Trials@uspto.gov Paper No. 9
`571-272-7822 Entered: November 19, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`_______________
`
`
`
`Case IPR2018-01383
`Patent US 8,872,646
`_______________
`
`Before JENNIFER S. BISK, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review and Granting Motion for Joinder
`35 U.S.C § 314; 35 U.S.C § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`571-272-7822 Entered: November 19, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`_______________
`
`
`
`Case IPR2018-01383
`Patent US 8,872,646
`_______________
`
`Before JENNIFER S. BISK, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review and Granting Motion for Joinder
`35 U.S.C § 314; 35 U.S.C § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`
`INTRODUCTION
`
`I.
`
`Samsung Electronics America, Inc. (“Samsung”) filed a Petition
`
`requesting an inter partes review of claims 1, 3, 5–11, 13–18, and 20 of U.S.
`
`Patent No. 8,872,646 B2 (“the ’646 patent”). Paper 1 (“Pet.”). Patent
`
`Owner Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response to
`
`the Petition (Paper 7, “Prelim. Resp.”).
`
`Along with its Petition, Samsung filed a Motion for Joinder to join as
`
`a petitioner in IPR2018-00289. Paper 3 (“Mot.”). Samsung filed the
`
`Petition and Motion for Joinder on July 11, 2018, respectively, both within
`
`one month after we instituted trial in IPR2018-00289. In its Preliminary
`
`Response to the Petition, Patent Owner opposes Samsung’s Motion for
`
`Joinder. Prelim. Resp. 20.
`
`As explained further below, we determine institution is warranted on
`
`the same grounds as instituted in IPR2018-00289 and grant Samsung’s
`
`Motion for Joinder.
`
`2
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`
`DISCUSSION
`
`II.
`
`In IPR2018-00289, Apple, Inc. (“Apple”) challenged claims 1, 3, 5–
`
`11, 13–18, and 20 of the ’646 patent on the following grounds:
`
`References
`
`Basis
`
`Challenged Claims
`
`Pasolini1, Goldman2,
`McMahan3, and Mizell4
`
`Pasolini, Goldman,
`McMahan, Mizell, and Park5
`
`§ 103(a) 1, 3, 5–7, 9–11, 13–15, 17, and 20
`
`§ 103(a) 8, 16, and 18
`
`IPR2018-00289, Paper 7, 6. After considering the Petition and Patent
`
`Owner’s Preliminary Response, we instituted an inter partes review of
`
`claims 1, 3, 5–11, 13–18, and 20 on Petitioner’s asserted grounds. See id. at
`
`25.
`
`As Petitioner’s Motion for Joinder explains, “the Samsung Petition
`
`introduces identical arguments and the same grounds raised in the existing
`
`Apple proceeding (i.e., challenges the same claims of the same patent, relies
`
`on the same expert declaration, and is based on the same grounds and
`
`combinations of prior art submitted in the Apple Petition).” Mot. 4.
`
`Petitioner further notes, “[o]ther than minor differences, such as differences
`
`related to formalities of a different party filing the petition, there are no
`
`
`1 U.S. Patent No. 7,409,291 B2 (Aug. 5, 2008) (Ex. 1003, “Pasolini”).
`2 Ron Goldman, Using the LIS3L02AQ Accelerometer, Sun Microsystems
`Inc. (Feb. 23, 2007) (Ex. 1004, “Goldman”).
`3 U.S. Patent No. 7,204,123 B2 (Apr. 17, 2007) (Ex. 1005, “McMahan”).
`4 David Mizell, Using Gravity to Estimate Accelerometer Orientation,
`Proceedings of the Seventh IEEE International Symposium on Wearable
`Computers (2003) (Ex. 1007, “Mizell”).
`5 U.S. Patent No. 7,028,220 B2 (Apr. 11, 2006) (Ex. 1014, “Park”).
`
`3
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`
`changes to the facts, citations, evidence, or arguments introduced in the
`
`Apple Petition.” Id.
`
`In its Preliminary Response to the Petition, Patent Owner raises the
`
`same substantive reasons why the Petition fails to prove obviousness as it
`
`does in its Patent Owner Response to Apple’s petition in IPR2018-00289.
`
`Compare IPR2018-00289 Paper 11, 2–18, with Prelim. Resp. 2–19. We
`
`decline to resolve those issues at this point in the proceeding because the
`
`trial in IPR2018-00289 is a better forum in which to do so. Specifically, as
`
`compared to the pre-trial, preliminary phase of this case, the instituted trial
`
`in IPR2018-00289 affords the parties better opportunity to brief, argue, and
`
`develop evidence in support of their positions. Thus, for the same reasons
`
`stated in our Decision on Institution in IPR2018-00289, we determine
`
`institution is warranted here on the same grounds.
`
`Having determined that institution is warranted, we now turn to
`
`Samsung’s Motion for Joinder. Section 315(c) provides, in relevant part,
`
`that “[i]f 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.” When determining whether to
`
`grant a motion for joinder we consider factors such as timing and impact of
`
`joinder on the trial schedule, cost, discovery, and potential simplification of
`
`briefing. Kyocera Corp. v. SoftView, LLC, Case IPR2013-00004, slip op.
`
`at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`Under the circumstances of this case, we determine that joinder is
`
`appropriate. As Samsung explains, “[j]oinder will have minimal impact, if
`
`any, on the Apple IPR trial schedule because the Samsung Petition presents
`
`no new issues or grounds of unpatentability.” Mot. at 5. Further, Samsung
`
`4
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`
`agrees to take an understudy role in the joined proceeding. See id. at 6–7
`
`(specifying conditions of joined party’s participation previously approved by
`
`the Board in similar circumstances). In sum, Samsung explains, “[u]nless
`
`and until the current petitioner ceases to participate in the instituted IPR
`
`proceeding, Samsung will not assume an active role.” Id. at 7.
`
`Patent Owner argues we should exercise our discretion to deny
`
`joinder. According to Patent Owner:
`
`Less than two months after filing its motion for joinder on July
`11, 2018, Petitioner filed a petition challenging claim 22 of the
`same patent in IPR2018-01664. When Petitioner filed its joinder
`petition in this IPR, it knew or should have known of the grounds
`asserted in IPR2018-01664; and the follow-on petition in
`IPR2018-01664 does not allege otherwise. Not only did
`Petitioner delay its joinder petition here to the last possible date
`for strategic advantage, it appears Petitioner chose to separately
`challenge claim 22 and to delay filing that separate challenge (in
`the follow-on petition) only to increase the chances of joinder
`here and gain a strategic advantage. The Board should discourage
`such tactics by exercising its discretion to deny joinder.
`
`Prelim. Resp. 20.
`
`We disagree with Patent Owner. We take no issue with Samsung
`
`taking the full month permitted under 37 C.F.R. § 42.122(b) to file its
`
`joinder petition. In addition, we perceive no unfair tactical advantage with
`
`Samsung structuring its petitions to increase its chances of joinder. Under
`
`these circumstances, we agree with Samsung that joinder is appropriate and
`
`will not unduly impact the ongoing trial in IPR2018-00289. We limit
`
`Petitioner Samsung’s participation in the joined proceeding, such that
`
`(1) Apple alone is responsible for all petitioner filings in the joined
`
`proceeding until such time that it is no longer an entity in the joined
`
`proceeding, and (2) Samsung is bound by all filings by Apple in the joined
`
`5
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`
`proceeding, except for filings regarding termination and settlement.
`
`Samsung must obtain prior Board authorization to file any paper or to take
`
`any action on its own in the joined proceeding, so long as Apple remains as
`
`a non-terminated petitioner in the joined proceeding. This arrangement
`
`promotes the just and efficient administration of the ongoing trial in Case
`
`IPR2018-00289 and protects the interests of Apple as original petitioner in
`
`Case IPR2018-00289, and of Patent Owner.
`
`For the foregoing reasons, and with the limitations discussed above,
`
`Petitioner’s Motion for Joinder is granted.
`
`III.
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that the Petition is granted and an inter partes review of
`
`the ’646 patent is warranted on the following grounds:
`
`1) Obviousness of claims 1, 3, 5–7, 9–11, 13–15, 17, and 20 over
`Pasolini, Goldman, McMahan, and Mizell;
`
`2) Obviousness of claims 8, 16, and 18 over Pasolini, Goldman,
`McMahan, Mizell, and Park;
`
`FURTHER ORDERED that Samsung’s Motion for Joinder with
`
`IPR2018-00289 is granted, and Samsung is joined as a petitioner in that case
`
`pursuant to 37 C.F.R. § 42.122, based on the conditions discussed above;
`
`FURTHER ORDERED that the Petition is dismissed, pursuant to 37
`
`C.F.R. § 42.71(a);
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`IPR2018-00289 (Paper 8) shall govern the joined proceedings;
`
`6
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`
`FURTHER ORDERED that all future filings in the joined proceeding
`
`shall be made only in IPR2018-00289;
`
`FURTHER ORDERED that the case caption in IPR2018-00289 for all
`
`further submissions shall be changed to add Samsung as a named Petitioner
`
`after Apple, and to indicate by footnote the joinder of IPR2018-01383 to that
`
`proceeding, as indicated in the attached sample case caption; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the record of IPR2018-00289.
`
`
`
`
`
`7
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`
`
`FOR PETITIONER Samsung:
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Joseph Palys
`josephpalys@paulhastings.com
`
`Phillip Citroen
`phillipcitroen@paulhastings.com
`
`Michael Wolfe
`michaelwolfe@paulhastings.com
`
`FOR PETITIONER Apple:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Thomas W. Kelton
`thomas.kelton.ipr@haynesboone.com
`
`Calmann Clements
`calmann.clements.ipr@haynesboone.com
`
`FOR PATENT Owner:
`
`Ryan Loveless
`ryan@etheridgelaw.com
`
`Sean Burdick
`sean.burdick@unilocusa.com
`
`Brett Mangrum
`brett@etheridgelaw.com
`
`James Etheridge
`jim@etheridgelaw.com
`
`Jeffrey Huang
`
`8
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`jeff@etheridgelaw.com
`
`
`
`
`
`9
`
`
`
`IPR2018-01383
`Patent 8,872,646
`
`
`Sample Case Caption
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-002896
`Patent US 8,872,646 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6 Samsung Electronics America, Inc., which filed a petition in IPR2018-
`01383, has been joined as a party to this proceeding.
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
