IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSON INC.,
`
`Petitioner, v.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
`Case No. IPR2020-00376
`U.S. Patent No. 7,016,676
`
`SUPPLEMENTAL MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b) TO
`RELATED INTER PARTES REVIEW IPR2019-01116
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 1 of 21
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSON INC.,
`
`Petitioner, v.
`
`UNILOC 2017 LLC,
`
`Patent Owner.
`
`Case No. IPR2020-00376
`U.S. Patent No. 7,016,676
`
`SUPPLEMENTAL MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b) TO
`RELATED INTER PARTES REVIEW IPR2019-01116
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 1 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`TABLE OF CONTENTS
`
`Statement of Precise Relief Requested
`Background and Related Proceedings
`
`1
`2Background and Related Proceedings
`
`3 S
`
`tatement of Reasons for Relief Requested 3Statement of Reasons for Relief
`4
`Requested
`Legal Standard
`3Legal Standard
`
`4 P
`
`etitioner’s Motion for Joinder is Timely4Petitioner’s Motion for Joinder
`5
`is Timely
`The Kyocera Factors Favor Joinder 4The Kyocera Factors Favor Joinder
`5
`
`Factor 1: Joinder is appropriate
`
`4Factor 1: Joinder is appropriate
`
`actor 2: Ericsson’s petition proposes no new grounds
`6of unpatentability
`of unpatentability
`7
`
`5 F
`
`i.
`
`ii.
`
`iii.
`
`Factor 3: Joinder will not unduly burden or negatively
`impact the Microsoft IPR trial schedule6impact the Microsoft IPR trial
`schedule
`7
`Factor 4: Procedures to simplify briefing and discovery
`8Factor 4:
`9
`Procedures to simplify briefing and discovery
`Conclusion
`10Conclusion
`13
`
`iv.
`
`I.
`II.
`
`III.
`
`a.
`
`b.
`
`c.
`
`IV.
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 2 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`Cases
`
`TABLE OF AUTHORITIES
`
`AT&T Servs., Inc. v. Convergent Media Solutions, LLC,
`
`IPR2017-01235, Paper 11 at 36–37 (PTAB May 9, 2017)
`
`11
`
`Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9 (PTAB May 30, 2019)
`...............................................7, 98, 12
`
`BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01283, Paper 10 (PTAB Nov. 5,
`
`2019)
`
`67
`
`Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 14 (Oct. 30, 2018)
`
`8.9 Everlight Electronics Co., Ltd., IPR2018-01260, Paper 12 (PTAB Nov. 14,
`
`2018) 8.9 Intel Corp. v. Alacritech, Inc., IPR2018-01352, Paper 11 (PTAB Jan. 8,
`
`2019) ......................................... 7, 9, 108, 12
`
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) 4
`
`Lear, Inc. v. Adkins, 395 U.S. 653 (1969)
`56
`
`Pfizer Inc. v. Sanofi-Aventis Deutschland GmbH, IPR2019-00980, Paper 12
`
`(PTAB Aug. 15, 2019)
`
`89
`
`Samsung Elecs., Co. v. Raytheon Co., IPR2016-00962, Paper 12 (PTAB Aug. 24,
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 3 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`2016) ...................................................................................................................4,
`
`67
`
`Sony Corp. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 (PTAB Oct. 15,
`
`2015) ............................................6,
`
`10.....................................................................7, 12
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 4 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`Statutes
`
`34
`35 U.S.C. § 315(b)
`35 U.S.C. § 315(c) .................................................................................................1,
`32, 4
`
`Rules
`37 C.F.R. § 42.122(b) ....................................................................................... 1, 3,
`42, 4, 5
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 5 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`I.
`
`Statement of Precise Relief Requested
`
`Ericsson Inc. (“Ericsson” or “Petitioner”) respectfully submits this
`
`Supplemental Motion for Joinder to clarify its original Motion for Joinder, which
`
`was submitted together with a Petition (“Ericsson Petition”) for Inter Partes
`
`Review of U.S. Patent No. 7,016,676 (“the ʼ676 patent”) filed contemporaneously
`
`herewith. therewith. For convenience, an electronic document comparison
`
`between the original Motion for Joinder and this Supplemental Motion for
`
`Joinder is submitted as Ex. 1015 (additions indicated in blue underline and
`
`deletions indicated with red strikethrough).
`
`On January 15, 2020, the Board held a conference call with counsel for
`
`Patent Owner, counsel for Microsoft, and counsel for Ericsson regarding
`
`Ericsson’s request to join IPR2019-01116. Consistent with the Board’s
`
`instructions during that call and the Board’s subsequent order regarding the same,
`
`see
`
`IPR2020-00376, Paper 8 (PTAB Jan. 21, 2020), Ericsson submits this
`
`Supplemental Motion for Joinder to clarify that Ericsson seeks to join in a true
`
`understudy role, taking no action separate from Microsoft in the joined
`
`proceeding so long as Microsoft remains an active party in that proceeding.
`
`Ericsson has therefore clarified the limitations on its role, as outlined on pages
`
`9–10 of this Supplemental Motion.
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 6 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`The Board instituted inter partes review of claims 1 and 2 of the ’676
`
`patent in Microsoft Corporation v. Uniloc 2017 LLC, Case No. IPR2019-01116,
`
`on December 4, 2019 (“the Microsoft IPR”). Pursuant to 35 U.S.C. § 315(c) and
`
`37
`
`C.F.R. § 42.122(b), Ericsson requests institution of inter partes review of claims
`
`1 and 2 of the ’676 patent and requests joinder with IPR2019-01116.
`
`Ericsson’s request for joinder is timely because it is made no later than one
`
`month after the December 4, 2019, institution date of the Microsoft IPR. The
`
`Ericsson Petition is substantively identical to Microsoft’s petition (“Microsoft
`
`Petition”) in the Microsoft IPR, and Ericsson seeks institution on the same claims,
`
`prior art, and grounds for unpatentability that were instituted in the Microsoft IPR.
`
`Therefore, Ericsson’s petition warrants institution for at least the same reasons that
`
`the Board instituted the Microsoft IPR. In addition, Ericsson proposes to
`
`streamline discovery and briefing by taking an “understudy role.”
`
`Petitioner in the Microsoft IPR does not oppose Ericsson’s instant motion.
`
`Joinder is appropriate here because it will not unduly burden or prejudice
`
`the parties to the Microsoft IPR and will efficiently resolve the question of the
`
`’676 patent’s validity, based on the identical grounds raised in both the Microsoft
`
`IPR and the Ericsson IPR, in a single proceeding.
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 7 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`Background and Related Proceedings
`
`II.
`
`The ʼ676 patent has been asserted in the following litigation: Uniloc 2017
`
`LLC v. Microsoft Corporation, 8:18-cv-02053 (C.D. Cal.), filed November 17,
`
`2018; Uniloc 2017 LLC, et al. v. Google LLC, 2:18-cv-00495 (E.D. Tex.), filed
`
`November 17, 2018; Uniloc 2017 LLC v. Verizon Communications Inc., et al.,
`
`2:18-cv-00513 (E.D. Tex.), filed November 17, 2018 (“the Verizon case”);
`
`Uniloc 2017 LLC v. AT&T Services, Inc., et al., 2:18-cv-00514 (E.D. Tex.), filed
`
`November 17, 2018 (“the AT&T case”); Uniloc 2017 LLC, et al. v. Google LLC,
`
`2:18-cv-00448 (E.D. Tex.), filed October 31, 2018; Uniloc 2017 LLC, et al. v.
`
`AT&T, Inc., et al., 2:18-cv-00379 (E.D. Tex.), filed August 29, 2018; Uniloc 2017
`
`LLC, et al. v. Verizon Communications Inc., et al., 2:18-cv-00380 (E.D. Tex.),
`
`filed August 29, 2018; and Uniloc 2017 LLC, et al. v. Microsoft Corporation,
`
`8:18-cv- 01279 (C.D. Cal.), filed July 24, 2018.
`
`In addition to the Microsoft IPR, various claims of the ʼ676 patent were or
`
`are being challenged in the following PTAB matters: Microsoft Corporation v.
`
`Uniloc 2017 LLC, IPR2019-01125 (P.T.A.B.) (claim 5), institution denied;
`
`Marvell Semiconductor, Inc. v. Uniloc 2017 LLC, IPR2019-01349 (P.T.A.B.)
`
`(challenging claims 1, 2, and 5); Marvell Semiconductor, Inc. v. Uniloc 2017 LLC,
`
`IPR2019-
`
`01350 (P.T.A.B.) (challenging claims 3, 6, 7, 8, and 9); Google, LLC v. Uniloc
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 8 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`2017 LLC, IPR2019-01541 (P.T.A.B.) (challenging claims 1, 2, 4, and 9); and
`
`Ericsson Inc. v. Uniloc 2017 LLC, IPR2019-01550 (P.T.A.B.) (challenging
`
`claims 1, 2, and 8).
`
`III.
`
`Statement of Reasons for Relief Requested
`
`As explained in detail below, Ericsson’s motion for joinder should
`
`be granted because the motion is timely, and the Kyocera factors favor
`
`joinder.
`
`a.
`
`Legal Standard
`
`The Board may join as a party to an instituted inter partes review a person
`
`who has properly filed a petition for inter partes review that warrants institution.
`
`35 U.S.C. § 315(c). Any request for joinder must be filed “no later than one month
`
`after the institution date of any inter partes review for which joinder is requested.”
`
`37 C.F.R. § 42.122(b). A petition for inter partes review is not subject to the one-
`
`year statutory time bar if the petition is accompanied by a request for joinder. 35
`
`U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
`
`“A motion for joinder should (1) set forth reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) address specifically how briefing and
`
`discovery may be simplified.” Samsung Elecs., Co. v. Raytheon Co.,
`
`IPR2016-00962, Paper 12 at 5 (PTAB Aug. 24, 2016) (citing Kyocera Corp. v.
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 9 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`Softview LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).
`
`b.
`
`Petitioner’s Motion for Joinder is Timely
`
`Ericsson’s Motion for Joinder is timely because it is being filed within
`
`one month of the December 4, 2019, institution of the Microsoft IPR. See 37
`
`C.F.R.
`
`§ 42.122(b).
`
`c.
`
`The Kyocera Factors Favor Joinder
`
`i.
`
`Factor 1: Joinder is appropriate
`
`Joinder with the Microsoft IPR is appropriate because the Ericsson Petition
`
`involves the same patent, challenges the same claims, and is based on the same
`
`grounds and same technical expert declaration testimony relied upon in the
`
`Microsoft Petition. Additionally, as noted below, the Ericsson Petition raises only
`
`the grounds from the Microsoft IPR. In short, the Ericsson Petition is
`
`substantively identical to the Microsoft Petition. The only minor changes include
`
`(1) changes necessary for proper identification of the party filing the petition and
`
`corresponding documents; (2) a substantively identical declaration (signed by a
`
`librarian at Haynes and Boone, LLP, rather than a paralegal from the law firm of
`
`Microsoft’s counsel in IPR2019-01116) regarding details related to the public
`
`accessibility of certain documents; and (3) correction of minor typographical
`
`errors. On the merits, the Ericsson Petition should therefore be instituted for at
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 10 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`least the same reasons that the Board instituted the Microsoft IPR. Further, good
`
`cause exists to allow joinder, given that the Ericsson Petition is substantively
`
`identical to the Microsoft Petition, and joinder would allow the Board to
`
`effectively resolve the identical challenges raised by both parties in a
`
`single proceeding.
`
`Additionally, Ericsson is currently involved in litigation based on Patent
`
`Owner’s allegation that Ericsson’s products infringe the ʼ676 patent. See, e.g.,
`
`Ex. 1013 at 1, 12 and Ex. 1014 at 1, 12 (Orders granting unopposed Motions to
`
`Intervene in the Verizon case and the AT&T case). Ericsson therefore has a
`
`particular interest in the substantial questions of invalidity surrounding the ʼ676
`
`patent. Joinder is also appropriate for the additional reason that the invalidity
`
`grounds as to the challenged claims can be resolved through Ericsson’s continued
`
`participation in the IPR process, even if the original petitioner in IPR2019-01116
`
`were to reach a settlement with Patent Owner, or otherwise cease participation in
`
`that proceeding. The public interest in “permitting full and free competition in
`
`the use of ideas which are in reality a part of the public domain” Lear, Inc. v.
`
`Adkins, 395 U.S. 653, 670 (1969), favors allowing joinder in this case, as joinder
`
`would allow Ericsson to continue participating in the IPR process if Microsoft
`
`ceases participation.
`
`ii.
`
`Factor 2: Ericsson’s petition proposes no new grounds
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 11 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`of unpatentability
`
`The Ericsson Petition does not present any new grounds or arguments
`
`regarding unpatentability. It is substantively identical to the Microsoft Petition.
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the
`
`existing
`
`proceeding.” BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01283, Paper 10 at
`
`8 (PTAB Nov. 5, 2019) (quoting Samsung, IPR2016-00962, Paper 12 at 9)
`
`(emphasis added). This factor therefore favors joinder.
`
`iii.
`
`Factor 3: Joinder will not unduly burden or
`negatively impact the Microsoft IPR trial schedule
`
`Joinder will not unduly burden Patent Owner. Because the Ericsson Petition
`
`presents the same grounds and arguments as the Microsoft Petition, there are no
`
`new issues for Patent Owner to address. See Sony Corp. v. Memory Integrity, LLC,
`
`IPR2015-01353, Paper 11 at 6 (PTAB Oct. 15, 2015) (granting motion for joinder
`
`and instituting IPR where “joinder should not necessitate any additional briefing
`
`or discovery from Patent Owner beyond that already required in [the original
`
`IPR]”). Indeed, the Patent Owner’s Preliminary Response in the Microsoft IPR is
`
`sufficient to address the Ericsson Petition because the issues presented are
`
`substantively identical. See Patent Owner’s Preliminary Response, Case No.
`
`IPR2019-01116 (Paper 7).
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 12 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`Likewise, joinder will not negatively impact the Microsoft IPR trial
`
`schedule. Ericsson expressly consents to the existing trial schedule. Further,
`
`as described below, Ericsson agrees to take an “understudy” role in the joined
`
`proceed, so long as Microsoft remains an active party in the joined
`
`proceeding. See, e.g., Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9
`
`at 6–8 (PTAB
`
`May 30, 2019) (granting motion for joinder where the movant presented a
`
`substantively identical petition and agreed to take an “understudy” role in the
`
`joined proceeding); Intel Corp. v. Alacritech, Inc., IPR2018-01352, Paper 11 at
`
`3– 5 (PTAB Jan. 8, 2019) (same).
`
`Finally, the Ericsson Petition relies on the same technical expert (and a
`
`substantively identical declaration from that expert), as well as substantively
`
`identical declarations from the same IEEE employees in IPR2019-01116
`
`regarding publication details of certain IEEE documents. Ex. 1004 (Decl. of Peter
`
`Rysavy); Ex. 1007 (Decl. of Gerard Grenier); Ex. 1010 (Decl. of Christina
`
`Boyce). Further, Ericsson has submitted a substantively identical declaration
`
`related to the public accessibility of certain documents.1 Therefore, joinder will
`
`not increase the
`
`1 Exhibit 1011 in the Microsoft IPR is the declaration of an employee of the law
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 13 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`firm Klarquist Sparkman, LLP, the law firm of Microsoft’s counsel in IPR2019-
`
`01116. Ericsson has submitted a substantively identical declaration as Exhibit
`
`1011
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 14 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`complexity of the proceeding. Indeed, the Board typically grants joinder where a
`
`petitioner presents a different witness with a substantially similar declaration. See,
`
`e.g., Pfizer Inc. v. Sanofi-Aventis Deutschland GmbH, IPR2019-00980, Paper 12
`
`at 3–4, 6–7 (PTAB Aug. 15, 2019); Everlight Electronics Co., Ltd.,
`
`IPR2018-01260,
`
`Paper 12 at 4, 6–7 (PTAB Nov. 14, 2018); Celltrion, Inc. v. Genentech, Inc.,
`
`IPR2018-01019, Paper 11 (Oct. 30, 2018).
`
`iv.
`Factor 4: Procedures to simplify briefing and discovery
`Ericsson agrees to take an “understudy” role in the joined proceeding,
`
`absent termination of the original petitioner as a party. Specifically, Ericsson
`
`agrees to the following conditions regarding the joined proceeding, so.
`
`So long as Microsoft remains an active party in the joined proceeding:
`
`1.
`
`·All filings by Ericsson in the joined proceeding shall be consolidated with
`
`the filings of Microsoft unless a filing solely concerns issues that do not
`
`involveEricsson will not be making any substantive filings, and Ericsson
`
`agrees that Microsoft alone will be responsible for all substantive petitioner
`
`filings in the joined proceeding;
`
`2.
`
`Ericsson agrees to be bound by all filings by Microsoft in the
`
`accordingly.
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 15 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`joined proceeding, except for filings regarding termination and
`
`settlement;
`
`in this case, signed by a librarian with the law firm Haynes and Boone, LLP, the
`
`law firm of Petitioner’s counsel in this case, with dates of access updated
`
`accordingly.
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 16 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`3.
`
`Ericsson must obtain prior Board authorization to file any paper or to
`
`take any action on its own in the joined proceeding;
`
`4.
`
`·Ericsson shall not be permitted to raise any new grounds not already
`
`instituted by the Board in the Microsoft IPR, or introduce any argument
`
`or discovery not already introduced by Microsoft;
`
`5.
`
`·Ericsson shall be bound by any agreement between Patent Owner
`
`and Microsoft concerning discovery and/or depositions;
`
`6.
`
`·At deposition, Ericsson shall not receive any direct examination, cross
`
`examination, or redirect time beyond that permitted in this proceeding for
`
`Microsoft alone under either 37 C.F.R. § 42.53 or any agreement between
`
`Patent Owner and Microsoft.See Apple, IPR2019-00958, Paper 9 at 7–8
`
`(granting a motion for joinder where the movant proposed the above
`
`limitations on its role as understudy); see also Intel Corp.,
`
`IPR2018-01352, Paper 11 at 4–5 (granting a motion for joinder with such
`
`limitations on the understudy).Ericsson will not cross examine or defend
`
`any witness at deposition, with one possible exception being the scenario
`
`in which Patent Owner sought to depose Ericsson’s librarian
`
`representative of Ex. 1011 (see n. 1);
`
`7.
`
`Microsoft will be responsible for any oral hearing presentation, including
`
`the preparation of demonstrative exhibits.
`
`Ericsson would assume a primary role onlyOnly if Microsoft ceasedceases
`participation in the proceeding. Otherwise, Ericsson would remain in its
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 17 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`“understudy” role throughout the proceeding. :
`
`8.
`
`Ericsson would assume a primary role, meaning it would take over the
`
`role previously filled by Microsoft.
`
`Pursuant to the Board’s Order of January 21, which requires that that this
`
`motion “clearly indicate specifically what terms have been agreed to by
`
`Microsoft,” Microsoft agrees that the above conditions clarify what it
`
`understands as an “understudy role” and does not oppose Ericsson’s joinder
`
`under the
`
`conditions specified above.
`
`10
`
`The eight conditions listed above are intended to capture the Board’s
`
`understanding of Petitioner’s “understudy role” on page three of the Board’s
`
`order on January 21 (Paper 8) and Ericsson’s agreement with this role. The
`
`conditions also consistent with the Board’s stated conditions of joinder in other
`
`cases. See, e.g., AT&T Servs., Inc. v. Convergent Media Solutions, LLC,
`
`IPR2017-01235, Paper 11 at 36–37 (PTAB May 9, 2017) (Lee, J.) (granting
`
`joinder with similar limitations on an understudy).
`
`Pursuant to the Board’s Order of January 21, Ericsson attempted to reach
`
`agreement with Patent Owner regarding the conditions of joinder. However, an
`
`agreement could not be reached, as there were two main points of disagreement
`
`between Ericsson and Patent Owner. First, Patent Owner sought a stipulation
`
`from Ericsson that, in the event Microsoft remains in the proceeding until it is
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 18 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`ripe for appeal, Ericsson would not file a notice of appeal. Ericsson would not
`
`agree to this request, as it is unreasonable. For example, there is no mechanism
`
`Ericsson is aware of in the Federal Circuit that would allow Ericsson as a matter
`
`of right to take an “understudy” role in the appeal, so it is important that Ericsson
`
`retain the ability to file a notice of appeal in case Microsoft settles after the IPR
`
`concludes.
`
`Second, Patent Owner requested that Ericsson state that it not “participate”
`
`in certain activities by Microsoft, and Petitioner and Patent Owner discussed
`
`what this means beyond what is expressed in the conditions above. Ericsson does
`
`not
`
`11
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 19 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`agree that this means that Ericsson and Microsoft cannot communicate during the
`
`proceeding, as that would be unreasonable, and Ericsson could not reach
`
`agreement with Patent Owner on this point. Some of Ericsson’s supporting
`
`reasons are as follows. Should the joinder motion be granted, Ericsson will be
`
`listed as a real-party-in-interest (RPI), and RPIs have a right to communicate with
`
`each other during a proceeding. Further, the ability of Ericsson and Microsoft to
`
`communicate during the proceeding is not relevant to the factors considered for
`
`instituting joinder, which focus on whether a new ground is raised, impact on the
`
`“cost and schedule of the first proceeding,” and whether “joinder will add to the
`
`complexity of briefing and/or discovery.” See Patent Trial and Appeal Board
`
`Consolidated Trial Practice Guide, November 2019
`
`(https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=), at 76.
`
`None of these factors is an issue here.
`
`The Board has consistently found that the acceptance of an “understudy”
`
`role removes any undue complications or delay that might allegedly result from
`
`joinder. See, e.g., Apple, IPR2019-00958, Paper 9 at 6–8 (granting motion for
`
`joinder where the movant presented a substantively identical petition and agreed
`
`to take an “understudy” role in the joined proceeding); Intel Corp.,
`
`IPR2018-01352, Paper 11 at 3–5 (same); Sony Corp., IPR2015-01353, Paper 11 at
`
`6–7. As such, this factor also favors joinder.
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 20 of 21
`
`
`
`Supplemental Motion for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`IV.
`
`Conclusion
`For the reasons above, Ericsson respectfully requests that the Board
`
`(1)
`
`institute Ericsson’s concurrently filed Petition for Inter Partes Review of
`
`U.S. Patent No. 7,016,676; and (2) grant joinder with Microsoft Corporation v.
`
`Uniloc 2017 LLC, Case No. IPR2019-01116.
`
`ERICSSON v. UNILOC / IPR2020-00376
`Ex. 1015 / Page 21 of 21
`
`
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