UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ERICSSON INC.,
`Petitioner
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`v.
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`UNILOC 2017 LLC
`Patent Owner
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`IPR2020-00376
`U.S. PATENT NO. 7,016,676
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`PATENT OWNER OPPOSITION TO
`SUPPLEMENTAL MOTION FOR JOINDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ERICSSON INC.,
`Petitioner
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`v.
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`UNILOC 2017 LLC
`Patent Owner
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`IPR2020-00376
`U.S. PATENT NO. 7,016,676
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`PATENT OWNER OPPOSITION TO
`SUPPLEMENTAL MOTION FOR JOINDER
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`IPR2020-00376
`U.S. PATENT NO. 7,016,676
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`I.
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`Joinder should be denied at least because Ericsson refused to fully
`address deficiencies in its overbroad definition for “understudy”
`The Board should deny Petitioner Ericsson’s Supplemental Motion for
`Joinder (Paper 9) as failing to cure the several deficiencies the Board identified in
`Ericsson’s original Motion for Joinder (Paper 4). See Order on the Conduct of
`Proceeding (Paper 8 or “Order”).
`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
`original Motion to Join IPR2019-01116. The Board explained during the call, and
`reiterated in its subsequent Order, that Ericsson’s original definition for
`“understudy” improperly permits active participation, regardless whether the
`original petitioner (Microsoft) has been terminated. Consequently, such a definition
`does not comport with a true “understudy” role.
`Among other issues, the Board questioned whether Ericsson’s definition for
`“understudy” purports to reserve the right for Ericsson to actively participate in the
`drafting of filings, including the positions contained therein. See Order at 2. After
`addressing other deficiencies in Ericsson’s original Motion, the Board offered the
`following helpful explanation of how it expected a true “understudy” role to be
`defined: “[i]n short, in its ‘understudy role,’ Ericsson will remain completely
`inactive, but for issues that are solely directed and pertinent to Ericsson.” Id. at 3
`(emphasis added).
`Joinder should be denied because Ericsson failed to fully avail itself of the
`opportunity to correct the deficiencies in its original Motion. Even worse, and as an
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`IPR2020-00376
`U.S. PATENT NO. 7,016,676
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`additional basis for denial, Ericsson’s Supplemental Motion misstates Patent
`Owner’s positions and concerns, which Patent Owner had expressed in a good faith
`effort to reach agreement before Ericsson filed its Supplemental Motion.
`In communication between counsel, which the Board encouraged in its Order,
`the parties reached an impasse over two main concerns with Ericsson’s revised
`definition for “understudy” set forth in its Supplemental Motion. First, Ericsson
`refused to accept Patent Owner’s proposed compromise language stipulating that
`“Ericsson shall not participate in the drafting of any filing” while the original
`petitioner (Microsoft) remains active in IPR2019-01116. Patent Owner explained
`that this proposed stipulation comports with the Board’s instruction summarized
`above and generally captured by the Board’s instruction that “Ericsson will remain
`completely inactive.” Id. That Ericsson refused to agree to this straightforward
`stipulation confirms that, if joined, Ericsson will seek to actively participate in the
`drafting of filings in IPR2019-01116. Contrary to what Ericsson suggests in its
`Supplemental Motion, Patent Owner never characterized the proposed stipulation as
`somehow precluding any communication between Ericsson and Microsoft for any
`reason.
`Second, Ericsson refused to accept Patent Owner’s proposed compromise
`language stipulating that Ericsson will not file its own appeal briefs, if the original
`petitioner (Microsoft) remains active through appeal and files appeal briefing.
`Contrary to what Ericsson states in its Supplemental Motion, Patent Owner never
`characterized its proposed stipulation is somehow precluding Ericsson from filing a
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`notice of appeal (which is not a brief). Rather, Patent Owner explained it intended
`to protect itself against the unexpected prejudice it recently encountered in another
`matter, in which both an original petitioner and a joinder petitioner were authorized
`to file separate appeal briefs, thereby potentially doubling the pages to which Patent
`Owner is obligated to respond in a single brief. Moreover, Patent Owner invited
`Ericsson to propose alternative language for a stipulation that addresses this specific
`and very real concern. That Ericsson refused to do so only confirms that, if joined,
`Ericsson intends to reserve the right to file its own separate appeal briefs, even if the
`original petitioner (Microsoft) remains active through appeal and files its own appeal
`briefs.
`Ericsson suggests that Patent Owner’s request for a stipulation concerning
`appeal briefing is unreasonable on its face. However, when Patent Owner recently
`expressed the exact same concerns in another matter, the petitioner seeking joinder
`there (Apple) at least attempted to address those concerns by offering the following
`stipulation: “Apple will not seek to file its own appellate brief (addressing Uniloc’s
`argument at Paper 7 at 7)[.]” Apple Inc., v. Uniloc 2017 LLC, IPR2020-00224, Paper
`8 at 2.1 Notably, the petitioner seeking joinder there (Apple) further stipulated that
`“it will abide by the ‘completely inactive’’ role described by the Board and quoted
`above in the Ericcson IPR”—i.e., the Board’s Order on the Conduct of Proceeding
`here. Id. (citing Paper 8 of this matter).
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`1 Apple’s stipulation is still deficient at least in that it does not further stipulate that
`Apple will not file its own appellate brief, even if one is authorized.
`4
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`IPR2020-00376
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`Ericsson has now twice failed in this matter to perfect a motion for joinder by
`setting forth a proper definition for a true “understudy” role. Ericsson’s refusal to
`avail itself of the unusual opportunity to correct the deficiencies of its original
`Motion should not be rewarded by granting joinder based on the still-deficient
`Supplemental Motion. Moreover, denial is appropriate because, as explained above,
`Ericsson misrepresents Patent Owner’s communications and Patent Owner’s good
`faith effort to reach agreement on these issues.
`Finally, it is unclear whether Microsoft agrees to the risk of estoppel that
`would potentially attach under Ericsson’s apparent interpretation of the effect of
`joinder under the overbroad definition for “understudy” it proposes. Paper 9 at 2.
`According to Ericsson, “[s]hould the joinder motion be granted, Ericsson will be
`listed as a real-party-in-interest (RPI).” Paper 9 at 2. Ericsson raises this point
`ostensibly to justify its refusal to stipulate that it will not actively participate with
`Microsoft in the drafting of filings in IPR2019-01116. Id.
`Ericsson’s apparent interpretation of the effect of joinder under such
`circumstances would at least risk tainting Microsoft with the effects of estoppel,
`should estoppel apply to Ericsson, and vice versa. It is doubtful Microsoft has agreed
`to assume such risk. Indeed, in another matter, Microsoft expressed concerns over
`whether estoppel of a joinder petitioner would attach to an original petitioner, where
`the joinder petitioner actively participates in the drafting of filings (or at least
`purports to reserve the right to do so). See Microsoft Corp. v. Uniloc 2017 LLC,
`IPR2019-01188, Paper 12 (expressing concern over “an apparent lack of clear
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`IPR2020-00376
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`precedent on whether and under what circumstances Section 315(e)(1) estoppel may
`be imputed from a joining petitioner to the original petitioner.”).
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`II.
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`Joinder should be denied because of the serial nature of Ericsson’s
`petitions
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108 make it clear that institution of an
`inter partes review is discretionary. Various non-exhaustive factors have been
`considered by the Board in determining whether to exercise discretion to deny
`review. See, e.g., General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19) (precedential).
`This not Ericsson’s first IPR petition challenging the validity of at least the
`same subset of claims of the ’676 Ericsson again seeks to challenge in its instant
`petition. On January 3, 2020, Ericsson filed a petition also challenging the same
`claims at issue here, together with an additional claim (claim 8). See Ericsson Inc.
`v. Uniloc 2017 LLC, IPR2019-01550 (challenging claims 1, 2 and 8). Ericsson
`asserts that joinder is warranted here ostensibly because the overlap in challenged
`claims between its two petitions “was not of [Ericsson’s] choosing.” Paper 3 at 2.
`Ericsson offers no explanation for why it had no choice but to challenge the
`same claims (1 and 2) in separate petitions, nor does Ericsson explain why it could
`not have raised in its earlier-filed petition the challenges it seeks to institute now
`against those same claims. Not only has Ericsson filed serial petitions against
`overlapping claims, Ericsson acknowledges that its two petitions rely on certain
`overlapping art. Ericsson also offers no explanation for the time elapsed between
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`IPR2020-00376
`U.S. PATENT NO. 7,016,676
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`the filing dates of its multiple petitions relying on certain overlapping art directed to
`overlapping claims of the same patent.
`Ericsson also fails to bring to the Board’s attention the fact that Patent Owner
`had filed its preliminary response to Ericsson’s first petition (IPR2019-01150) on
`December 19, 2019. While Microsoft did not have the benefit of Patent Owner’s
`preliminary response when it filed its petition in IPR2019-01116, Ericsson is now
`seeking to take advantage of its knowledge of that response by seeking to join
`IPR2019-01116. Ericsson should not be allowed to benefit from filing a petition
`after Patent Owner’s preliminary response, which is precisely what would happen if
`Ericsson takes a lead role in the petition it seeks to join.
`Ericsson argues that there would be no “additional burden to the Board or to
`Patent Owner, as Petitioner has agreed to act in an ‘understudy’ capacity.” Paper 3
`at 4. As explained above, however, Ericsson also has already demonstrated that its
`overbroad definition for “understudy” unnecessarily complicates this proceeding,
`and the proceeding it seeks to join; and Ericsson’s overbroad definition
`unnecessarily injects complications which require Board resolution now and
`possibly extending into the future, should the joinder request be granted.
`Finally, Ericsson’s attempt to take the second bite at the apple for overlapping
`claims based on certain overlapping art implicates the same efficiency concerns
`underpinning several precedential opinions. See, e.g., General Plastic, IPR2016-
`01357, (PTAB Sept. 6, 2017) (Paper 19) (precedential; Valve Corporation v.
`Electronic Scripting Products, Inc., IPR2019-00064, -00065, -00085 (PTAB May 1,
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`2019) (Paper 10) (“Valve II”) (precedential); Valve Corp. v. Elec. Scripting Prods.,
`Inc., IPR2019-00062, -00063, -00084 (PTAB Apr. 2, 2019) (Paper 11) (“Valve I”).
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`III. Ericsson violates the applicable page limit rule
`Patent Owner objects to Ericsson seeking to skirt the page limit requirements
`for motions by filing both a motion for joinder and a notice purporting to address
`Ericsson’s filing of two petitions addressing overlapping challenges and art. See
`Papers 3 and 9. Collectively, Ericsson’s Notice (Paper 3, consisting of 5 pages) and
`its Supplemental Motion for Joinder (Paper 9, consisting of 13 pages) exceed the
`allowed page count. See 37 CFR § 42.24.
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`IV. Conclusion Regarding Joinder
`For the foregoing reasons, joinder should be denied.
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`V.
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`Patent Owner does not waive the right to file a preliminary
`response
`The Board’s Order requires Uniloc to indicate (within one week of the filing
`of the Supplemental Motion) whether Uniloc intends to waive the filing of a
`preliminary response in this proceeding. Patent Owner hereby submits that it
`presently does not intend to waive the filing of a preliminary response in this matter.
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`Date: January 29, 2020
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`Respectfully submitted,
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`By: Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
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`IPR2020-00376
`U.S. PATENT NO. 7,016,676
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`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`IPR2020-00376
`U.S. PATENT NO. 7,016,676
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an
`electronic copy of the foregoing document along with any accompanying exhibits
`was served via the Patent Review Processing System (PRPS) and/or email to
`Petitioner’s counsel of record.
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`By: Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`10
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