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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS AMERICA, INC., APPLE INC., and
`MOTOROLA MOBILITY LLC
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`Patent Owner
`
`____________________
`
`IPR2020-00701
`Patent No. 6,836,654
`____________________
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2019-01471
`
`
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`
`
`TABLE OF CONTENTS
`
`Motion for Joinder with
`Case IPR2019-01471
`
` Page
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`
`II.
`
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 4
`
`A.
`
`Legal Standard ....................................................................................... 4
`
`B.
`
`C.
`
`This Joinder Motion is Timely .............................................................. 4
`
`Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder ................................................................................. 5
`
`1.
`
`2.
`
`3.
`
`Joinder with the Microsoft IPR Is Appropriate .......................... 5
`
`Petitioners Do Not Propose New Grounds of
`Unpatentability ............................................................................ 6
`
`Joinder Will Not Negatively Impact the Microsoft IPR
`Trial Schedule ............................................................................. 7
`
`4.
`
`Procedures to Simplify Briefing and Discovery ......................... 8
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`IV. CONCLUSION ................................................................................................ 9
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`
`
`i
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`
`
`TABLE OF AUTHORITIES
`
`Motion for Joinder with
`Case IPR2019-01471
`
` Page(s)
`
`Cases
`
`Biotronik, Inc. v. Atlas IP LLC,
`IPR2015-00534, Paper 10 (PTAB Feb. 25, 2015) ................................................ 5
`
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013) ........................................................... 4
`
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper No. 12 (June 1, 2017) ...................................................... 1
`
`LG v. Memory Integrity, LLC.,
`IPR2015-01353, Paper No. 11 (Oct. 5, 2015) .......................................... 5, 6, 7, 9
`
`Microsoft Corporation v. Uniloc 2017 LLC,
`IPR2019-01471 ..................................................................................................... 1
`
`Noven Pharmaceuticals, Inc. v. Novartis AG,
`IPR2014-00550, Paper No. 38 (Apr. 10, 2015) .................................................... 9
`
`Par Pharmaceutical, Inc. v. Novartis AG,
`IPR2016-01023, Paper No. 20 (Oct. 27, 2016) .................................................... 6
`
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (Aug. 24, 2016) ................................................... 5
`
`Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC,
`IPR2014-00781 and IPR2014-782, Paper 5 at 3 .................................................. 4
`
`Statutes
`
`35 U.S.C. § 315(c) ................................................................................................. 1, 4
`
`Other Authorities
`
`37 C.F.R. § 42.1(b) ................................................................................................ 1, 6
`
`37 C.F.R. § 42.22 ....................................................................................................... 1
`
`37 C.F.R. § 42.122(b) ............................................................................................ 1, 4
`
`ii
`
`
`
`Samsung’s Motion for Joinder with
`Case IPR2017-00392
`
`TABLE OF AUTHORITIES
`(continued)
`
`Frequently Asked Question (“FAQ”) H5, available at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp (last visited Dec. 2,
`2019) ..................................................................................................................... 4
`
` Page(s)
`
`iii
`
`
`
`Motion for Joinder with
`Case IPR2019-01471
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Samsung Electronics America, Inc., Apple Inc., and Motorola Mobility LLC
`
`(“Petitioners”) respectfully submit this Motion for Joinder, concurrently with a
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`Petition (“the Parties’ Petition”) for inter partes review of U.S. Patent No. 6,836,654
`
`(“the ’654 patent”), filed herewith.
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Petitioners
`
`request institution of an inter partes review and joinder with Microsoft Corporation
`
`v. Uniloc 2017 LLC, IPR2019-01471 (“the Microsoft IPR” or “the Microsoft
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`proceeding”), which the Board instituted on February 11, 2020, concerning the same
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`claims 10-20 of the ’654 patent at issue in the Parties’ Petition. This request is being
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`submitted within the time set forth in 37 C.F.R. § 42.122(b).
`
`Petitioners submit that the request for joinder is consistent with the policy
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`surrounding inter partes reviews, as it is the most expedient way “to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b);
`
`see also HTC v. Parthenon Unified Memory Architecture LLC., IPR2017-00512,
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`Paper No. 12 at 5-6 (June 1, 2017). The Parties’ Petition and the Microsoft IPR are
`
`substantially identical; they contain the same grounds (based on the same prior art
`
`combinations and supporting evidence) against the same claims. (See Ex. 1016,
`
`illustrating changes between the Parties’ Petition and the Petition in IPR2019-
`
`01471.) Further, upon joining the Microsoft proceeding, Petitioners will act as an
`
`1
`
`
`
`Motion for Joinder with
`Case IPR2019-01471
`
`“understudy” and will not assume an active role unless the current petitioner ceases
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`to participate in the instituted IPR. Accordingly, the proposed joinder will neither
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`unduly complicate the Microsoft IPR nor delay its schedule. As such, the joinder
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`will promote judicial efficiency in determining the patentability of the ’654 patent
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`without prejudice to Patent Owner. Moreover, Petitioners have spoken with
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`Microsoft counsel of record in IPR2019-01471, and Microsoft does not oppose
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`joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
`
`1.
`
`The ’654 patent is at issue in an infringement action against Apple in
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`the Northern District of California: Case No. 3:19-cv-01697 (N.D.
`
`Cal.). This action was transferred from the Western District of Texas,
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`where it was assigned Case No. 1:18-cv-00293 (W.D. Tex.).
`
`2.
`
`The ’654 Patent is or was at issue in two infringement actions against
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`Samsung in the Eastern District of Texas: Case Nos. 2:18-cv-00508
`
`(E.D. Tex.); 2:18-cv-00309 (E.D. Tex.).
`
`3.
`
`The ’654 patent is or was at issue in two infringement actions against
`
`Motorola in the District of Delaware: Case Nos. 1:18-cv-01844 (D.
`
`Del.); 1:18-cv-01230 (D. Del.).
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`4.
`
`The ’654 Patent is or was at issue in seven other patent infringement
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`actions: Case Nos. 8:19-cv-00781 (C.D. Cal.); 2:18-cv-01732 (W.D.
`
`2
`
`
`
`Motion for Joinder with
`Case IPR2019-01471
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`Wash.); 2:18-cv-00493 (E.D. Tex.); 2:18-cv-00509 (E.D. Tex.); 2:18-
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`cv-00422 (E.D. Tex.); 2-18-cv-00357 (E.D. Tex.); 2:18-cv-00310 (E.D.
`
`Tex.).
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`5.
`
`The ’654 Patent was at issue in two inter partes review petitions filed
`
`by Samsung: IPR2019-01218; IPR2019-01219. The Board denied
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`institution of these petitions.
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`6.
`
`The ’654 Patent was at issue in another inter partes review petition filed
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`by Microsoft Corporation: IPR2019-01470. The Board also denied
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`institution of this petition.
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`7.
`
`On August 9, 2019, Microsoft Corporation filed a petition for inter
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`partes review (IPR2019-01471) (“the Microsoft Petition”) requesting
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`cancellation of claims 10-20 of the ʼ654 patent.
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`8.
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`On February 11, 2020, the Board instituted the Microsoft Petition as to
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`all claims and all grounds.
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`9.
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`The Parties’ Petition and the Microsoft IPR are substantially identical;
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`they contain the same grounds (based on the same prior art
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`combinations and supporting evidence) against the same claims and
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`rely on the same expert declaration (Exhibit 1010).
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`3
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`
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`Motion for Joinder with
`Case IPR2019-01471
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
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`inter partes review petition with another inter partes review proceeding. See 35
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`U.S.C. § 315(c). A petitioner may request joinder, without prior authorization, up to
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`one month after the institution date of the proceeding to which joinder is requested.
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`37 C.F.R. § 42.122(b). The Board, in determining whether to exercise its discretion
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`to grant joinder, considers whether the joinder motion: (1) sets forth the reasons why
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`joinder is appropriate; (2) identifies any new grounds of unpatentability asserted in
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`the petition; (3) explains what impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) addresses specifically how briefing and
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`discovery may be simplified. See Frequently Asked Question (“FAQ”) H5, available
`
`at http://www.uspto.gov/ip/boards/bpai/prps.jsp (last visited Dec. 2, 2019); see also
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`Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 3 (July
`
`29, 2013).
`
`B.
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`This Joinder Motion is Timely
`
`
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`This motion is timely. Under 37 C.F.R. § 42.122(b), joinder can be requested
`
`without prior authorization no later than one month after the institution date of the
`
`proceeding to which joinder is requested. Taiwan Semiconductor Mfg. Co., Ltd. v.
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`Zond LLC, IPR2014-00781 and IPR2014-00782, Paper 5 at 3. Because this motion
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`4
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`
`
`Motion for Joinder with
`Case IPR2019-01471
`
`is being filed within one month of the Board’s decision instituting trial in the
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`Microsoft IPR on February 11, 2020, it meets the requirements of § 42.122(b). See,
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`e.g., Biotronik, Inc. v. Atlas IP LLC, IPR2015-00534, Paper 10 (PTAB Feb. 25,
`
`2015) (granting motion for joinder filed concurrently with institution of IPR review).
`
`C. Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder
`
`All four factors weigh in favor of granting the motion for Petitioners. The
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`Parties’ Petition is substantively identical to the petition in the Microsoft IPR.
`
`Petitioners do not present any new grounds of unpatentability. Additionally, as all
`
`issues are substantively identical and Petitioners will act as an “understudy,” joinder
`
`will have minimal or no impact on the pending schedule of the Microsoft IPR. See
`
`LG v. Memory Integrity, LLC., IPR2015-01353, Paper No. 11 at 6 (Oct. 5, 2015)
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`(granting motion for joinder where petitioners requested an “understudy” role).
`
`Moreover, the briefing and discovery will be simplified by resolving all issues in a
`
`single proceeding. Accordingly, joinder is appropriate.
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`1.
`
`Joinder with the Microsoft IPR Is Appropriate
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper No.
`
`12 at 9 (Aug. 24, 2016) (internal quotations and citations omitted). Here, joinder
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`5
`
`
`
`Motion for Joinder with
`Case IPR2019-01471
`
`with the Microsoft IPR is appropriate because the Parties’ Petition introduces
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`identical arguments and the same grounds raised in the existing Microsoft
`
`proceeding (i.e., challenges the same claims of the same patent, relies on the same
`
`expert declaration, and is based on the same grounds and combinations of prior art
`
`submitted in the Microsoft Petition). Other than minor differences, such as
`
`differences related to formalities of a different party filing the petition, there are no
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`changes to the facts, citations, evidence, or arguments introduced in the Microsoft
`
`Petition. Because these proceedings are substantively identical, good cause exists
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`for joining this proceeding with the Microsoft IPR so that the Board, consistent with
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`37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
`
`resolution” of the Parties’ and Microsoft Petitions in a single proceeding.
`
`2.
`
`Petitioners Do Not Propose New Grounds of
`Unpatentability
`
`The Parties’ Petition is substantively identical to the petition in the Microsoft
`
`IPR (i.e., challenging the same claims of the same patent, relying on the same expert
`
`declaration, and on the same grounds and combinations of prior art submitted in the
`
`Microsoft Petition). See LG, IPR2015-01353, Paper No. 11 at 5-6 (granting
`
`institution of IPR and motion for joinder where petitioners relied “on the same prior
`
`art, same arguments, and same evidence, including the same expert and a
`
`substantively identical declaration”); see also Par Pharm., Inc. v. Novartis AG,
`
`6
`
`
`
`Motion for Joinder with
`Case IPR2019-01471
`
`IPR2016-01023, Paper No. 20 at 14 (Oct. 27, 2016) (granting motion for joinder
`
`where petitioners “do not assert any new ground of unpatentability that is not already
`
`being considered in [an instituted IPR proceeding], rely on the same arguments and
`
`evidence, and do not require any modification to the existing schedule”).
`
`3.
`
`Joinder Will Not Negatively Impact the Microsoft IPR
`Trial Schedule
`
`Joinder will have minimal impact, if any, on the Microsoft IPR trial schedule
`
`because the Parties’ Petition presents no new issues or grounds of unpatentability.
`
`See LG, IPR2015-01353, Paper No. 11 at 6 (granting IPR and motion for joinder
`
`where “joinder should not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required in [the original IPR]”). Further,
`
`Petitioners explicitly consent to the existing trial schedule. There are no new issues
`
`for the Board to address, and Patent Owner will not be required to present any
`
`additional responses or arguments.
`
`The Patent Owner’s Response will also not be negatively impacted because
`
`the issues presented in the Parties’ Petition are identical to the issues presented in
`
`the Microsoft Petition. Patent Owner will not be required to provide any additional
`
`analysis or arguments beyond what it will already provide in responding to the
`
`petition in the Microsoft IPR. Also, because the Parties’ Petition relies on the same
`
`7
`
`
`
`Motion for Joinder with
`Case IPR2019-01471
`
`expert and the same declaration, only a single deposition is needed for the proposed
`
`joined proceeding.
`
`Accordingly, joinder with the Microsoft IPR does not unduly burden or
`
`negatively impact the trial schedule.
`
`4.
`
`Procedures to Simplify Briefing and Discovery
`
`Petitioners explicitly agree to take an “understudy” role, which will simplify
`
`briefing and discovery. Specifically, Petitioners explicitly agree, upon joining the
`
`Microsoft proceeding, that the following conditions shall apply so long as the current
`
`petitioner in IPR2019-01471 remains an active party:
`
`a) Petitioners shall not make any substantive filings and shall be bound
`
`by the filings of Microsoft, unless a filing concerns termination and
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`settlement, or issues solely involving Petitioners;
`
`b) Petitioners shall not present any argument or make any presentation at
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`the oral hearing on issues not solely involving Petitioners;
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`c) Petitioners shall not seek to cross-examine or defend the cross-
`
`examination of any witness, unless the topic of cross-examination
`
`concerns issues solely involving Petitioners; and
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`d) Petitioners shall not seek discovery from Uniloc on issues not solely
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`involving Petitioners.
`
`8
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`
`
`Motion for Joinder with
`Case IPR2019-01471
`
`See, e.g., Noven Pharm., Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at 5
`
`(Apr. 10, 2015). Unless and until the current petitioner ceases to participate in the
`
`instituted IPR proceeding, Petitioners will not assume an active role therein.
`
`Thus, by Petitioners accepting an “understudy” role, Patent Owner and the
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`current petitioner can comply with the existing trial schedule without needing any
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`duplicative efforts by the Board or the Patent Owner. These steps will minimize any
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`potential complications or delay that potentially may result by joinder. See LG,
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`IPR2015-01353, Paper No. 11 at 6-7 (granting IPR and motion for joinder because
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`“joinder would increase efficiency by eliminating duplicative filings and discovery,
`
`and would reduce costs and burdens on the parties as well as the Board” where
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`petitioners agreed to an “understudy” role). Petitioners are further willing to agree
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`to any other reasonable conditions the Board deems necessary.
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`IV. CONCLUSION
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`Based on the factors discussed above, Petitioners respectfully request that the
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`Board grant the Parties’ Petition and grant joinder with the Microsoft IPR.
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`Respectfully submitted,
`
`
`Dated: March 11, 2020
`
`By: /Tiffany Miller/
`Tiffany C. Miller (Reg. No. 52,032)
`Counsel for Petitioner
`
`
`
`9
`
`
`
`Samsung’s Motion for Joinder with
`Case IPR2019-01471
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 11, 2020, I caused a true and correct copy of
`
`the foregoing Motion for Joinder to Inter Partes Review IPR2019-01471 to be
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`served via express mail on the Patent Owner at the following correspondence
`
`address of record as listed on PAIR:
`
`PHILIPS INTELLECTUAL PROPERTY & STANDARDS
`465 Columbus Avenue
`Suite 340
`Valhalla NY 10595
`
`
`In addition, a courtesy copy of the motion was served electronically upon
`
`counsel of record for Patent Owner in the pending litigations entitled Uniloc 2017
`
`LLC v. Samsung Elecs. Am., Inc., Case No. 2:18-cv-00508 (E.D. Tex.), Uniloc USA,
`
`Inc. et al. v. Apple Inc., 3:19-cv-01697 (N.D. Cal.), and Uniloc 2017 LLC v.
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`Motorola Mobility, LLC, 1:18-cv-01844 (DED) at the following addresses:
`
`Paul J. Hayes
`phayes@princelobel.com
`James J. Foster
`jfoster@princelobel.com
`Aaron Jacobs
`ajacobs@princelobel.com
`Kevin Gannon
`kgannon@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`
`
`
`ii
`
`
`
`Motion for Joinder with
`Case IPR2019-01471
`
`Edward R. Nelson III
`ed@nbafirm.com
`Shawn Latchford
`shawn@nbafirm.com
`NELSON BUMGARDNER ALBRITTON PC
`3131 West 7th Street, Suite 300
`Fort Worth, TX 76107
`
`
`
`A courtesy copy of the motion was also served electronically upon counsel
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`of record for Patent Owner in Microsoft Corporation v. Uniloc 2017 LLC,
`
`IPR2019-01471 at the following addresses:
`
`Brett Mangrum (brett@etheridgelaw.com)
`Ryan Loveless (ryan@etheridgelaw.com)
`James Etheridge (jim@etheridgelaw.com)
`Jeffrey Huang (jeff@etheridgelaw.com)
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /Tiffany Miller/
`
`
` Tiffany C. Miller (Reg. No. 52,032)
`
`
`
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`
`
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