`571-272-7822
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`
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`
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`Paper 13
`Date: January 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., HTC CORPORATION, and HTC
`AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-01458
`Patent 8,712,723 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Petitioner’s Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`
`I. INTRODUCTION
`
`A. Background
`LG Electronics, Inc., HTC Corporation, and HTC America, Inc.
`
`(collectively “Petitioner”) filed a Petition for inter partes review of claims
`1−3, 5−7, and 10−18 of U.S. Patent No. 8,712,723 B1 (Ex. 1001, “the ’723
`patent”). Paper 1 (“Pet.”), 1. Concurrently with its petition, Petitioner filed
`a Motion for Joinder with Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-
`00389 (“the Apple IPR”). Paper 4 (“Motion” or “Mot.”). Petitioner
`represents that the petitioner in the Apple IPR—Apple Inc.—does not
`oppose the Motion for Joinder. Mot. 1. Uniloc 2017 LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Patent Owner
`acknowledges the joinder request, but does not state whether it opposes
`joinder. Id. at 1 n.1.
`
`For the reasons explained below, we institute an inter partes review of
`claims 1−3, 5−7, and 10−18 of the ’723 patent and grant Petitioner’s Motion
`for Joinder.
`
`B. Real Parties-in-Interest
`The statute governing inter partes review proceedings sets forth
`
`certain requirements for a petition for inter partes review, including that “the
`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a)(2); see also
`37 C.F.R. § 42.8(b)(1) (requiring identification of real parties-in-interest in
`mandatory notices). The Petition identifies LG Electronics, Inc., LG
`Electronics U.S.A., Inc., LG Electronics MobileComm USA, Inc., HTC
`Corporation, and HTC America, Inc. as the real parties-in-interest. Pet. 2.
`
`2
`
`
`
`IPR2018-01458
`Patent 8,712,723 B1
`
`Patent Owner states that its real parties-in-interest are Uniloc 2017 LLC,
`Uniloc USA, Inc., and Uniloc Licensing USA LLC. Paper 7, 2.
`
`C. Related Matters
`The parties indicate that the ’723 patent is involved in Uniloc USA,
`
`Inc. v. HTC Am., Inc., Case No. 2-17-cv-01629 (W.D. Wash), Uniloc USA,
`Inc. v. LG Elecs. USA, Inc., Case No. 4:18-cv-02918 (N.D. Cal.), and other
`proceedings. Pet. 2; Prelim. Resp. 3.
`
`In the Apple IPR, we instituted an inter partes review of claims 1–3,
`5–7, and 10–18 of the ’723 patent on the following ground:
`References
`Basis1
`Challenged Claims
`Fabio2 and Pasolini3
`35 U.S.C. § 103(a)
`1–3, 5–7, and 10–18
`
`Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-00389, slip. op. at 6, 24
`(PTAB June 27, 2018) (Paper 7) (“Apple Decision” or “Apple Dec.”).
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same ground of
`
`unpatentability as the one on which we instituted review in the Apple IPR.
`Compare Pet. 28–68, with Apple Dec. 6, 25. Indeed, Petitioner contends
`that the Petition asserts only the ground that the Board instituted in the
`Apple IPR, there are no new arguments for the Board to consider, and the
`
`
`1 The ’723 patent was filed on January 31, 2011, prior to the date when the
`Leahy-Smith America Invents Act (“AIA”) took effect.
`2 US 7,698,097 B2 (filed Oct. 2, 2006, issued Apr. 13, 2010) (Ex. 1006,
`“Fabio”).
`3 US 7,463,997 B2 (filed Oct. 2, 2006, issued Dec. 9, 2008) (Ex. 1005,
`“Pasolini”).
`
`3
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`
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`IPR2018-01458
`Patent 8,712,723 B1
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`Petitioner relies on the same exhibits and expert declaration as in the Apple
`IPR. Mot. 6–8.
`
`We acknowledge Patent Owner’s arguments and evidence supporting
`its position that the claims would not have been obvious. Prelim. Resp. 14–
`31. Certain of Patent Owner’s arguments against the merits of the Petition
`have been previously addressed in the Apple Decision, and we need not
`address them here again. Certain other arguments against the merits of the
`Petition closely mirror arguments made in the Patent Owner Response filed
`in the Apple IPR (compare Prelim. Resp. 14–31, with Apple IPR PO Resp.
`(IPR2018-00389, Paper 11), 9–25). Patent Owner’s arguments and evidence
`will be fully considered in the Apple IPR. Doing so ensures that we review
`Patent Owner’s arguments and evidence in light of a full record, avoids
`premature evaluation of arguments and evidence at issue in the Apple IPR,
`and ensures consistency across proceedings involving the same petitions. In
`sum, Patent Owner’s arguments made in its Preliminary Response in this
`case do not persuade us that Petitioner has not demonstrated a reasonable
`likelihood of success in prevailing on the same grounds as instituted in the
`Apple IPR.
`
`Additionally, Patent Owner notes that an argument made in an
`unrelated appeal pending at the U.S. Court of Appeals for the Federal Circuit
`asserts that “the Board’s appointments of administrative patent judges
`violate the Appointments Clause of Article II” of the U.S. Constitution.
`Prelim. Resp. 30. “Patent Owner . . . adopts this constitutional challenge . . .
`to ensure the issue is preserved pending the appeal.” Id. at 30–31.
`
`The Board has previously “declin[ed] to consider [the] constitutional
`challenge as, generally, ‘administrative agencies do not have jurisdiction to
`
`4
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`IPR2018-01458
`Patent 8,712,723 B1
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`decide the constitutionality of congressional enactments.’” Square, Inc.
`Unwired Planet LLC, IPR2014-01165, slip op. at 25 (PTAB Oct. 30, 2015)
`(Paper 32) (quoting Riggin v. Office of Senate Fair Emp’t Practices, 61 F.3d
`1563, 1569 (Fed. Cir. 1995)). We, likewise, decline to consider Patent
`Owner’s constitutionality argument.
`
`III. MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`
`a filing date of July 27, 2018. See Paper 5. Thus, Petitioner’s Motion for
`Joinder is timely because joinder was requested no later than one month
`after the institution date of the Apple IPR, i.e., June 27, 2018. See 37 C.F.R.
`§ 42.122(b).
`
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which states:
`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.
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition;
`(3) explain what impact (if any) joinder would have on the trial schedule for
`the existing review; and (4) address specifically how briefing and discovery
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`5
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`
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`IPR2018-01458
`Patent 8,712,723 B1
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`As noted, the Petition in this case asserts the same unpatentability
`
`ground on which we instituted review in the Apple IPR. See Mot. 6.
`Petitioner also relies on the same prior art analysis and expert testimony
`submitted by the Apple Petitioner. See id. Indeed, the Petition is nearly
`identical to the petition filed by the Apple Petitioner with respect to the
`ground on which review was instituted in the Apple IPR. See id. Thus, this
`inter partes review does not present any ground or matter not already at
`issue in the Apple IPR.
`
`If joinder is granted, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of Apple Petitioner as a
`party. Id. at 6–7. Petitioner agrees to “[a]ssume a second-chair role as long
`as the Apple Petitioner remains in the proceeding.” Id. at 7. Petitioner
`further represents that “[n]o new grounds of unpatentability are asserted”
`and that “joinder would not adversely impact the trial schedule, briefing, or
`discovery in the Apple IPR.” Id. at 8.
`
`We agree with Petitioner that joinder with the Apple IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that an inter partes review is instituted in IPR2018-
`
`01458;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`00389 is granted, and LG Electronics, Inc., HTC Corporation, and HTC
`America, Inc. are joined as a petitioner in IPR2018-00389;
`
`6
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`IPR2018-01458
`Patent 8,712,723 B1
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`FURTHER ORDERED that IPR2018-01458 is terminated under 37
`
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-00389;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-00389 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2018-00389 (Paper 8) remains unchanged;
`
`FURTHER ORDERED that in IPR2018-00389, the Apple Petitioner
`and Petitioner will file each paper, except for a motion that does not involve
`the other party, as a single, consolidated filing, subject to the page limits set
`forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
`consolidated filing;
`
`FURTHER ORDERED that for any consolidated filing, if Petitioner
`wishes to file an additional paper to address points of disagreement with the
`Apple Petitioner, Petitioner must request authorization from the Board to file
`a motion for additional pages, and no additional paper may be filed unless
`the Board grants such a motion;
`
`FURTHER ORDERED that the Apple Petitioner and Petitioner shall
`collectively designate attorneys to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
`by the Apple Petitioner and Petitioner, within the timeframes set forth in 37
`C.F.R. § 42.53(c) or agreed to by the parties;
`
`FURTHER ORDERED that the Apple Petitioner and Petitioner shall
`collectively designate attorneys to present at the oral hearing, if requested
`and scheduled, in a consolidated argument;
`
`FURTHER ORDERED that the case caption in IPR2018-00389 shall
`be changed to reflect joinder of LG Electronics, Inc., HTC Corporation, and
`
`7
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`IPR2018-01458
`Patent 8,712,723 B1
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`HTC America, Inc. as a petitioner in accordance with the attached example;
`and
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the record of IPR2018-00389.
`
`8
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`
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`IPR2018-01458
`Patent 8,712,723 B1
`
`For PETITIONER (IPR2018-01458):
`Anand K. Sharma
`Minjae Kang
`Joshua L. Goldberg
`Cory C. Bell
`Bradford C. Schulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`anand.sharma@finnegan.com
`minjae.kang@finnegan.com
`joshua.goldberg@finnegan.com
`cory.bell@finnegan.com
`bradford.schulz@finnegan.com
`
`Todd E. Landis
`Mario A. Apreotesi
`VINSON & ELKINS LLP
`tlandis@velaw.com
`mapreotesi@velaw.com
`
`For PETITIONER (IPR2018-00389):
`
`Andrew Ehmke
`Michael Parsons
`HAYNES AND BOONE LLP
`Andy.ehmke.ipr@haynesboone.com
`Michael.parsons.ipr@haynesboone.com
`
`For PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Sean Burdick
`UNILOC USA
`Sean.burdick@unilocusa.com
`
`
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`9
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`
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`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Date: January 25, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., LG ELECTRONICS, INC., HTC CORPORATION, AND
`HTC AMERICA, INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-003894
`Patent 8,712,723 B1
`____________
`
`
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`4 LG Electronics, Inc., HTC Corporation, and HTC America, Inc., who filed
`a Petition in IPR2018-01458, have been joined as a petitioner in this
`proceeding.
`
`
`
`