Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: October 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`Before MIRIAM L QUINN, AMANDAF. WIEKER,and
`SCOTT RAEVSKY,Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 U.S.C. $314
`
`Denying Motion for Joinder
`35 US.C. § 315(c); 37 CFR. § 42.122
`
`
`571-272-7822
`
`Paper 9
`Entered: October 28, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`Before MIRIAM L QUINN, AMANDAF. WIEKER,and
`SCOTT RAEVSKY,Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`35 U.S.C. $314
`
`Denying Motion for Joinder
`35 US.C. § 315(c); 37 CFR. § 42.122
`
`
`
`IPR2020-00854
`Patent 6,467,088 Bl
`
`I.
`
`INTRODUCTION
`
`AppleInc. (“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 alsofiled 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.”).'
`
`Petitioner filed a Reply to Patent Owner’s Opposition. Paper 8 (“Reply”).
`
`Wehaveauthority under 35 U.S.C. § 314(a), which provides that an inter
`
`partes review may notbeinstituted “unless .
`
`.
`
`. there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challengedin the petition.”
`
`For the reasons described below, we do notinstitute an inter partes
`
`review of the challenged claims and deny Petitioner’s Motion for Joinder.
`
`Il. RELATED PROCEEDINGS
`
`The parties indicate that the ’088 patent is the subject of several court
`
`proceedings, the 023 IPRfiled by Microsoft, and a prior petition for inter
`
`partes reviewfiled by Petitioner. Pet. 10; Paper 5, 2. In particular, the
`
`’088 patent was the subject ofApple Inc. v. Uniloc 2017 LLC, IPR2019-
`
`00056 (“the 056 IPR”), where the Board issued a decision notto institute
`
`inter partes review. Pet. 10.
`
`In the 023 IPR, weinstituted an inter partes review of claims 1-4,
`
`6-14, and 16-21 of the ’088 patent based on the following assertedpriorart
`
`and grounds:
`
`' Patent Ownerdid notfile a Preliminary Response.
`
`2
`
`
`
`IPR2020-00854
`Patent 6,467,088 Bl
`
`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:
`
`
`
`
`2
`Claims Challenged
`
`in 023 IPR 35 U.S.C. §*|References/Basis
`
`1-4, 6-14, 16-21
`103(a)
`Apfel, Lillich, Todd
`
`Apfel, Lillich, Todd, Pedrizetti
`103(a)
`
`
`Apfel, Lillich
`103(a)
`1-3, 9-13, 19-21
`
`
`1,3, 4, 6-11, 13, 14,
`Apfel, Todd
`103(a)
`16-21
`
`
`Id.
`
`Ill. WHETHER TO INSTITUTE JNTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same groundsof
`
`unpatentability as those upon which weinstituted review in the 023 IPR.
`
`Compare Pet. 13-15, with 023 Dec. 5, 30. Indeed, Petitioner contendsthat
`
`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 andthe instant Petition). We
`
`agree that the Petition here asserts challenges and evidenceidentical to those
`
`* Becausethe application leading to the ’088 patent was filed before
`March16, 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).
`
`
`
`IPR2020-00854
`Patent 6,467,088 Bl
`
`asserted in the 023 IPR. Having already considered the merits of those
`
`challenges and evidence vis-a-vis the threshold of institution for inter partes
`
`review, we determinethat the Petition here also presents a reasonable
`
`likelihood of prevailing on the challenge ofat 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 § JI.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 patentin the first instance. This is the
`
`kind ofserial attack that General Plastic was intended to address. General
`
`Plastic, Paper 19 at 17 (‘““Multiple, staggered petitions challenging the same
`
`patent and sameclaimsraise the potential for abuse.”).
`
`That Petitioner seeks to join the 023 IPR does not obligate us to
`
`institute this proceeding withoutfirst considering whether to exercise
`
`
`
`IPR2020-00854
`Patent 6,467,088 Bl
`
`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 whoproperlyfiles 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 undersection 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 whetherto “exercise .
`
`.
`
`. discretion to
`
`decide whetherto ‘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 forat 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 thoughthe Petition is a ““me-too petition,” wefirst
`
`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 filedafirst petition challenging the 088 patent. 056 IPR,
`
`Paper 1. We deniedthat petition on April 29, 2019 because the evidence
`
`and arguments presented failed to meet substantively the reasonable
`
`likelihood threshold required for institution. Jd. at Paper 7. Subsequently,
`
`Apple filed a request for rehearing the Board’s decision denyinginstitution,
`
`which the Board denied on July 15, 2019. Jd. 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 yearprior 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.
`
`Asfor 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 Ownerdid not file a Preliminary Response,it
`
`filed an Opposition to the Motion for Joinder. In its Opposition, Patent
`Ownerchallenges Apple’s request to join the 023 JPR 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 aroundits 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.
`
`
`
`IPR2020-00854
`Patent 6,467,088 Bl
`
`By way of summary, Applefailed in its first attempt to challenge the
`
`°088 patent, and, over a yearlater and subject to a § 315(b) bar, seeks to join
`
`an ongoing proceeding challenging that samepatent.
`
`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:
`
`l. whetherthe samepetitioner previously filed a petition directed to the
`same claims of the same patent;
`. whetherat the timeoffiling ofthe first petition the petitioner knew of
`the prior art asserted in the second petition or should have known of
`it;
`
`.
`
`. whetherat the time offiling of the second petition the petitioner
`already received the patent owner’s preliminary responseto the first
`petition or received the Board’s decision on whetherto institute
`review in thefirst petition;
`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;
`. whetherthe petitioner provides adequate explanation for the time
`elapsed betweenthefilings of multiple petitions directed to the same
`claims of the same patent;
`
`6.
`
`7.
`
`the finite resources of the Board; and
`
`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.
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`C. Assessment ofthe Factors
`
`The Petition in the instant proceeding is undeniably the second
`
`petition Apple has filed challenging the ’088 patent. Patent Ownerurges
`
`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 hasfailed to explain the timing of its second petition andits
`
`knowledge ofthe asserted prior art. Opp. 8-9. Accordingly, we address
`
`each of the factors below.
`
`1. “whether the samepetitioner previouslyfiled a petition
`directed to the same claims ofthe same patent”
`
`Asstated 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, Paper1, 3.
`
`Here, in Apple’s secondpetition, 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 makesthis 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 whenthe
`
`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 denyinginstitution of the proceeding.
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`2. “whetherat the time offiling of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have knownofit”
`
`In addressing this second General Plastic factor, Patent Owner argues
`
`that Apple “has provided no indication that it was not aware oftheart later
`
`asserted in... [the 023] IPR”at the timeit filed its first petition. Opp. 8.
`
`Patent Ownerfurther argues that “Apple should have knownofthe art at
`
`th{e] time [offiling its first petition], having performedprior art searchesto
`
`prepareits petition, and has not provided a persuasive explanation
`
`otherwise.” Jd. 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 becauseit
`
`“is merely seeking to join in an understudyrole.” Reply 4.
`
`Weagree with Patent Ownerthat, in connection with this factor,
`
`Apple has not explained its knowledgeofthe prior art asserted in the
`
`023 IPR and here. However, contrary to Patent Owner’s argument, we do
`
`not presumePetitioner’s knowledge ofthe prior art based on priorart
`
`searches alleged to have been performedin preparationofits first petition.
`
`Theissue for us here is that Apple has failed to set forth facts or offer an
`
`explanation concerning its knowledge, at the timeit filed the first petition, of
`
`the prior art asserted in the 023 IPR and here. Becauseofthe lack of
`
`explanation, we conclude that this second General Plastic factor weighs in
`
`favor of denying institution of the proceeding.
`
`
`
`IPR2020-00854
`Patent 6,467,088 B1
`
`3. “whetherat the time offiling of the second petition the
`petitioner already received the patent owner’s preliminary
`responseto the first petition or received the Board’s
`decision on whetherto institute review in thefirst petition”
`
`In addressing the third General Plastic factor, Patent Owner argues
`
`that the Board had denied Apple’s first petition when Applefiled 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 thefiling 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 secondpetition is not an attempt to “harass Uniloc or
`
`otherwise engagein serial, tactic filings.” Reply 4—S.
`
`Apple’s argumentis unpersuasive because the third General Plastic
`
`factor addresses whether Apple had access to a Board decision or a
`
`preliminary response concerningits first petition, such that Apple would
`have beeninaposition 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 concerningits 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 weighsin
`
`favor of denyinginstitution of the proceeding.
`
`4. “the length oftime that elapsed betweenthe time the
`petitioner learnedofthe prior art asserted in the second
`petition andthefiling ofthe second petition”
`
`In connection with the fourth General Plastic factor, Patent Owner
`
`argues that Apple has not explained whenit learned of the art assertedin the
`
`10
`
`
`
`IPR2020-00854
`Patent 6,467,088 Bl
`
`023 IPR and here. Opp. 9. Patent Ownerrepeats that Apple should have
`
`knownofthe art whenitfiled its first petition. Jd. Apple argues thatthis
`
`factor is inapplicable because its second petition wasfiled for purposes of
`
`seeking joinder with the 023 IPR. Reply 5.
`
`Weare not persuadedthat this factoris 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 knowledgeofthe priorart asserted in the 023 IPR.
`
`Therefore, on the record before us, we cannot determine how muchtime
`
`elapsed between Apple’s knowledgeofthe 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 betweenthefilings ofmultiple
`petitions directed to the same claims ofthe same patent”
`
`Patent Owner and Apple argue the fourth and fifth General Plastic
`
`factors together. Opp. 5; Reply 5. For the same reasonsstated above, for
`
`instance, Apple’s lack of explanation, we concludethat this fifth General
`
`Plastic factor also weighs in favor of denyinginstitution.
`
`6. “the finite resources of the Board”
`
`In connection with the sixth General Plastic factor, Patent Owner
`
`arguesthat “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 Owneris correct that if Microsoft and Patent Owner wereto 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.
`
`Althougha joinder request is usually an efficient mechanism by which
`
`to becomea petitioner in an IPR,in this case, Apple’s understudyrole
`
`argumentis not persuasive. Rather, we agree with Patent Ownerthat
`
`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 concludethat this sixth General Plastic factor
`
`weighsin favor of denying institution of the proceeding.
`
`7. “the requirement under 35 U.S.C. § 316(a)(1 1) to issue
`a final determination not later than I year after the date on
`which the Director notices institution ofreview”
`
`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. Becausethere is no
`
`evidence or persuasive argument towardsthis factor, we determinethis
`
`factor’s weight is neutral.
`
`
`
`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
`
`concludethat the majority of the factors weigh in favor of denying
`
`institution of the proceeding. On balance andin view ofthe policy goals
`
`articulated in General Plastic, we concludethat 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 Ownerpresents urging denial of the
`
`Petition on other grounds.
`
`IV.
`
`DENIAL OF MOTION FOR JOINDER
`
`Asstated 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 weare exercising discretion to deny institution under § 314, we
`
`deny Petitioner’s Motion for Joinder.
`
`IV. ORDER
`
`Accordingly,it is:
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), the Petitionis
`
`denied; and
`
`FURTHER ORDEREDthat the Motion for Joinderis 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
`
`
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