Trials@uspto.gov Paper No. 9
`571-272-7822 Filed: January 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORP., HTC AMERICA, INC., and LG ELECTRONICS, INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01631
`Patent 7,881,902 B1
`____________
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a);
`
`Granting of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`571-272-7822 Filed: January 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORP., HTC AMERICA, INC., and LG ELECTRONICS, INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01631
`Patent 7,881,902 B1
`____________
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a);
`
`Granting of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`
`I. INTRODUCTION
`
`A. Background
`HTC Corporation, HTC America, Inc., and LG Electronics, Inc.
`(collectively, “Petitioner” or “HTC/LG”)1 filed a Petition requesting inter
`partes review of claims 1−6, 9, and 10 (“the challenged claims”) of
`U.S. Patent No. 7,881,902 B1 (Ex. 1001, “the ’902 patent”). Paper 1
`(“Pet.”). Concurrently, Petitioner filed a Motion for Joinder seeking to join
`Petitioner as a party to the following instituted proceeding: Apple Inc. v.
`Uniloc Luxembourg S.A., Case IPR2018-00424 (PTAB) (“the Apple IPR”).
`Paper 4 (“Mot.”). Uniloc 2017 LLC (“Patent Owner”)2 filed a Preliminary
`Response (Paper 8, “Prelim. Resp.”) to the Petition, but did not file an
`opposition to the Motion for Joinder. We have jurisdiction under 35 U.S.C.
`§ 314.
`For the reasons discussed below, we institute inter partes review of all
`challenged claims, and grant Petitioner’s Motion for Joinder.
`B. Related Matters
`The following are matters that could affect, or be affected by, a
`decision in this proceeding because they involve the ’902 patent, or patents
`that are related to the ’902 patent:
`• Uniloc USA, Inc. v. Huawei Devices USA, Inc., 2-17-cv-00737 (EDTX);
`• Uniloc USA, Inc. v. HTC Am., Inc., 2-17-cv-01629 (W.D. Wa);
`
`
`1 Petitioner identifies HTC Corporation, HTC America, Inc., LG Electronics,
`Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm USA,
`Inc. as the real parties-in-interest. Pet. 1.
`2 Patent Owner identifies Uniloc 2017 LLC, Uniloc USA, Inc., and Uniloc
`Licensing USA LLC as the real parties-in-interest.
`
`2
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`• Uniloc USA, Inc. v. Samsung Elec. Am., Inc., 2-17-cv-00650 (EDTX);
`• Uniloc USA, Inc. v. LG Elec. USA, Inc., 4-18-cv-02918 (NDCA);
`• Uniloc USA, Inc. v. Apple Inc., 4-18-cv-00364 (NDCA);
`• Apple Inc. v. Uniloc Luxembourg S.A., Case IPR2018-00387 (PTAB);
`• Apple Inc. v. Uniloc Luxembourg S.A., Case IPR2018-00389 (PTAB);
`• Apple Inc. v. Uniloc Luxembourg S.A., Case IPR2018-00424 (PTAB);
`• Apple Inc. v. Uniloc Luxembourg S.A., Case IPR2018-01028 (PTAB);
`• LG Elec., Inc. v. Uniloc 2017 LLC, Case IPR2018-01458 (PTAB);
`• HTC Corp. v. Uniloc 2017 LLC, Case IPR2018-01589 (PTAB);
`• Samsung Elec. Co., Ltd. v. Uniloc 2017 LLC, Case IPR2018-01653
`(PTAB);
`• Samsung Elec. Am., Inc. v. Uniloc 2017 LLC, Case IPR2018-01756
`(PTAB); and
`• Samsung Elec., Inc. v. Uniloc 2017 LLC, Case IPR2018-01757 (PTAB).
`C. Evidence Relied Upon3
`
`Effective Date4
`
`Exhibit
`
`Reference
`Pasolini
`
`Fabio
`
`US 7,463,997
`
`US 7,698,097 B2
`
`Oct. 2, 2006
`
`Oct. 2, 2006
`
`Mitchnick
`
`US 2006/0084848 A1
`
`Oct. 14, 2004
`
`1005
`
`1006
`
`1007
`
`
`3 Petitioner also relies upon the Declaration of Joseph A. Paradiso, Ph.D.
`(Ex. 1003). Patent Owner relies upon the Declaration of William C. Easttom
`II (Ex. 2001).
`4 Petitioner relies on the filing dates of Pasolini, Fabio, and Mitchnick as the
`effective date for determining their availability as prior art.
`
`3
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`
`Reference
`Tanenhaus
`
`US 6,469,639 B2
`
`Sheldon
`
`US 5,957,957
`
`Effective Date4
`
`Exhibit
`
`Oct. 22, 2002
`
`Sept. 28, 1999
`
`1008
`
`1009
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference(s)
`Basis
`Claim(s) Challenged
`Mitchnick
`§ 103(a)
`1 and 2
`Mitchnick and Sheldon
`§ 103(a)
`3
`Mitchnick, Sheldon, and
`§ 103(a)
`4
`Tanenhaus
`Fabio and Pasolini
`§ 103(a)
`5, 6, 9, and 10
`II. ANALYSIS
`A. Institution of Inter Partes Review
`In its Motion for Joinder, Petitioner represents that this Petition “is a
`carbon copy of the original Apple IPR petition in all material respects,” and
`differs from the Apple IPR petition only in the introduction, which identifies
`the Petitioner and provides the mandatory notices required by 37 C.F.R.
`§ 42.8(b). Mot. 1. Petitioner, therefore, represents that this Petition and the
`Apple IPR petition “challenge the same claims of the ’902 patent on the
`same grounds relying on the same prior art and evidence, including a
`declaration identical in substance from the same expert.” Id. Our
`independent review of the Petition and the Apple IPR petition, including the
`expert declarations filed in both, confirm Petitioner’s representations.
`The Apple IPR petition was filed on January 5, 2018, challenging
`claims 1–6, 9, and 10 of the ’902 patent on the same grounds raised in this
`
`4
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`Petition. See Apple IPR, Paper 2. Patent Owner filed a preliminary
`response to the Apple IPR petition on May 7, 2018. Id., Paper 6 (“Apple
`IPR Prelim. Resp.”). We instituted inter partes review based on the Apple
`IPR petition on August 2, 2018. Id., Paper 7 (“Apple IPR Institution
`Decision”). Patent Owner filed a Response to the Apple IPR petition on
`October 25, 2018. Id., Paper 11 (“Apple IPR Resp.”).
`Patent Owner filed its Preliminary Response to this Petition on
`December 6, 2018. See Prelim. Resp. Based on our independent review,
`Patent Owner’s Preliminary Response to this Petition is nearly identical to
`Patent Owner’s Response to the Apple IPR petition. Compare Prelim. Resp.
`5–36, with Apple IPR Resp. 1–32. Moreover, Patent Owner’s Preliminary
`Response to this Petition raises the same or substantially the same arguments
`Patent Owner raised in its Preliminary Response to the Apple IPR petition.
`Compare Prelim. Resp. 5–36, with Apple IPR Prelim. Resp. 1–18.
`The only argument raised by Patent Owner in its Preliminary
`Response to this Petition that substantially differs from the arguments Patent
`Owner raised in its Preliminary Response to the Apple IPR petition is the
`argument that “the Board’s appointments of administrative patent judges
`violate the Appointments Clause of Article II” of the U.S. Constitution.
`Prelim. Resp. 36. We decline to address the merits of this constitutional
`challenge because “administrative agencies do not have jurisdiction to
`decide the constitutionality of congressional enactments.” Riggin v. Office
`of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995).
`This is especially true when, as here, “the constitutional claim asks the
`agency to act contrary to its statutory charter.” Id.
`
`5
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`
`Accordingly, upon our review of the Petition and Preliminary
`Response and for the reasons discussed above, we are persuaded Petitioner
`has demonstrated a reasonable likelihood of success in showing the
`unpatentability of the challenged claims of the ’902 patent on the same
`grounds raised and instituted in the Apple IPR. We, therefore, institute inter
`partes review based on the Petition.
`B. Motion for Joinder
`Joinder in inter partes reviews is governed by 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.
`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).
`We instituted the Apple IPR on August 2, 2018. See Apple IPR
`Institution Decision. Petitioner filed this Petition and Motion for Joinder on
`August 31, 2018, i.e., within one month of the institution date of the Apple
`IPR. See Paper 5, 1. Thus, Petitioner timely filed its Motion for Joinder.
`See 37 C.F.R. § 42.122(b).
`
`6
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`
`As discussed above, Petitioner represents that its Petition “is a carbon
`copy of the original Apple IPR petition,” and that it challenges “the same
`claims of the ’902 patent on the same grounds relying on the same prior art
`and evidence, including a declaration identical in substance from the same
`expert.” See Mot. 1. Thus, Petitioner represents that it “do[es] not seek to
`introduce new grounds or claims not in the Apple IPR and seeks only to join
`the [Apple IPR] proceeding as instituted.” Id. at 6. Petitioner further
`represents that, should it be joined to the Apple IPR, it will: assume a
`second-chair role and submit consolidated filings with Apple as lead
`petitioner; refrain from advancing any arguments not advanced by Apple;
`refrain from seeking additional depositions or deposition time; and
`coordinate with Apple as lead petitioner regarding deposition questioning
`and hearing presentations. Id. at 2, 6–7.
`Petitioner argues that joinder to the Apple IPR is appropriate because
`joinder will allow the efficient resolution of the parties’ disputes and narrow
`the issues needed to resolve the district court proceedings between the
`parties. Id. at 2, 7–9. Petitioner further argues joinder is appropriate
`because it will not complicate or delay resolution of any issue in the Apple
`IPR, or prejudice Apple or Patent Owner in the Apple IPR because the same
`issues will be decided for all parties on the same basis in the same time
`frame. Id.
`As noted above, Patent Owner did not oppose or respond to
`Petitioner’s Motion for Joinder. Accordingly, on the basis of Petitioner’s
`representations described above, we agree that joining Petitioner to the
`Apple IPR is appropriate under the present circumstances. We, therefore,
`grant Petitioner’s Motion for Joinder.
`
`7
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`
`III. ORDER
`
`It is hereby:
`ORDERED that inter partes review is instituted in IPR2018-01631;
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`00424 is granted, and Petitioner is joined as a petitioner in IPR2018-00424;
`FURTHER ORDERED that IPR2018-01631 is terminated under 37
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-00424;
`FURTHER ORDERED that Apple shall file each paper due in
`IPR2018-00424 as a consolidated filing with HTC/LG, except for a motion
`that does not involve Apple as a party, subject to the page limits set forth in
`37 C.F.R. § 42.24;
`FURTHER ORDERED that for each paper due in IPR2018-00424
`HTC/LG may not file any paper in addition to the consolidated paper filed
`by Apple to address any points of disagreement with Apple absent prior
`authorization from the Board, and that HTC/LG must request such
`authorization prior to filing any such additional paper;
`FURTHER ORDERED that Apple and HTC/LG shall collectively
`designate attorneys to conduct the cross-examination of any witness
`produced by Patent Owner and the redirect of any witness produced by
`Apple and HTC/LG, within the timeframes set forth in 37 C.F.R. § 42.53(c)
`or agreed to by the parties;
`FURTHER ORDERED that Apple and HTC/LG shall collectively
`designate attorneys to present at the oral hearing, if requested and scheduled,
`in a consolidated argument;
`
`8
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`
`FURTHER ORDERED that the case caption in IPR2018-00424 shall
`be changed to reflect joinder of HTC/LG 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 IPR2018-00424.
`
`
`
`9
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`For PETITIONER:
`Todd E. Landis
`Mario A Apreotesi
`Jeffery R. Swigart
`VINSON & ELKINS LLP
`tlandis@velaw.com
`mapreotesi@velaw.com
`jswigart@velaw.com
`
`Anand K. Sharma
`Minjae Kang
`Joshua L. Goldberg
`Cory C. Bell
`Bradford C. Schulz
`FINNIGAN, HENDERSON, FARABOW, GARRET & DUNNER, LLP
`Corry.bell@finnegan.com
`Bradford.schultz@finnegan.com
`anand.sharma@finnegan.com
`minjae.kang@finnegan.com
`joshua.goldberg@finnegan.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
`
`
`
`
`
`10
`
`
`
`IPR2018-01631
`Patent 7,881,902
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., SAMSUNG ELECTRONICS AMERICA, INC.,
`HTC CORP., HTC AMERICA, INC., and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2018-004245
`Patent 7,881,902 B1
`____________
`
`
`
`
`
`5 HTC Corp., HTC America, Inc., and LG Electronics, Inc., who collectively
`filed a petition in IPR2018-01631, and Samsung Electronics America, Inc.,
`who filed a petition in IPR2018-01653, have been joined as a petitioner in
`this proceeding.
`
`11
`
`
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