`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 21, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`UNIOLOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00376
`Patent 7,016,676 B2
`____________
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2020-00376
`Patent 7,016,676 B2
`
`On January 3, 2020, Petitioner (“Ericsson”) filed a Petition for inter
`partes review of US Patent No. 7,016,676 B2 (“the ’676 patent”) and a
`Motion for Joinder (“Joinder Motion”) with the proceeding in IPR2019-
`01116 which also involves the ’676 patent. Papers 2, 3.
`In the Joinder Motion, Ericsson states that “Petitioner in the Microsoft
`IPR [IPR2019-01116] does not oppose Ericsson’s instant motion.” Paper 3,
`1. Petitioner also represents that “so long as Microsoft remains an active
`party in the joined proceeding,” “[a]ll filings by Ericsson in the joined
`proceeding shall be consolidated with the filings of Microsoft unless a filing
`solely concerns issues that do not involve Microsoft.” Id. at 8. We are not
`certain what has been proposed by Ericsson and seek clarification through
`this communication.
`It would seem that Ericsson would have few occasions, if any, to
`make any substantive filing in the joined proceeding, if it merely is taking an
`“understudy” role as Ericsson asserts in the Joinder Motion. Id. We are
`uncertain what is meant by “[a]ll filings by Ericsson in the joined proceeding
`shall be consolidated with the filings of Microsoft.” For instance, that could
`mean Ericsson will prepare its own substantive filings and have that material
`included within a “joint paper” that also includes separately the substantive
`arguments and assertions of Microsoft. That kind of “consolidation”
`substantially increases the complexity of the proceeding. Alternatively, the
`alleged “consolidation” could mean a filing with all positions therein
`binding on both Microsoft and Ericsson, and agreed to by both Microsoft
`and Ericsson prior to filing. It is uncertain whether Microsoft has agreed to
`that arrangement.
`
`2
`
`
`
`IPR2020-00376
`Patent 7,016,676 B2
`
`In our view, an “understudy role,” if taken by Ericsson, means
`Ericsson will not be making any substantive filings and will be bound by
`whatever substantive filings Microsoft makes, so long as Microsoft remains
`a party in the proceeding. The same is true for oral hearing presentations.
`Also, Ericsson will not seek to take cross examination testimony of any
`witness or have a role in defending the cross-examination of a witness, so
`long as Microsoft remains a party in the proceeding. Likewise with other
`discovery matters. If and when Microsoft’s participation in the proceeding
`terminates, Ericsson can make its own filings as Petitioner. In short, in its
`“understudy role,” Ericsson will remain completely inactive, but for issues
`that are solely directed and pertinent to Ericsson.
`ORDER
`
`It is
`
`ORDERED that Petitioner is required to submit a Supplemental
`
`Joinder Motion, within seven days of the date of this Order, to clarify the
`matters discussed above;
`
`FURTHER ORDERED that the parties may arrange a joint
`conference call with the Board to discuss any of the above-noted matters,
`prior to Petitioner’s filing of the Supplemental Joinder Motion;
`
`FURTHER ORDERED that the Petitioner and Patent Owner are
`encouraged to reach agreement on the above-noted matters prior to filing of
`the Supplemental Joinder Motion by Petitioner, and to indicate in the
`Supplemental Joinder Motion such agreement if agreement is reached;
`
`3
`
`
`
`IPR2020-00376
`Patent 7,016,676 B2
`
`FURTHER ORDERED that the Supplemental Joinder Motion shall
`
`clearly indicate specifically what terms have been agreed to by Microsoft
`with respect to the requested joinder, if there is any such agreement;
`
`FURTHER ORDERED that Patent Owner’s opposition to the Joinder
`Motion as modified by the Supplemental Joinder motion, if any, is due one
`week after the filing of Petitioner’s Supplemental Joinder Motion; and
`
`FURTHER ORDERED that Patent Owner will inform the Board
`within one week of the filing of Petitioner’s Supplemental Joinder Motion
`whether Patent Owner intends to waive the filing of a preliminary response
`in this proceeding.
`
`
`
`
`4
`
`
`
`IPR2020-00376
`Patent 7,016,676 B2
`
`FOR PETITIONER:
`J. Andrew Lowes
`Clint Wilkins
`Angela Oliver
`Andrew/lowes.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`angela.oliver@haynesboone.com
`
`FOR PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Brian Koide
`Etheridge Law Group
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`brian@etheridgelaw.com
`
`
`
`
`5
`
`
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