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Trial@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: January 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-01503
`Patent 6,216,158 B1
`____________
`
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Granting Motion for Joinder
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`

`

`IPR2018-011503
`Patent
`
`
`I. INTRODUCTION
`
`A. Background
`LG Electronics, Inc. (“Petitioner”) filed a Petition for inter partes
`
`review of claims 1, 2, 69, 12, 14, 15, and 20 (“the challenged claims”) of
`U.S. Patent No. 6,216,158 B1 (Ex. 1001, “the ’158 patent”). Paper 2
`(“Pet.”), 1. Concurrently with the Petition, Petitioner filed a Motion for
`Joinder with Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-00361 (“the
`Apple IPR”). Paper 3 (“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 7 (“Prelim. Resp.”). Patent Owner acknowledges the
`joinder request, and does not otherwise state whether it opposes joinder. Id.
`at 1 n.1.
`
`For the reasons explained below, we institute an inter partes review of
`the challenged claims of the ’158 patent, and grant Petitioner’s Motion for
`Joinder.
`
`B. Related Matters
`The parties indicate that the ’158 patent is involved in Uniloc USA,
`
`Inc. v. LG Electronics USA, Inc., Case No. 4-17-cv-00827 (N.D. Tex.) and
`Case No. 4-17-cv-02915 (N.D. Cal.), and other proceedings. Pet. 23;
`Prelim. Resp. 2.
`
`In the Apple IPR, we instituted an inter partes review of the
`challenged claims on the following grounds:
`
`2
`
`

`

`IPR2018-011503
`Patent
`
`
`Claims
`1, 2, 69, 12, 14, 15, and 20
`
`1, 2, 69, 12, 14, 15
`
`Basis
`§ 103
`
`§ 103
`
`References
`Jini-QS,1 Arnold,2 and
`McCandless3
`Riggins4 and Devarakonda5
`
`IPR2018-00361, slip op. at 2324 (PTAB July 15, 2018) (Paper 8)
`(“Decision on Institution”).
`
`II. INSTITUTION OF INTER PARTES REVIEW
`Petitioner contends that the Petition is “a carbon copy” of the Petition
`
`in the Apple IPR and, thus, asserts the grounds that the Board instituted in
`the Apple IPR, with no new arguments for the Board to consider, and relies
`on the same exhibits and expert declaration as in the Apple IPR. Mot. 1, 6.
`
`We acknowledge Patent Owner’s arguments and evidence supporting
`its position that the claims would not have been obvious. Prelim. Resp. 12–
`44. Certain of Patent Owner’s arguments against the merits of the Petition
`have been previously addressed in the Decision on Institution in the Apple
`IPR, and we need not address them here again. Certain other arguments
`against the merits of the Petition mirror arguments made in the Patent Owner
`Response filed in the Apple IPR. For instance, Patent Owner now
`introduces argument and evidence concerning whether Jini-QS qualifies as
`prior art. Prelim. Resp. 1213. Patent Owner’s arguments and evidence
`
`1 Jini: Quick Study, COMPUTERWORLD, Dec. 7, 1998 (Exhibit 1005) (“Jini-
`QS”).
`2 U.S. Patent No. 6,393,497 B1 (Exhibit 1006) (“Arnold”).
`3 The PalmPilot and the Handheld Revolution, (IEEE Expert, 1997),
`(Exhibit 1007) (“McCandless”).
`4 U.S. Patent No. 6,131,116 (Exhibit 1008) (“Riggins”).
`5 U.S. Patent No. 6,757,729 B1 (Exhibit 1009) (“Devarakonda”).
`
`3
`
`

`

`IPR2018-011503
`Patent
`
`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. 44. “Patent Owner . . . adopts this constitutional challenge
`now to ensure the issue is preserved pending the appeal.” Id.
`
`The Board has previously “declin[ed] to consider [the] constitutional
`challenge as, generally, ‘administrative agencies do not have jurisdiction to
`decide the constitutionality of congressional enactments.’” Square, Inc. v.
`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
`We instituted the Apple IPR on July 15, 2018. The Petition here was
`
`filed on August 3, 2018, concurrently with the Motion. Petitioner’s Motion
`
`4
`
`

`

`IPR2018-011503
`Patent
`
`for Joinder is timely because joinder was requested no later than one month
`after the institution date of the Apple IPR. 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, Paper 15, 4 (PTAB Apr. 24, 2013).
`
`As noted, the Petition in this case asserts the same unpatentability
`ground on which we instituted review in the Apple IPR. Petitioner also
`relies on the same prior art analysis and expert testimony submitted in the
`Apple IPR. Indeed, the Petition is substantively “a carbon copy” of the
`petition filed by in the Apple IPR. Mot. 1. 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 Inc. as a party.
`Id. at 6–7. Petitioner agrees to “[a]ssume a second-chair role as long as
`Apple Inc. remains in the proceeding.” Id. at 7. Petitioner further represents
`that “[n]o new grounds of unpatentability are asserted” and that “joinder
`
`5
`
`

`

`IPR2018-011503
`Patent
`
`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-
`
`01503;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`00361 is granted, and LG Electronics, Inc. is joined as a petitioner in
`IPR2018-00361;
`
`FURTHER ORDERED that IPR2018-01503 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2018-
`00361;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2018-00361 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2018-00361 (Paper 9) remains unchanged;
`
`FURTHER ORDERED that in IPR2018-00361, Apple Inc. and LG
`Electronics, Inc. will file each paper 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;
`
`6
`
`

`

`IPR2018-011503
`Patent
`
`FURTHER ORDERED that the case caption in IPR2018-00361 shall
`
`be changed to reflect joinder of LG Electronics, 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 IPR2018-00361.
`
`
`
`7
`
`

`

`IPR2018-011503
`Patent
`
`For PETITIONER:
`
`Anand K. Sharma
`Minjae Kang
`Joshua L. Goldberg
`Cory C. Bell
`Bradford C. Schulz
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`Anand.sharma@fingegan.com
`Minjae.kang@finnegan.com
`Joshua.goldberg@finnegan.com
`Cory.bell@finnegan.com
`Bradford.schulz@finnegan.com
`
`
`For PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@eheridgelaw.com
`
`8
`
`

`

`Trial@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: January 15, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. and LG ELECTRONICS, INC., 6
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-00361
`Patent 6,216,158 B1
`____________
`
`
`
`6 In IPR2018-01503, LG Electronics, Inc. filed a Petition and Motion for
`Joinder, which we granted, and, therefore, has been joined as a petitioner in
`this proceeding.
`
`
`
`

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