IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`ERICSSON INC.
`(“Ericsson”),
`
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC
`(“Uniloc”),
`
`Patent Owner.
`
`__________________
`
`
`Case No. IPR2020-00376
`U.S. Patent No. 7,016,676
`
`__________________
`
`
`REPLY TO PATENT OWNER OPPOSITION
`TO PETITIONER’S SUPPLEMENTAL MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`
`ERICSSON INC.
`(“Ericsson”),
`
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC
`(“Uniloc”),
`
`Patent Owner.
`
`__________________
`
`
`Case No. IPR2020-00376
`U.S. Patent No. 7,016,676
`
`__________________
`
`
`REPLY TO PATENT OWNER OPPOSITION
`TO PETITIONER’S SUPPLEMENTAL MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`Reply to Opp’n to Suppl. Mot. for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`
`
`As clarified in Ericsson’s Supplemental Motion for Joinder, Ericsson intends
`
`to participate in a classic “understudy” role in the joined proceeding. Ericsson
`
`stipulated to all the conditions specified by the Board in its definition of
`
`“remain[ing] completely inactive.” Order (Paper 8) at 3. In short, so long as
`
`Microsoft remains a party, Microsoft controls all aspects of the proceeding,
`
`including substantive filings, discovery, deposition, and oral hearing.
`
`I. None of Uniloc’s Concerns Justify Denying Joinder.
`
`Pursuant to the Board’s Order (Paper 8), Ericsson endeavored in good faith
`
`to reach an agreement with Uniloc regarding the conditions of joinder. Consistent
`
`with what Ericsson acknowledged in its Supplemental Motion for Joinder, Uniloc
`
`expresses two concerns regarding joinder – (1) briefing during any Federal Circuit
`
`appeal; and (2) whether Ericsson will “participate” in the drafting of any of the IPR
`
`filings controlled by Microsoft. Neither of these concerns justify denying joinder.
`
`First, with respect to potential Federal Circuit review, Uniloc agrees
`
`Ericsson can file a notice of appeal but then suggests that Ericsson be prohibited
`
`from filing an appeal brief separate from Microsoft. Opp’n at 3-4. Uniloc’s focus
`
`on the procedure of a different tribunal is not only irrelevant to the Board’s joinder
`
`analysis, but, more importantly, its request that Ericsson should stipulate to no
`
`appeal briefing is also unreasonable. It is unreasonable because Ericsson is not
`
`aware of any mechanism in the Federal Circuit that would allow a party to take a
`
`1
`
`
`
`
`Reply to Opp’n to Suppl. Mot. for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`similar “understudy” role in any appeal as a matter of right, and Uniloc has not
`
`cited to any.
`
`For Ericsson to participate in a Federal Circuit appeal, Ericsson needs to file
`
`or join briefing. For example, if Microsoft and Ericsson were to file notices of
`
`appeal, and Microsoft subsequently settled, the appeal would likely be dismissed if
`
`Ericsson had not filed or joined briefing. See Fed. Cir. R. 31(d). Likewise, if
`
`Uniloc were to appeal, and Microsoft subsequently settled, Ericsson could not be
`
`heard at oral argument without court permission if Ericsson had not filed or joined
`
`briefing. See Fed. R. App. P. 31(c). And, while it is typical for the court to
`
`consolidate appeals from the same IPR (which Ericsson would welcome), such
`
`consolidation is ultimately within the Federal Circuit’s discretion and beyond
`
`Ericsson’s control. In sum, if Ericsson did not file an appeal brief during an appeal,
`
`Ericsson could lose the right to maintain an appeal.1
`
`Second, Uniloc also requests that, in addition to the conditions listed in
`
`Ericsson’s Supplemental Motion for Joinder, that Ericsson stipulate to “not
`
`actively participate in the drafting of filings.” Opp’n at 3. During negotiation
`
`
`1 Ericsson cannot speak to what another party meant by that party’s statement that
`
`it would not “seek” to file briefing. See Opp’n at 4. Regardless, it is of no matter,
`
`given that Uniloc found even that statement unsatisfactory. Id. at 4 n.1.
`
`2
`
`
`
`
`Reply to Opp’n to Suppl. Mot. for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`regarding this condition, it was unclear whether Uniloc was attempting to prohibit
`
`communication between the parties. Uniloc’s Opposition reflects its ambiguity
`
`regarding communication between parties – “Patent Owner never characterized the
`
`proposed stipulation as somehow precluding any communication between Ericsson
`
`and Microsoft for any reason.” Oppn’ at 3 (emphasis in original). As set forth in
`
`the understudy conditions, Microsoft controls the preparation of all filings and
`
`Ericsson reserves no right to participate in any way, except should Microsoft
`
`withdraw as a party. To date, Microsoft has not expressed any desire for input
`
`from Ericsson. Therefore, unless Microsoft withdraws as a party or communicates
`
`with Ericsson as Patent Owner acknowledges is permitted, Ericsson will not
`
`actively participate in the drafting of any filings.
`
`Uniloc raises a speculative argument regarding whether Microsoft agrees to
`
`a “risk of estoppel” that would “potentially” attach under Ericsson’s “apparent”
`
`interpretation of the conditions of joinder. Opp’n at 5. Again, the clarifications of
`
`Ericsson’s understudy role in the Supplemental Motion for Joinder make it clear
`
`that Microsoft controls all aspects of the IPR proceeding (substantive briefing,
`
`discovery, deposition, and oral hearing) so long as Microsoft remains a party2.
`
`
`2 Uniloc also “objects to” Ericsson “seeking to skirt” page limit requirements.
`
`Opp’n at 8. There is no basis for Uniloc’s objection because Ericsson’s
`
`3
`
`
`
`
`Reply to Opp’n to Suppl. Mot. for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`II. Ericsson’s second IPR petition does not implicate the concerns
`regarding serial petitions contemplated by General Plastic.
`
`The Board should not use its discretion to deny institution because
`
`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; see also General
`
`Plastic, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential); Valve
`
`Corp. v. Elec. Scripting Prods., Inc., IPR2019-00064, Paper 10 (PTAB May 1,
`
`2019) (precedential) (“Valve II”). Unlike in Valve II, Ericsson’s second IPR
`
`petition is a copycat joinder petition, rendering the analysis of the General Plastic
`
`factors different than the analysis in Valve II.
`
`For example, with respect to General Plastic’s third factor, while Uniloc
`
`argues that Ericsson is “seeking to take advantage” of the Patent Owner’s
`
`preliminary response to Ericsson’s earlier IPR petition (IPR2019-01550), Opp’n
`
`at 7, that argument makes little sense here. Ericsson’s joinder IPR petition is
`
`substantively identical to the IPR petition filed by Microsoft in IPR2019-01116
`
`before Patent Owner’s preliminary response. “Road-mapping” is simply not at
`
`Supplemental Motion for Joinder (Paper 9) is within the allowed 15-page limit (37
`
`C.F.R. § 42.24(a)), and Ericsson’s Paper 3 complies with the five-page limit
`
`specified in the Consolidated Trial Practice Guide at 60, n. 3.
`
`4
`
`
`
`Reply to Opp’n to Suppl. Mot. for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`issue where the second petition is substantively identical to a petition filed before
`
`Patent Owner’s preliminary response.
`
`In short, instituting this joinder petition would not add any additional burden
`
`to the Board or to Patent Owner, as this joinder petition is substantively identical to
`
`Microsoft’s ongoing IPR, and Ericsson has agreed to act in an understudy capacity.
`
`III. Conclusion
`
`Unless Microsoft ceases participation in the joined IPR, Ericsson intends to
`
`assume a classic “understudy” role. For the reasons above and in Ericsson’s
`
`Motion, Ericsson respectfully requests that the Board (1) institute Ericsson’s
`
`Petition for Inter Partes Review of U.S. Patent No. 7,016,676; and (2) grant
`
`joinder with IPR2019-01116 on the terms set forth above and in Ericsson’s
`
`Supplemental Motion for Joinder.
`
`
`
`
`
`5
`
`
`
`
`
`Dated: February 24, 2020
`
`
`
`
`
`
`
`
`
`Reply to Opp’n to Suppl. Mot. for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`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
`
`
`
`6
`
`
`
`
`Reply to Opp’n to Suppl. Mot. for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies that
`
`a true and correct copy of the foregoing “REPLY TO PATENT OWNER
`
`OPPOSITION TO PETITIONER’S SUPPLEMENTAL MOTION FOR
`
`JOINDER” was served on the February 24, 2020 as detailed below:
`
`Date of service February 24, 2020
`
`Manner of service Electronic Mail to: ryan@etheridgelaw.com;
`brett@etheridgelaw.com; jim@etheridgelaw.com;
`brian@etheridgelaw.com; jeff@etheridgelaw.com
`
`Documents served REPLY TO PATENT OWNER OPPOSITION TO
`PETITIONER’S SUPPLEMENTAL MOTION FOR
`JOINDER
`
`Persons Served Ryan Loveless
`Brett Mangrum
`James Etheridge
`Brian Koide
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`
`
`
`Courtesy copies were also sent by electronic service via email to the following
`
`counsels of record in the related Inter Partes Review IPR2019-01116:
`
`Petitioner’s Counsel
`Derrick W. Toddy
`derrick.toddy@klarquist.com
`Andrew M. Mason
`
`Patent Owner’s Counsel
`Ryan Loveless
`ryan@etheridgelaw.com
`Brett A. Mangrum
`
`7
`
`
`
`
`Reply to Opp’n to Suppl. Mot. for Joinder
`Case No. IPR2020-00376 (U.S. Patent No. 7,016,676)
`andrew.mason@klarquist.com
`brett@etheridgelaw.com
`Todd M. Siegel
`James Etheridge
`todd.siegel@klarquist.com
`jim@etheridgelaw.com
`KLARQUIST SPARKMAN, LLP
`Jeffrey Huang
`One World Trade Center, Suite 1600
`jeff@etheridgelaw.com
`121 SW Salmon Street
`ETHERIDGE LAW GROUP
`Portland, Oregon, 97204
`2600 E. Southlake Blvd., Ste. 120-324
`
`Southlake, Texas 76092
`
`
` By: /J. Andrew Lowes/
`J. Andrew Lowes
` Lead Counsel for Petitioner
`Registration No. 40,706
`
`
`
`
`
`8
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
