,676
`
`__________________
`
`
`
`
`PETITIONER’S NOTICE REGARDING FILING TWO PETITIONS
`
`
`
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`__________________
`
`
`IPR2020-00376
`U.S. Patent No. 7,016,676
`
`__________________
`
`
`
`
`PETITIONER’S NOTICE REGARDING FILING TWO PETITIONS
`
`
`
`
`
`
`
`
`Petitioner’s Notice regarding Filing Two Petitions
`IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`Pursuant to the Consolidated Trial Practice Guide dated November 2019,
`
`Ericsson Inc. (“Ericsson” or “Petitioner”) submits this notice of ranking and
`
`explanation of the differences between its petitions challenging various claims of
`
`U.S. Patent No. 7,016,676 to Walke (“the ’676 patent”) for the Board’s
`
`consideration.
`
`Over four months ago, Petitioner filed a single IPR petition challenging claims
`
`1, 2, and 8 of the ʼ676 patent. Now, as described in Petitioner’s Motion for Joinder
`
`filed concurrently herewith, Petitioner seeks to join a recently instituted IPR
`
`(IPR2019-01116) challenging claims 1 and 2 in an “understudy” role. See Microsoft
`
`Corp. v. Uniloc 2017 LLC, IPR2019-01116, Paper 8 (PTAB Dec. 4, 2019)
`
`(Institution Decision) (“the Microsoft IPR”). As such, Petitioner has filed an IPR
`
`petition that is substantively identical to the petition instituted in the Microsoft IPR.
`
`Given that Petitioner’s second petition is a joinder petition, Ericsson’s two
`
`petitions are not the sort of parallel petitions contemplated by the Trial Practice
`
`Guide as placing “a substantial and unnecessary burden on the Board and the patent
`
`owner.” Consolidated Trial Practice Guide at 59. Regardless, Petitioner files this
`
`ranking paper out of an abundance of caution.
`
`
`
`
`
`
`Page 1
`
`
`
`Petitioner’s Notice regarding Filing Two Petitions
`IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`
`Ranking of the Petitions
`
`Although Petitioner believes both petitions have merit, Petitioner requests that
`
`the Board rank the petitions in the following order and not use its discretion to deny
`
`any petition:
`
`Rank Petition
`A
`IPR2019-01550 (“Petition 1”),
`filed August 29, 2019
`IPR2020-00376 (“Petition 2”),
`filed concurrently herewith
`
`B
`
`Claims
`Claims 1, 2, and 8
`
`Claims 1 and 2
`
`Explanation of the Differences Between the Petitions
`
`Petitioner’s two IPR petitions have two primary differences: (1) the set of
`
`claims challenged; and (2) the prior art asserted.
`
`First, the claims challenged in the two IPR petitions do not wholly overlap.
`
`Petition 1 challenges claims 1, 2, and 8 asserted against Ericsson in the parallel
`
`district court litigation, while Petition 2 challenges only claims 1 and 2. To the extent
`
`the challenged claims overlap, this was not of Petitioner’s choosing; rather,
`
`Petition 2 is merely a joinder petition that mirrors the challenges raised in the
`
`Microsoft IPR and therefore challenges the claims Microsoft chose to challenge.
`
`Second, as shown in Table 1 below, the prior art references relied on in each
`
`petition are almost entirely different:
`
`
`
`
`
`
`Page 2
`
`
`
`Petitioner’s Notice regarding Filing Two Petitions
`IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`
`Table 1
`
`IPR2019-01550 Claims
`1, 2
`8
`8
`1, 2
`IPR2020-00376 Claims
`1, 2
`1, 2
`1, 2
`1, 2
`
`References
`§ 103: Shellhammer
`§ 103: Shellhammer and Haartsen
`§ 103: Shellhammer and Panasik
`§ 103: Lansford
`
`§ 103: HomeRF
`§ 103: HomeRF and HomeRF Tutorial
`§ 103: HomeRF and HomeRF Liaison Report
`§ 103: Lansford
`
`All but one ground in Petition 1 relies on Shellhammer as the primary
`
`obviousness reference, while all but one ground in Petition 2 relies on HomeRF as
`
`the primary obviousness reference. Although both petitions raise Lansford as an
`
`independent ground, again, this is simply because Petition 2 is a joinder petition that
`
`intentionally mirrors the petition in the Microsoft IPR.
`
`The Board should institute Petition 1 and Petition 2
`
`The Board should institute Petition 1 and Petition 2 because doing so would
`
`not be redundant consideration of the same grounds or claims, nor would it place a
`
`substantial or unnecessary burden on the Board or Patent Owner.
`
`First, Petition 1 and Petition 2 are not redundant. Petition 1 challenges an
`
`additional claim—claim 8—that Patent Owner has asserted against Ericsson’s
`
`products in litigation. Moreover, although claims 1 and 2 are challenged in both
`
`
`Page 3
`
`
`
`Petitioner’s Notice regarding Filing Two Petitions
`IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`petitions, the prior art references relied upon are largely different between the two
`
`petitions.
`
`It is critical that Ericsson have an opportunity to challenge claims 1, 2, and 8
`
`because Patent Owner has asserted each of those three claims against Ericsson’s
`
`products in district court litigation. For this reason, Petitioner requests that the Board
`
`at least institute Petition 1, which addresses all three of the claims asserted against
`
`Ericsson’s products. Instituting only Petition 2 (and not Petition 1) on non-
`
`substantive grounds would deny Petitioner the forum Congress created to address
`
`patentability issues in a speedy and cost-effective manner.
`
`Second, instituting both petitions would not place a substantial or unnecessary
`
`burden on the Board or Patent Owner. Unlike a true “parallel petition” scenario,
`
`here, the Board has already instituted an IPR that is substantively identical to the
`
`IPR requested by Petition 2. Thus, instituting Petition 2 would not add any additional
`
`burden to the Board or to Patent Owner, as Petitioner has agreed to act in an
`
`“understudy” capacity. As a result, the trial schedule for the IPR requested by
`
`Petition 2 should be the same as the Microsoft IPR, as explained in Petitioner’s
`
`associated motion for joinder.
`
`Conclusion
`
`
`
`In sum, because Ericsson’s second petition is a joinder IPR petition,
`
`Petitioner’s two petitions do not raise any concerns regarding fairness, timing, or
`
`
`Page 4
`
`
`
`Petitioner’s Notice regarding Filing Two Petitions
`IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`efficiency. Petitioner therefore respectfully requests that the Board institute both
`
`inter partes reviews.
`
`
`Dated: January 3, 2020
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/J. Andrew Lowes/
`J. Andrew Lowes
`Lead Counsel for Petitioner
`Registration No. 40,706
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Phone: (972) 680-7557
`andrew.lowes.ipr@haynesboone.com
`
`Clint Wilkins
`Registration No. 62,448
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Phone: (972) 739-6927
`clint.wilkins.ipr@haynesboone.com
`
`Angela Oliver
`Registration No. 73,271
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Phone: (202) 654-4552
`angela.oliver.ipr@haynesboone.com
`
`ATTORNEYS FOR PETITIONER
`
`
`
`
`
`Page 5
`
`
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