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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`APPLE INC.
`Petitioner
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`v.
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`UNILOC 2017 LLC
`Patent Owner
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`____________________
`
`IPR2020-00854
`Patent No. 6,467,088
`____________________
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`REPLY TO OPPOSITION TO MOTION FOR JOINDER
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`IPR2020-00854
`Reply to Opposition to Motion for Joinder
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`I.
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`INTRODUCTION
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`The Board should institute Apple’s IPR and grant the motion for joinder,
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`because Apple’s petition is substantively identical to Microsoft’s already instituted
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`IPR and Apple has agreed to take an understudy role. Paper 3.
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`II.
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`PARALLEL TRIAL PROCEEDING
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`
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`Uniloc’s arguments that it would be an inefficient use of resources to institute
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`IPR and grant joinder should be rejected.
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`Microsoft’s IPR has been instituted and Apple agrees to take an understudy
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`role, so no additional burden will be placed on the Board or Uniloc if Apple’s
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`petition is instituted and the joinder motion is granted. Should Microsoft settle,
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`Apple’s involvement would be similar to Microsoft’s involvement, adding little to
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`no burden on the Board or Uniloc. Under similar facts, the Board found the potential
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`for settlement not to result in undue prejudice to a patent owner. Sawai USA, Inc. et
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`al. v. Biogen MA Inc., IPR2019-00789, Paper 17 at 11-12 (PTAB Sept. 12, 2019).
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`Uniloc’s reliance on NHK Spring and Fintiv (Paper 7 at 2-6) is misplaced.
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`These cases each involved a circumstance where a parallel district court proceeding
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`was scheduled to go to trial before a final written decision would issue in an IPR.
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`But neither of these cases involved a copycat petition of an already instituted IPR
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`and a motion for joinder, where the petitioner would serve in a understudy role. NHK
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`Spring v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
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`1
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`IPR2020-00854
`Reply to Opposition to Motion for Joinder
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`(precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13,
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`2020) (precedential). Microsoft’s IPR has already been instituted, negating the
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`efficiency and fairness concerns of NHK Spring and Fintiv.
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`The situation here is similar to that in Sawai USA. Sawai USA, Inc. et al. v.
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`Biogen MA Inc., IPR2019-00789, Paper 17 (PTAB Sept. 12, 2019). There, the
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`petitioner filed a copycat of an already instituted IPR petition along with a motion
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`for joinder, and agreed to take an understudy role. Id. at 2, 5-7. The Board
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`considered NHK Spring and the related district court proceeding, which was
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`scheduled to go to trial before final written decision, and instituted the IPR and
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`granted the joinder motion. Id. at 9-12. The Board concluded there would be limited
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`prejudice to the patent owner and little to no waste of Board resources in allowing
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`joinder of the ongoing IPR. Id. at 9-12. Such is the case here where Apple would
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`serve as an understudy. Nevertheless, should the Board analyze the Fintiv factors,
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`the factors heavily weigh in favor of instituting the IPR, as discussed below.
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`A. Whether a stay exists or is likely to be granted if IPR is instituted
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`This factor is irrelevant or neutral. Microsoft’s IPR is already instituted.
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`B.
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`Proximity of court trial date to Board’s statutory deadline
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`This factor is irrelevant, or at best neutral. Trial is set to begin March 22,
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`2021. Ex. 1017 at 3. The statutory deadline for final written decision falls on April
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`14, 2021. Thus, whether the district court trial will complete before Microsoft’s IPR
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`2
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`IPR2020-00854
`Reply to Opposition to Motion for Joinder
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`is uncertain. Even if trial concludes first, the institution and joinder of Apple’s
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`petition to Microsoft’s IPR this will not burden the Board or prejudice Uniloc, as
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`Microsoft’s IPR is already instituted. See Sawai USA, Paper 17 at 11-12.
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`C.
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`Investment in the parallel proceeding by the court and parties /
`Overlap between issues in the petition and parallel proceeding
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`These factors are irrelevant, as Microsoft’s IPR is instituted. Moreover, the
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`district court case is still in its early stages. Fact discovery has just begun, and final
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`infringement and invalidity contentions are not due until August 14, 2020. Ex. 1017
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`at 1. As a result, the extent to which issues overlap is unclear. Microsoft’s IPR also
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`challenges claims (4, 9, 19) not asserted against Apple in the district court.
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`D. Whether party in parallel proceeding is same party
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`This factor is irrelevant, as Petitioner seeks joinder as an understudy.
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`E. Other circumstances, including the merits
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`This factor weighs heavily in favor of institution. Apple’s IPR petition is
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`substantively identical to Microsoft’s instituted IPR petition. Apple’s prior filing of
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`an IPR petition is a non-issue. While whether a petitioner previously filed a petition
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`is one of the General Plastic factors, a timely-filed joinder motion “effectively
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`neutralizes” a General Plastics analysis. See Apple v. Uniloc 2017 LLC, IPR2018-
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`00580, Paper 13 at 10 (PTAB Aug. 21, 2018); see also Celltrion, Inc. v. Genetech,
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`Inc., IPR2019-01019, Paper 11 at 10 (PTAB Oct. 30, 2018); Mylan Pharms. Inc. v.
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`Almirall, LLC, IPR2019-01019, Paper 12 at 5 (PTAB Nov. 27, 2019).
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`3
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`IPR2020-00854
`Reply to Opposition to Motion for Joinder
`III. THE GENERAL PLASTIC FACTORS ARE INAPPLICABLE
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`In General Plastic, the Board set forth factors considered in conserving the
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`Board’s resources. In the current motion, Apple seeks to join Microsoft’s
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`proceeding with a nearly identical petition. General Plastic does not apply because
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`Apple’s understudy role would have no impact on the Board’s resources, and as
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`noted above, a joinder petition “effectively neutralizes” a General Plastic analysis.
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`Section II. Notwithstanding the above, General Plastic factors weigh in favor of
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`institution, as discussed below.
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`A. Whether same petitioner previously filed a petition directed to the
`same claims of the same patent
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`While Apple filed a petition challenging the same patent, this factor is
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`irrelevant as Apple seeks to join Microsoft’s petition in an understudy role.
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`B. Whether at time of filing the first petition the petitioner knew or
`should have known of the prior art asserted in the second petition
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`This factor is neutral or irrelevant. Microsoft’s and Apple’s first petitions do
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`not share prior art and Apple is merely seeking to join in an understudy role.
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`C. Whether at time of filing the second petition the petitioner already
`received the POPR or the institution decision
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`This factor weighs against denial of institution. Apple is submitting a petition
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`that is substantively identical to Microsoft’s petition, and has not changed any of the
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`arguments in response to either the POPR or the Institution Decision. Moreover,
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`because the present Petition is submitted as a joinder and Apple will serve an
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`4
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`IPR2020-00854
`Reply to Opposition to Motion for Joinder
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`understudy, the petition is not an attempt to harass Uniloc or otherwise engage in
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`serial, tactical filings. Thus, this factor weighs against denial of institution.
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`D. Length of time elapsed between time petitioner learned of the
`prior art asserted in the second petition and filing of the second
`petition / whether petitioner provides adequate explanation for
`the time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent
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`In the context of a joinder motion where Apple will be taking an understudy
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`role, these factors are inapplicable. Apple is moving to join Microsoft’s petition
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`within the one-month deadline, and Apple will only serve in an understudy role.
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`E.
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`The finite resources of the Board
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`This factor also weighs against denial, especially given the Congressional
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`intent of the IPR process. Microsoft’s petition has already been instituted. Allowing
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`Apple to join in an understudy role will not impact the Board’s resources.
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`F.
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`Requirement to issue a final determination not later than 1 year
`after date of institution
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`This factor weighs in favor of institution, as there is nothing to prevent the
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`Board from issuing a final determination on Microsoft’s petition within one year.
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`IV. CONCLUSION
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`Apple respectfully requests that he Board institute the IPR and grant joinder.
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`Respectfully submitted,
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`Dated: June 22, 2020
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`By: /Larissa S. Bifano/
`Larissa S. Bifano (Reg. No. 59,051)
`Counsel for Petitioner
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`5
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`IPR2020-00854
`Reply to Opposition to Motion for Joinder
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`PETITIONER’S UPDATED LIST OF EXHIBITS
`IPR2020-00854
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`Description
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`U.S. Patent No. 6,467,088, “Reconfiguration manager for
`controlling upgrades of electronic devices,” issued October 15,
`2002 (the “’088 patent or “’088”)
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`File History for U.S. Patent No. 6,467,088, Application No.
`09/343,607 (the “’088 FH”)
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`Declaration of John Villasenor (“Villasenor”), including
`Appendix A thereto
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`U.S. Patent No. 5,974,454, “Method and system for installing and
`updating program module components,” issued October 26, 1999
`from an application filed November 14, 1997 (“Apfel”)
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`U.S. Patent No. 5,613,101, “Method and apparatus for
`determining at execution compatibility among client and provider
`components where provider version linked with client may differ
`from provider version available at execution,” issued March 18,
`1997 (“Lillich”)
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`U.S. Patent No. 5,867,714, “System and method for distributing
`configuration-dependent software revisions to a computer
`system,” issued February 2, 1999 from an application filed
`October 31, 1996 (“Todd”)
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`U.S. Patent No. 6,151,708, “Determining program update
`availability via set intersection over a sub-optical pathway,” issued
`November 21, 2000 from an application filed December 19, 1997
`(“Pedrizetti”)
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`Complaint in Uniloc 2017 LLC v. Microsoft Corporation, 8:19-cv-
`00956 (C.D. Cal.), filed May 20, 2019 (“Uniloc Complaint”)
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`Plaintiff’s “Disclosure of Asserted Claims And Infringement
`Contentions”, dated July 29, 2019, including Exhibit B thereto
`(“Uniloc Contentions”)
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`No.
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`Petition in Apple Inc. v. Uniloc 2017 LLC, IPR2019-00056
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`IPR2020-00854
`Reply to Opposition to Motion for Joinder
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`Description
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`(P.T.A.B.), filed October 17, 2018 (“Apple IPR Petition”)
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`Patent Owner Preliminary Response in Apple Inc. v. Uniloc 2017
`LLC, IPR2019-00056 (P.T.A.B.), filed February 8, 2019 (“Apple
`IPR POPR”)
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`PTAB Decision in Apple Inc. v. Uniloc 2017 LLC, IPR2019-
`00056 (P.T.A.B.), issued April 29, 2019 (“Apple IPR Decision”)
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`List of Uniloc Asserted Patents, from Docket Navigator (“Uniloc
`Patent List”)
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`List of IPRs involving Uniloc Patents, from Docket Navigator
`(“Uniloc IPR List”)
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`Stipulation to Extend Time to Respond To Initial Complaint By
`Not More Than 30 Days (L.R. 8-3) in Uniloc 2017 LLC v.
`Microsoft Corporation, 8:19-cv-00956 (C.D. Cal.), filed May 24,
`2019 (“Stipulated Extension of Time”)
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`Comparison between the Current Petition and Petition in
`IPR2020-00023
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`Amended Agreed Scheduling Order (Dkt. 66) in Uniloc 2017 LLC
`v. Apple Inc., 6:19-cv-00532 (W.D. Tex.)
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`No.
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`IPR2020-00854
`Reply to Opposition to Motion for Joinder
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 22, 2020, I caused a true and correct copy of the
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`following materials:
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`• Petitioner’s Reply to the Opposition to the Motion to Amend
`• Petitioner’s Updated List of Exhibits
`• New Exhibit (Ex. 1017)
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`to be served via electronic mail to the attorneys of record at the following email
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`addresses:
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`Ryan Loveless – ryan@etheridgelaw.com
`Brett Mangrum – brett@etheridgelaw.com
`James Etheridge – jim@etheridgelaw.com
`Brian Koide – brian@etheridgelaw.com
`Jeffrey Huang – jeff@etheridgelaw.com
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`Courtesy copies of these materials were also served electronically to the
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`attorneys of record for Plaintiff in the concurrent litigation matter:
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`William E. Davis, III - bdavis@bdavisfirm.com
`Christian J. Hurt - churt@bdavisfirm.com
`Edward Chin - echin@bdavisfirm.com
`Debra Coleman - dcoleman@bdavisfirm.com
`Ty Wilson - twilson@davisfirm.com
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`By: /Michael Van Handel/
` Michael Van Handel
` Reg. No. 68,292
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