Paper 9
`Trials@uspto.gov
`571-272-7822 Entered: October 28, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00854
`Patent 6,467,088 B1
`____________
`
`
`
`Before MIRIAM L QUINN, AMANDA F. WIEKER, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`Trials@uspto.gov
`571-272-7822 Entered: October 28, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00854
`Patent 6,467,088 B1
`____________
`
`
`
`Before MIRIAM L QUINN, AMANDA F. WIEKER, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner” or “Apple”) filed a Petition for inter partes
`review of claims 1−4, 6−14, and 16−21 of U.S. Patent No. 6,467,088 B1
`(Ex. 1001, “the ’088 patent”). Paper 1 (“Pet.”). Petitioner also filed a
`Motion for Joinder with Microsoft Corp. v. Uniloc 2017 LLC, IPR2020-
`00023 (“the 023 IPR”). Paper 3 (“Mot.”). Uniloc 2017 LLC (“Patent
`Owner”) filed an Opposition to the Motion for Joinder. Paper 7 (“Opp.”).1
`Petitioner filed a Reply to Patent Owner’s Opposition. Paper 8 (“Reply”).
`We have authority under 35 U.S.C. § 314(a), which provides that an inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons described below, we do not institute an inter partes
`review of the challenged claims and deny Petitioner’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`The parties indicate that the ’088 patent is the subject of several court
`proceedings, the 023 IPR filed by Microsoft, and a prior petition for inter
`partes review filed by Petitioner. Pet. 10; Paper 5, 2. In particular, the
`’088 patent was the subject of Apple Inc. v. Uniloc 2017 LLC, IPR2019-
`00056 (“the 056 IPR”), where the Board issued a decision not to institute
`inter partes review. Pet. 10.
`In the 023 IPR, we instituted an inter partes review of claims 1−4,
`6−14, and 16−21 of the ’088 patent based on the following asserted prior art
`and grounds:
`
`1 Patent Owner did not file a Preliminary Response.
`2
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`1) Apfel: U.S. Patent No. 5,974,454, filed as Exhibit 1004;
`2) Lillich: U.S. Patent No. 5,613,101, filed as Exhibit 1005;
`3) Todd: U.S. Patent No. 5,867,714, filed as Exhibit 1006; and
`4) Pedrizetti: U.S. Patent No. 6,151,708, filed as Exhibit 1007.
`Microsoft Corp. v. Uniloc 2017 LLC, IPR2020-00023, Paper 7 at 6, 29−31
`(PTAB Apr. 14, 2020) (“023 Decision” or “023 Dec.”). The following table
`summarizes the grounds of unpatentability in the 023 IPR:
`
`Claims Challenged
`in 023 IPR
`1–4, 6–14, 16–21
`9, 19
`1–3, 9–13, 19–21
`1, 3, 4, 6–11, 13, 14,
`16–21
`
`Id.
`
`35 U.S.C. §2 References/Basis
`103(a)
`Apfel, Lillich, Todd
`103(a)
`Apfel, Lillich, Todd, Pedrizetti
`103(a)
`Apfel, Lillich
`103(a)
`Apfel, Todd
`
`III. WHETHER TO INSTITUTE INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as those upon which we instituted review in the 023 IPR.
`Compare Pet. 13−15, with 023 Dec. 5, 30. Indeed, Petitioner contends that
`the Petition “is substantially identical to the petition filed in the [023] IPR
`Proceeding.” Pet. 11; see also Ex. 1016 (comparing in redline the
`differences between the petition in the 023 IPR and the instant Petition). We
`agree that the Petition here asserts challenges and evidence identical to those
`
`
`2 Because the application leading to the ’088 patent was filed before
`March 16, 2013, patentability is governed by the version of 35 U.S.C. § 103
`preceding the Leahy-Smith America Invents Act (“AIA”), Pub L. No. 112–
`29, 125 Stat. 284 (2011).
`
`3
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`asserted in the 023 IPR. Having already considered the merits of those
`challenges and evidence vis-à-vis the threshold of institution for inter partes
`review, we determine that the Petition here also presents a reasonable
`likelihood of prevailing on the challenge of at least one claim of the
`’088 patent.
`Notwithstanding the merits, however, Patent Owner argues that we
`should exercise our discretion to deny institution under 35 U.S.C. § 314(a)
`and, accordingly, deny joinder, citing and discussing the Fintiv and General
`Plastic factors. Opp. 2−9 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”) and
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)).
`Petitioner argues that neither the Fintiv Order nor the General Plastic factors
`applies here, where Petitioner seeks to join as a party to the 023 IPR and
`take an inactive or understudy role. Reply 1−2, 4. As explained in further
`detail below, Petitioner’s understudy argument is not persuasive here where
`the copied petition is Petitioner’s second challenge to the patent, and should
`Microsoft settle, Petitioner would stand in to continue a proceeding that
`would otherwise be terminated. In effect, it would be as if Apple had
`brought the second challenge to the patent in the first instance. This is the
`kind of serial attack that General Plastic was intended to address. General
`Plastic, Paper 19 at 17 (“Multiple, staggered petitions challenging the same
`patent and same claims raise the potential for abuse.”).
`That Petitioner seeks to join the 023 IPR does not obligate us to
`institute this proceeding without first considering whether to exercise
`
`4
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`discretion under § 314(a). The statutory provision governing joinder in inter
`partes review proceedings is 35 U.S.C. § 315(c), which reads:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`See also Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332
`(Fed. Cir. 2020) (determining that § 315(c) requires “two different
`decisions,” first “whether the joinder applicant’s petition for IPR ‘warrants’
`institution under § 314,” and then whether to “exercise . . . discretion to
`decide whether to ‘join as a party’ the joinder applicant”). Under 35 U.S.C.
`§ 315(c), the discretion of the Director to join a party to an ongoing IPR is
`premised on the Director’s determination that the petition warrants
`institution. That determination is not limited to determining whether the
`merits of the petition meet the reasonable likelihood threshold for at least
`one challenged claim. Under General Plastic, the Board may deny a
`petition based on the Director’s discretionary authority of § 314(a). General
`Plastic, Paper 19 at 15. Thus, before determining whether to join Apple as a
`party to the 023 IPR, even though the Petition is a “me-too petition,” we first
`determine whether application of the General Plastic factors warrants the
`exercise of discretion to deny the Petition under § 314(a).
`
`A. Prior Petitions
`In General Plastic, the Board recognized certain goals of the AIA but
`also “recognize[d] the potential for abuse of the review process by repeated
`attacks on patents.” General Plastic, Paper 19 at 16–17. On October 17,
`
`5
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`2018, Apple filed a first petition challenging the ’088 patent. 056 IPR,
`Paper 1. We denied that petition on April 29, 2019 because the evidence
`and arguments presented failed to meet substantively the reasonable
`likelihood threshold required for institution. Id. at Paper 7. Subsequently,
`Apple filed a request for rehearing the Board’s decision denying institution,
`which the Board denied on July 15, 2019. Id. at Papers 8, 9. At this point in
`the timeline of events, because Patent Owner had served Apple with the
`district court complaint more than a year prior to the Board’s decision
`denying rehearing, Apple was barred from filing any further petitions against
`the ’088 patent. See 35 U.S.C. § 315(b).
`Patent Owner sued Microsoft Corporation (“Microsoft”) in district
`court on May 20, 2019, almost a year after the complaint against Apple was
`filed. Pet. 10. Microsoft then filed its petition challenging the ’088 patent,
`on October 11, 2019. 023 IPR, Paper 2. The Board granted that petition and
`instituted the 023 IPR on April 14, 2020. 023 Decision, 1.
`As for the instant proceeding, Apple filed its second petition on
`April 23, 2020, together with the Motion for Joinder, seeking to join the
`023 IPR. Although Patent Owner did not file a Preliminary Response, it
`filed an Opposition to the Motion for Joinder. In its Opposition, Patent
`Owner challenges Apple’s request to join the 023 IPR because, among other
`arguments, Apple’s first petition was denied, and this second petition should
`be denied under General Plastic because Apple is using the joinder
`procedure as an “end run around its failed petition.” Opp. 7. Apple
`responded to that Opposition with a Reply, and, as stated above, Apple
`responds that General Plastic does not apply to its request for joinder.
`Reply 4−5.
`
`6
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`By way of summary, Apple failed in its first attempt to challenge the
`’088 patent, and, over a year later and subject to a § 315(b) bar, seeks to join
`an ongoing proceeding challenging that same patent.
`
`B. General Plastic Factors
`The Board’s decision in General Plastic articulates a non-exhaustive
`list of factors to be considered in evaluating whether to exercise discretion,
`under 35 U.S.C. § 314(a), to deny a petition that challenges a patent that was
`previously challenged before the Board. These factors are:
`1. whether the same petitioner previously filed a petition directed to the
`same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner knew of
`the prior art asserted in the second petition or should have known of
`it;
`3. whether at the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary response to the first
`petition or received the Board’s decision on whether to institute
`review in the first petition;
`4. the length of time that elapsed between the time the petitioner learned
`of the prior art asserted in the second petition and the filing of the
`second petition;
`5. whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the same
`claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the Director
`notices institution of review.
`
`General Plastic, Paper 19 at 9−10.
`
`7
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`C. Assessment of the Factors
`The Petition in the instant proceeding is undeniably the second
`petition Apple has filed challenging the ’088 patent. Patent Owner urges
`that we exercise discretion to deny the Petition and deny joinder because of
`Apple’s repeated challenge and because, in the year since the denial of the
`first petition, Apple has had the benefit of Patent Owner’s filings in prior
`IPRs, and Apple has failed to explain the timing of its second petition and its
`knowledge of the asserted prior art. Opp. 8−9. Accordingly, we address
`each of the factors below.
`
`
`1. “whether the same petitioner previously filed a petition
`directed to the same claims of the same patent”
`As stated above, this is the second petition Apple has filed challenging
`the claims of the ’088 patent. Opp. 8, Pet. 10. In its first petition, Apple
`challenged claims 1−21 of the ’088 patent. IPR2019-00056, Paper 1, 3.
`Here, in Apple’s second petition, Apple challenges a subset of those claims.
`Pet. 13−14.
`Apple unpersuasively argues that its agreement to take an
`“understudy” role in the 023 IPR makes this factor irrelevant. Reply 4. As
`stated earlier, however, the General Plastic factors are relevant to our
`determination whether denial is warranted under § 314(a), even when the
`petition filed is a follow-on petition and Petitioner is not seeking an active
`role in the ongoing IPR. Accordingly, we conclude that this first General
`Plastic factor weighs in favor of denying institution of the proceeding.
`
`8
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`2. “whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it”
`In addressing this second General Plastic factor, Patent Owner argues
`that Apple “has provided no indication that it was not aware of the art later
`asserted in . . . [the 023] IPR” at the time it filed its first petition. Opp. 8.
`Patent Owner further argues that “Apple should have known of the art at
`th[e] time [of filing its first petition], having performed prior art searches to
`prepare its petition, and has not provided a persuasive explanation
`otherwise.” Id. Apple’s contention is that this second General Plastic factor
`is either neutral or irrelevant because there is no overlap between the prior
`art asserted in Apple’s first petition and the 023 IPR petition, and because it
`“is merely seeking to join in an understudy role.” Reply 4.
`We agree with Patent Owner that, in connection with this factor,
`Apple has not explained its knowledge of the prior art asserted in the
`023 IPR and here. However, contrary to Patent Owner’s argument, we do
`not presume Petitioner’s knowledge of the prior art based on prior art
`searches alleged to have been performed in preparation of its first petition.
`The issue for us here is that Apple has failed to set forth facts or offer an
`explanation concerning its knowledge, at the time it filed the first petition, of
`the prior art asserted in the 023 IPR and here. Because of the lack of
`explanation, we conclude that this second General Plastic factor weighs in
`favor of denying institution of the proceeding.
`
`
`9
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`3. “whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s
`decision on whether to institute review in the first petition”
`In addressing the third General Plastic factor, Patent Owner argues
`that the Board had denied Apple’s first petition when Apple filed this second
`petition and Motion for Joinder. Opp. 9. We agree that, as explained above
`in the timeline of events, Apple had received a Board decision denying the
`first petition well before the filing of Apple’s second petition. In its Reply,
`Apple focuses on the fact that its second petition is substantively identical to
`the 023 IPR petition and seeks to join Microsoft as an “understudy,” thereby
`arguing that its second petition is not an attempt to “harass Uniloc or
`otherwise engage in serial, tactic filings.” Reply 4−5.
`Apple’s argument is unpersuasive because the third General Plastic
`factor addresses whether Apple had access to a Board decision or a
`preliminary response concerning its first petition, such that Apple would
`have been in a position to gain a benefit from having that information before
`filing its second petition. The timing of events here shows that Apple indeed
`had two Board decisions concerning its first petition, the decision denying
`institution and a decision of the request for rehearing of that decision.
`Consequently, we conclude that the third General Plastic factor weighs in
`favor of denying institution of the proceeding.
`
`
`4. “the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition”
`In connection with the fourth General Plastic factor, Patent Owner
`argues that Apple has not explained when it learned of the art asserted in the
`
`10
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`023 IPR and here. Opp. 9. Patent Owner repeats that Apple should have
`known of the art when it filed its first petition. Id. Apple argues that this
`factor is inapplicable because its second petition was filed for purposes of
`seeking joinder with the 023 IPR. Reply 5.
`We are not persuaded that this factor is irrelevant to our analysis. The
`fourth General Plastic factor seeks to address a delay, if any, in filing a
`second petition. As stated above with regard to the second General Plastic
`factor, the lack of explanation by Apple provides no context by which to
`ascertain Apple’s knowledge of the prior art asserted in the 023 IPR.
`Therefore, on the record before us, we cannot determine how much time
`elapsed between Apple’s knowledge of the prior art in the 023 IPR and the
`filing of its second petition. Because of the lack of explanation, we conclude
`that this fourth General Plastic factor weighs in favor of denying institution
`of the proceeding.
`
`
`5. “whether the petitioner provides adequate explanation
`for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent”
`Patent Owner and Apple argue the fourth and fifth General Plastic
`factors together. Opp. 5; Reply 5. For the same reasons stated above, for
`instance, Apple’s lack of explanation, we conclude that this fifth General
`Plastic factor also weighs in favor of denying institution.
`
`
`6. “the finite resources of the Board”
`In connection with the sixth General Plastic factor, Patent Owner
`argues that “it is appropriate to consider the resources of the Board in the
`event Microsoft were to cease participation in the Microsoft IPR.” Opp. 9.
`
`11
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`Patent Owner is correct that if Microsoft and Patent Owner were to settle,
`Apple would stand in as a petitioner in the joined proceeding and that the
`Board would expend resources in continuing the proceeding in that event.
`Id. Apple argues that this last General Plastic factor weighs against denial
`of institution because the 023 IPR is already ongoing and Apple’s
`involvement in an understudy role would not impact the Board’s resources.
`Reply 5.
`Although a joinder request is usually an efficient mechanism by which
`to become a petitioner in an IPR, in this case, Apple’s understudy role
`argument is not persuasive. Rather, we agree with Patent Owner that
`because this is Apple’s second petition, should Microsoft settle, Apple
`would stand in to continue a proceeding that would otherwise be terminated.
`Joinder in this circumstance would allow Apple to continue a proceeding,
`even after settlement with the primary petitioner, based on a second attempt
`by Apple. On balance, we conclude that this sixth General Plastic factor
`weighs in favor of denying institution of the proceeding.
`
`
`7. “the requirement under 35 U.S.C. § 316(a)(11) to issue
`a final determination not later than 1 year after the date on
`which the Director notices institution of review”
`Like the sixth General Plastic factor, the seventh factor, “the
`requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not
`later than 1 year after the date on which the Director notices institution of
`review,” implicates an efficiency consideration. Because there is no
`evidence or persuasive argument towards this factor, we determine this
`factor’s weight is neutral.
`
`12
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`D. Conclusion
`After a holistic review of the General Plastic factors and the
`arguments presented for and against the exercise of discretionary denial, we
`conclude that the majority of the factors weigh in favor of denying
`institution of the proceeding. On balance and in view of the policy goals
`articulated in General Plastic, we conclude that it is appropriate here to
`exercise our discretion under 35 U.S.C. § 314(a). Because we decide not to
`institute based on the application of the General Plastic factors, we do not
`address additional arguments Patent Owner presents urging denial of the
`Petition on other grounds.
`
`IV DENIAL OF MOTION FOR JOINDER
`As stated above, the Director may join a party to an ongoing IPR only
`if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c).
`Because we are exercising discretion to deny institution under § 314, we
`deny Petitioner’s Motion for Joinder.
`
`IV. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
`denied; and
`FURTHER ORDERED that the Motion for Joinder is denied.
`
`
`
`
`
`
`
`13
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`PETITIONER:
`
`Larissa S. Bifano
`Michael Van Handel
`DLA PIPER LLP (US)
`larissa.bifano@dlapiper.com
`michael.vanhandel@dlapiper.com
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Brian Koide
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`brian@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`14
`
`
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