UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00854
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`U.S. PATENT NO. 6,467,088
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`PATENT OWNER OPPOSITION TO MOTION FOR JOINDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00854
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`U.S. PATENT NO. 6,467,088
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`PATENT OWNER OPPOSITION TO MOTION FOR JOINDER
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`IPR2020-00854
`U.S. PATENT NO. 6,467,088
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`TABLE OF CONTENTS
`EXHIBIT LIST ........................................................................................................ iii
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`ARGUMENT ................................................................................................... 1
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`A. Given the upcoming trial in parallel litigation, the board should
`exercise discretion under 35 U.S.C. § 314(a), NHK Spring, and Apple
`v. Fintiv to deny institution and joinder. ............................................... 2
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`whether a stay exists or evidence exists that one is likely to be
`granted if a proceeding is instituted ........................................... 4
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`proximity of the court’s trial date to the Board’s projected
`statutory deadline ........................................................................ 4
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`investment in the parallel proceeding by the court and parties . 5
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`overlap between issues raised in the petition and in the parallel
`proceeding ................................................................................... 5
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`whether the petitioner and the defendant in the parallel
`proceeding are the same party .................................................... 6
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`other circumstances that impact the Board’s exercise of
`discretion, including the merits................................................... 6
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`B.
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`The General Plastic factors also weigh against institution and joinder.
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`III. CONCLUSION ................................................................................................ 9
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`CERTIFICATE OF COMPLIANCE .......................................................................11
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`CERTIFICATE OF SERVICE ................................................................................12
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`ii
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`IPR2020-00854
`U.S. PATENT NO. 6,467,088
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`EXHIBIT LIST
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`2001 Docket, Uniloc 2017 LLC v. Apple Inc., 6-19-cv-00532 (W.D. Tex.)
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`2002 Agreed Scheduling Order, Uniloc 2017 LLC v. Apple Inc., 6-19-cv-00532,
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`Dkt. 18 (W.D. Tex. Nov. 14, 2019)
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`2003 Apple Inc.’s Preliminary Infringement Contentions and Additional
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`Disclosures Pursuant to Agreed Scheduling Order, Uniloc 2017 LLC v.
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`Apple Inc., 6-19-cv-00532 (W.D. Tex.) (served Dec. 18, 2019)
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`iii
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`IPR2020-00854
`U.S. PATENT NO. 6,467,088
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`I.
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`INTRODUCTION
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`Apple previously filed a petition for inter partes review (IPR2019-00056) on
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`October 17, 2018. The Board denied institution of that petition on April 29, 2019.
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`On September 10, 2019, Uniloc filed suit against Apple in Uniloc 2017 LLC v.
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`Apple Inc., 6-19-cv-00532 (W.D. Tex.).
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`On October 11, 2019, Microsoft filed an IPR petition challenging claims 1‒4,
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`6–14, and 16–21 of the ʼ088 patent. See Microsoft Corporation v. Uniloc 2017 LLC,
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`IPR2020-00023 (the “Microsoft IPR”), Paper 2. On April 14, 2020, the Board
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`instituted trial in the Microsoft IPR.
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`Apple seeks to avoid the consequence of the previous denial of its petition by
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`joining the Microsoft IPR. Apple’s motion for joinder should be denied based at least
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`on the trial scheduled in the parallel district court proceeding, the substantial overlap
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`between the invalidity contentions in the proceedings, and based on the fairness and
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`efficiency concerns reflected in the factors in General Plastic. Even in a motion for
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`joinder, the serial attacks brought by Apple raise fairness and efficiency concerns that
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`weigh against joinder and institution in this case.
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`II. ARGUMENT
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`As the moving party, Apple has the burden of proof to establish that it is
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`entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). “Factors that the
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`Board may consider in deciding a motion for joinder include why joinder is
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`1
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`appropriate, whether a new ground of unpatentability is raised in the second petition,
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`how the cost and schedule of the first proceeding will be impacted if joinder is
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`granted, and whether granting joinder will add to the complexity of briefing and/or
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`discovery.” Consolidated Trial Practice Guide 76 (Nov. 2019) (citing Kyocera Corp.
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`v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper
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`15)). “Also, consideration of the non-exclusive factors set out in General Plastic
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`Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 16
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`(PTAB Sept. 6, 2017) (Paper 19) (precedential as to § II.B.4.i), may support the
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`exercise of the Board’s discretion to deny institution under 35 U.S.C. § 314(a).” Id.
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`at 77.
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`A. Given the upcoming trial in parallel litigation, the board should
`exercise discretion under 35 U.S.C. § 314(a), NHK Spring, and
`Apple v. Fintiv to deny institution and joinder.
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`The Board should deny institution and joinder in view of the progress and
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`expected completion date of the district court litigation involving the same parties
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`and the overlap between the Petition and the district court litigation. Instituting a
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`trial, even joining Apple as a party to the Microsoft IPR, would be an inefficient use
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`of Board resources.
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`Apple seeks joinder in order to be able to continue the Microsoft IPR even if
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`Microsoft were to settle with Patent Owner and request to terminate the Microsoft
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`IPR. Thus, in this case, the relevant efficiency consideration is whether it would be
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`2
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`an efficient use of Board resources to allow Apple to continue the proceeding in the
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`event that Microsoft is no longer participating in the IPR.
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`In NHK Spring Co., Ltd. v. Intri-plex Technologies, IPR2018-00752, Paper No.
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`8 (P.T.A.B. Sept. 12, 2018) (precedential) (“NHK Spring”), the Board denied
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`institution under § 314(a) where the parallel district court proceeding was scheduled
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`to finish six months before the Board would have reached a final decision in an IPR
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`if one were instituted. The Board found that the earlier district court trial date
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`presented efficiency considerations that provided an additional basis, separate from
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`the independent concerns under 35 U.S.C. § 325(d), for denying institution. Thus,
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`“NHK applies to the situation where the district court has set a trial date to occur
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`earlier than the Board’s deadline to issue a final written decision in an instituted
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`proceeding.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 2–3 (PTAB Mar.
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`20, 2020) (precedential), (discussing NHK). Considering the factors in Apple v.
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`Fintiv, institution and joinder in this case would not be an efficient use of Board
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`resources.
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`When the patent owner raises an argument for discretionary denial under NHK
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`due to an earlier trial date, the Board’s decisions have balanced the following factors:
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`1. whether the court granted a stay or evidence exists that one may be granted if
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`a proceeding is instituted;
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`2. proximity of the court’s trial date to the Board’s projected statutory deadline
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`3
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`for a final written decision;
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`IPR2020-00854
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`3. investment in the parallel proceeding by the court and the parties;
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`4. overlap between issues raised in the petition and in the parallel proceeding;
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`5. whether the petitioner and the defendant in the parallel proceeding are the
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`same party; and
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`6. other circumstances that impact the Board’s exercise of discretion, including
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`the merits.
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`Apple v. Fintiv, slip op. at 5–6.
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`1.
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`whether a stay exists or evidence exists that one is likely to be
`granted if a proceeding is instituted
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`The district court case is not stayed and there is no evidence a stay would be
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`granted in this case. The district court denied Apple’s motion to stay the case pending
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`consideration of its motion to transfer. See Ex. 2001 at 2, Docket, Uniloc 2017 LLC
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`v. Apple Inc., 6-19-cv-00532 (W.D. Tex.) (Jan. 12, 2020 Docket entry). The district
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`court has also indicated it will deny Apple’s motion to transfer. See Ex. 2001 at 5
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`(Dkt. 58, May 12, 2020). Absent evidence that the district court is likely to stay the
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`litgation, this factor weighs against joinder in this case, or is at best neutral.
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`2.
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`proximity of the court’s trial date to the Board’s projected
`statutory deadline
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`The district court set jury trial to begin February 26, 2021. Ex. 2001 at 1 (Dkt.
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`18, Nov. 14, 2019), Ex. 2002 at 4, Agreed Scheduling Order, Uniloc 2017 LLC v.
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`4
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`Apple Inc., 6-19-cv-00532, Dkt. 18 (W.D. Tex. Nov. 14, 2019). The Court has asked
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`the parties to confer to decide between March 22 and March 29, 2021 for jury
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`selection and trial, thus delaying trial by no more than about one month. Ex. 2001 at
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`5 (Dkt. 60, May 15, 2020). A March 29, 2021 trial date still precedes the April 14
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`statutory deadline in the Microsoft IPR. Thus, this factor weighs against joinder.
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`3.
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`investment in the parallel proceeding by the court and parties
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`The district court held a Markman Hearing to construe the claims on May 15,
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`2020. Ex. 2001 at 5 (Dkt. 60, May 15, 2020). The court provided preliminary
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`constructions prior to the hearing and indicated that the court will maintain the
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`preliminary constructions. Id. Completion of claim construction represents
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`significant investment in the proceeding by the court and the parties that weighs
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`against joinder in this case.
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`4.
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`overlap between issues raised in the petition and in the parallel
`proceeding
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`In its invalidity contentions in the district court case, “Apple expressly
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`incorporates by reference as if fully set forth herein, and intends to rely
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`on, each of the contentions, charts, prior art references, and other statements made or
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`disclosed in” the Microsoft IPR. Ex. 2003 at 2, Apple Inc.’s Preliminary
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`Infringement Contentions and Additional Disclosures Pursuant to Agreed Scheduling
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`Order, Uniloc 2017 LLC v. Apple Inc., 6-19-cv-00532 (W.D. Tex.) (served Dec. 18,
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`5
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`2019). Although Apple states that the contentions address claims 1, 2, 3, 6, 7, 8, 10,
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`11, 12, 13, 14, 16, 17, 18, 20, and 21, the inclusion of additional dependent claims 4,
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`9, and 19 in Microsoft’s Petition, and hence, in Apple’s petition in this IPR, still
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`presents substantial overlap between issues in the proceedings. Thus, this factor
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`weighs against joinder in this case.
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`5.
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`whether the petitioner and the defendant in the parallel
`proceeding are the same party
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`Apple is the petitioner here and the defendant in the district court, thus
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`weighing against joinder in this case.
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`6.
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`other circumstances that impact the Board’s exercise of discretion,
`including the merits
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`As discussed below, Apple previously filed a petition against the ’088 patent,
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`and institution was denied in that case. These are additional circumstances that weigh
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`against institution and joinder here.
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`Accordingly, all factors in Apple v. Fintiv weigh against institution and joinder
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`in this case. The district court will begin a jury trial on the same issues prior to an
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`expected final written decision in the Microsoft IPR. Joining Apple as a party to the
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`Microsoft IPR only matters to Apple in the event that Microsoft ceases to take an
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`active role in the IPR, but allowing Apple to step into Microsoft’s shoes and continue
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`to pursue the proceeding would be an inefficient use of Board and party resources
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`given the scheduled jury trial.
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`6
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`B.
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`The General Plastic factors also weigh against institution and
`joinder.
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`Apple previously filed a petition against the ’088 patent in IPR2019-00056
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`(filed Oct. 17, 2018). The Board denied institution because Apple failed to show a
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`reasonable likelihood of prevailing as to a challenged claim. IPR2019-00056, Paper
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`7, slip op. at 2 (PTAB April 29, 2019). Apple should not be able to use a joinder
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`motion as an end run around its failed petition under the circumstances of this case.
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`The factors outlined in General Plastic Industrial Co., Ltd. v. Canon Kabushiki
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`Kaisha, IPR2016-01357 (PTAB Sep. 6, 2017) (Paper 19) (precedential in part) weigh
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`against institution and joinder here.
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`The decision in General Plastic identifies seven non-exclusive factors that bear
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`on the issue of whether the Board should invoke its discretion to deny institution
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`under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a). These factors include:
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`1.
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`whether the same petitioner previously filed a petition directed to the
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`same claims of the same patent;
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`2.
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`whether at the time of filing of the first petition the petitioner knew of
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`the prior art asserted in the second petition or should have known of it;
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`3.
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`whether at the time of filing of the second petition the petitioner already
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`received the patent owner’s preliminary response to the first petition or received the
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`Board’s decision on whether to institute review in the first petition;
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`7
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`U.S. PATENT NO. 6,467,088
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`4.
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`the length of time that elapsed between the time the petitioner learned of
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`the prior art asserted in the second petition and the filing of the second petition;
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`5.
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`whether the petitioner provides adequate explanation for the time
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`elapsed between the filings of multiple petitions directed to the same claims of the
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`same patent;
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`6.
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`7.
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`the finite resources of the Board; and
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`the requirement under 35 U.S.C. § 316(a)(11) to issue a final
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`determination not later than 1 year after the date on which the Director notices
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`institution of review.
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`See General Plastic, IPR2016-01357, Paper 19, 9–10 (citations omitted).
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`Each of at least General Plastic Factors 1–6 weigh in favor of exercising
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`discretion to deny the Petition and motion for joinder.
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`For Factor 1, Apple filed a petition challenging all claims of the ’088 patent
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`on October 17, 2018. IPR2019-00056, Paper 1. Factor 1 weighs against institution
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`and joinder here.
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`For Factor 2, Apple has provided no indication that it was not aware of the
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`art later asserted in Microsoft’s petition in the Microsoft IPR. At the very least,
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`Apple should have known of the art at that time, having performed prior art searches
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`to prepare its petition, and has not provided a persuasive explanation otherwise.
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`Thus, Factor 2 also weighs against institution and joinder.
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`8
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`IPR2020-00854
`U.S. PATENT NO. 6,467,088
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`For Factor 3, Apple’s earlier petition had already been denied by the Board
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`when it determined to file its second petition and motion for joinder. The Board
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`denied Apple’s petition in IPR2019-00056 on April 29, 2019, and Apple filed the
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`present Petition almost one year later on April 23, 2020. Thus, Factor 3 weighs
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`against institution and joinder.
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`For Factors 4 and 5, Apple has not explained when it learned of the art
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`asserted in the Microsoft IPR, but, as noted above, it should have known of the art
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`at the time it filed its previous petition and has not provided a persuasive
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`explanation otherwise. Thus, Factors 4 and 5 weigh against institution and joinder
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`in this case.
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`For Factor 6, it is appropriate to consider the resources of the Board in the
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`event Microsoft were to cease participation in the Microsoft IPR. But for joinder
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`by Apple, that proceeding would likely terminate. Thus, Apple primarily seeks the
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`right to continue that proceeding if Microsoft ceases to participate, and the Board’s
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`expending of resources in those circumstances should be considered. It would be
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`an inefficient use of Board resources to allow Apple to continue the Microsoft IPR
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`when its own petition was denied, and considering all other factors discussed above.
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`Thus, Factor 6 weighs against institution and joinder.
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`III. CONCLUSION
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`For the foregoing reasons, joinder should be denied.
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`9
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`Date: May 26, 2020
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`Respectfully submitted,
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`IPR2020-00854
`U.S. PATENT NO. 6,467,088
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`By: /Ryan Loveless/
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`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`10
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`IPR2020-00854
`U.S. PATENT NO. 6,467,088
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Opposition
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`complies with the page limit of 37 C.F.R. § 42.24(b)(3) because it contains fewer than
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`the limit of 15 pages, excluding the parts of the brief exempted by 37 C.F.R.
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`§ 42.24(a)(1).
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`Date: May 26, 2020
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`
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`Respectfully submitted,
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`By: /Ryan Loveless/
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`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`11
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`IPR2020-00854
`U.S. PATENT NO. 6,467,088
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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
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`copy of the foregoing, along with any accompanying exhibits, was served via email
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`to Petitioner’s counsel at the following addresses identified in the Petition’s
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`consent to electronic service:
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`Lead Counsel
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`Back-up Counsel
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`Larissa S. Bifano, Reg. No. 59,051
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`Michael Van Handel, Reg. No. 68,292
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`larissa.bifano@dlapiper.com
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`michael.vanhandel@dlapiper.com
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`Date: May 26, 2020
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`Respectfully submitted,
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`By: /Ryan Loveless/
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`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`12
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