throbber
Trials@uspto.gov Paper No. 8
`571-272-7822 Filed: January 25, 2019
`
`
`
`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 IPR2018-01653
`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)
`
`
`
`
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`
`I. INTRODUCTION
`
`A. Background
`Samsung Electronics America, Inc., (“Petitioner” or “Samsung”)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 3 (“Mot.”). Uniloc 2017 LLC (“Patent
`Owner”)2 filed a Preliminary Response (Paper 7, “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);
`• 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);
`
`1 Petitioner identifies Samsung Electronics America, Inc., and Samsung
`Electronics Co., Ltd. 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. Paper 5 (1).
`
`2
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`• 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);
`• HTC Corp. v. Uniloc 2017 LLC, Case IPR2018-01631 (PTAB);
`• Samsung Elec. Am., Inc. v. Uniloc 2017 LLC, Case IPR2018-01756
`(PTAB); and
`• Samsung Elec. Am., Inc. v. Uniloc 2017 LLC, Case IPR2018-01757
`(PTAB).
`C. Evidence Relied Upon3
`
`Reference
`Pasolini
`
`Fabio
`
`US 7,463,997
`
`US 7,698,097 B2
`
`Mitchnick
`
`US 2006/0084848 A1
`
`Tanenhaus
`
`US 6,469,639 B2
`
`Sheldon
`
`US 5,957,957
`
`Effective Date4
`
`Exhibit
`
`Oct. 2, 2006
`
`Oct. 2, 2006
`
`Oct. 14, 2004
`
`Oct. 22, 2002
`
`Sept. 28, 1999
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`
`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
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`
`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
`“introduces identical arguments and the same grounds raised in the existing
`Apple [IPR] proceeding (i.e., it challenges the same claims of the same
`patent, relies on the same expert declaration, and is based on the same
`grounds and combination of prior art submitted in the Apple [IPR]
`Petition).” Mot. 4–5. 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
`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.”).
`
`4
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`
`Patent Owner filed its Preliminary Response to this Petition on
`December 12, 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.
`1–32, 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. 1–32, 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. 32. 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.
`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.
`
`5
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`
`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. Our rules require a Motion for Joinder to the Apple
`IPR to be filed within one month of this institution date, i.e., by
`September 2, 2018. However, because September 2, 2018 was a Sunday and
`September 3, 2018 was a Federal holiday (Labor Day), our rules permit a
`Motion for Joinder to the Apple IPR to be filed no later than the next
`succeeding business day, i.e., by September 4, 2018. See 37 C.R.F.
`§§ 1.7(a), 42.122(b). Petitioner filed this Petition and Motion for Joinder on
`September 4, 2018, and, therefore, timely filed its Motion for Joinder. See
`Paper 3, 1; see also 37 C.F.R. §§ 1.7(a), 42.122(b).
`As discussed above, Petitioner represents that its Petition “introduces
`identical arguments and the same grounds raised in the existing Apple [IPR]
`
`6
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`proceeding (i.e., it challenges the same claims of the same patent, relies on
`the same expert declaration, and is based on the same grounds and
`combination of prior art submitted in the Apple [IPR] Petition).” Mot. 4–5.
`Thus, Petitioner represents that “the Samsung Petition is substantively
`identical to the Apple Petition.” Id. at 4. Petitioner further represents that,
`should it be joined to the Apple IPR, Petitioner will: assume an
`“understudy” role to simplify briefing and discovery; consolidate filings
`with Apple as lead petitioner; refrain from advancing any arguments or
`discovery not advanced by Apple; refrain from seeking additional
`depositions or discovery not sought by Apple; and refrain from receiving
`any direct, cross, or redirect deposition time beyond that permitted by 37
`C.F.R. § 42.53 or any agreement between Apple and Patent Owner. Id. at 7.
`Petitioner argues that joinder to the Apple IPR is appropriate because
`joinder will allow the efficient resolution of Apple’s and Samsung’s disputes
`with Patent Owner in a single proceeding, will have minimal impact on the
`Apple IPR trial schedule, and will not require any additional analysis,
`briefing, or discovery by Apple or Patent Owner in the Apple IPR. Id. at 5–
`6. 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
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`
`III. ORDER
`
`It is hereby:
`ORDERED that inter partes review is instituted in IPR2018-01653;
`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 IPR2018-01653 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 Samsung, 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
`Samsung 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 Samsung must request such
`authorization prior to filing any such additional paper;
`FURTHER ORDERED that Apple and Samsung 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 Samsung, within the timeframes set forth in 37 C.F.R. § 42.53(c)
`or agreed to by the parties;
`FURTHER ORDERED that Apple and Samsung shall collectively
`designate attorneys to present a consolidated argument at the oral hearing, if
`such a hearing is requested and scheduled;
`
`8
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`
`FURTHER ORDERED that the case caption in IPR2018-00424 shall
`be changed to reflect joinder of Samsung 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
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`For PETITIONER:
`Naveen Modi
`Joseph E. Palys
`Chetan Bansal
`PAUL HASTINGS LLP
`PH-Samsung-Uniloc-IPR@paulhastings.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
`
`

`

`IPR2018-01653
`Patent 7,881,902
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC. and 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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