Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 8
`Filed: March 3, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case IPR2019-01530
`Patent 6,993,049
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`Tel: 571-272-7822
`
`Paper No. 8
`Filed: March 3, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case IPR2019-01530
`Patent 6,993,049
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2019-01530
`Patent 6,993,049
`
`I. INTRODUCTION
`
`A. Background
`
`LG Electronics, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`
`institute an inter partes review of claims 11 and 12 of U.S. Patent No.
`
`6,993,049 B2 (Ex. 1001, “the ’049 Patent”). Concurrently, Petitioner filed a
`
`Motion for Joinder seeking to join Petitioner as a party to Apple Inc. v.
`
`Uniloc 2017 LLC, IPR2019-00251 (PTAB) (“Apple IPR”). Paper 3
`
`(“Mot.”). Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response,
`
`but did not file a motion opposing joinder. Paper 7. We have authority
`
`under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter
`
`partes review may not be instituted unless the information presented in the
`
`Petition “shows that there is a reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.”
`
`For the reasons described below, we institute inter partes review of all the
`
`challenged claims, and grant Petitioner’s Motion for Joinder.
`
`B. Related Proceedings
`
`The parties inform us that the ʼ049 patent is involved in a number of
`
`related matters. See Pet. 57–58; Paper 4, 2.
`
`C. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability. Pet. 2.
`
`Challenged Claims
`
`35 U.S.C. §
`
`Reference(s)
`
`11, 12
`
`§ 103
`
`Larsson1
`
`
`1 US 6,704,293 B1 (issued Mar. 9, 2004) (Ex. 1005, “Larsson”).
`
`2
`
`
`
`IPR2019-01530
`Patent 6,993,049
`
`Challenged Claims
`
`35 U.S.C. §
`
`Reference(s)
`
`11, 12
`
`11, 12
`
`§ 103
`
`§ 103
`
`Larsson, BT Core2
`
`IrOBEX3
`
`II. DISCUSSION
`
`A. Institution of Inter Partes Review
`
`In its Motion for Joinder, Petitioner represents that this Petition “is a
`
`copy of the original Apple IPR petition in all material respects.” Mot. 1.
`
`Petitioner, therefore, represents that “[t]he concurrently filed Petition and the
`
`Apple IPR petition challenge the same claims of the ’049 patent on the same
`
`grounds relying on the same prior art and evidence, including an identical
`
`declaration from the same expert.” Id. Our independent review of the
`
`Petition and the Apple IPR petition confirms Petitioner’s representations.
`
`The Apple IPR petition was filed on November 12, 2018, challenging
`
`claims 11 and 12 of the ’049 patent on the same grounds raised in this
`
`Petition. See Apple IPR, Paper 2, 2. Patent Owner filed a preliminary
`
`response to the Apple IPR petition on May 8, 2019. Apple IPR, Paper 6.
`
`We instituted inter partes review based on the Apple IPR petition on
`
`July 22, 2019. Apple IPR, Paper 7. Patent Owner filed a Response to the
`
`Apple IPR petition on October 17, 2019. Apple IPR, Paper 11. On
`
`December 13, 2019, Patent Owner filed a Preliminary Response to the
`
`Petition in this case. Paper 7 (“Prelim. Resp.”).
`
`
`2 Bluetooth™ Core Specification Vol. 1, ver. 1.0 B (pub. Dec. 1, 1999)
`(Ex. 1014, “BT Core”).
`
`3 Infrared Data Association, “IrDA Object Exchange Protocol IrOBEX,” ver.
`1.2, 1–85 (1999) (Ex. 1006, “IrOBEX”).
`
`3
`
`
`
`IPR2019-01530
`Patent 6,993,049
`
`We acknowledge Patent Owner’s arguments supporting its position
`
`that Petitioner has not shown sufficiently that claims 11 and 12 would have
`
`been obvious. Prelim. Resp. 3–35. Based on our independent review, Patent
`
`Owner’s Preliminary Response arguments are the same as or substantially
`
`similar to those in Patent Owner’s Response to the Apple IPR petition.
`
`Compare id. at 3–35, with Apple IPR, Paper 11 at 1–27.
`
`At this stage of the proceeding and based on our preliminary review,
`
`we find Petitioner has demonstrated a reasonable likelihood of showing the
`
`unpatentability of the challenged claims for the same reasons discussed in
`
`our Decision on Institution in the Apple IPR. Granting the Petition and
`
`joining Petitioner to the Apple IPR will provide us with the opportunity to
`
`more fully consider Patent Owner’s arguments—first raised in response to
`
`the petition in the Apple IPR—in the context in which they were first raised.
`
`Those common arguments will be fully considered in the Apple IPR, with
`
`the benefit of a complete record. In sum, based on the current record, 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 ground as instituted in the Apple IPR.
`
`Accordingly, for the reasons discussed above, we are persuaded
`
`Petitioner has demonstrated a reasonable likelihood of showing the
`
`unpatentability of the challenged claims of the ’049 patent. We therefore
`
`grant the Petition, and institute inter partes review of the challenged claims.
`
`B. Motion for Joinder
`
`Joinder in inter partes reviews is governed by 35 U.S.C. § 315(c),
`
`which reads:
`
`4
`
`
`
`IPR2019-01530
`Patent 6,993,049
`
`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 at 4 (PTAB Apr. 24, 2013).
`
`We instituted the Apple IPR on July 22, 2019. See Apple IPR,
`
`Paper 7. Petitioner filed this Petition and Motion for Joinder on August 22,
`
`2019, i.e., within one month of the institution date of the Apple IPR. See
`
`Paper 2; Mot. Thus, Petitioner timely filed its Motion for Joinder. See 37
`
`C.F.R. § 42.122(b).
`
`As discussed above, Petitioner represents that its Petition “is a copy of
`
`the original Apple IPR petition in all material respects” and that “[t]he
`
`concurrently filed Petition and the Apple IPR petition challenge the same
`
`claims of the ’049 patent on the same grounds relying on the same prior art
`
`and evidence, including an identical declaration from the same expert.”
`
`Mot. 1. Petitioner further represents that, should it be joined to the Apple
`
`IPR, Petitioner “will act as an ‘understudy’ and will not assume an active
`
`role unless the Apple Petitioner ceases to participate in the instituted IPR.”
`
`Id. at 2. Thus, Petitioner agrees to consolidate all filings with the Apple IPR
`
`petitioner, refrain from advancing any arguments not advanced by the Apple
`
`5
`
`
`
`IPR2019-01530
`Patent 6,993,049
`
`IPR petitioner, bind itself to any agreements concerning depositions or
`
`discovery made by the Apple IPR petitioner, and limit its deposition time to
`
`the time allotted to the Apple IPR petitioner. Id. at 8–9.
`
`Petitioner argues that joinder to the Apple IPR is appropriate because
`
`the “Petition introduces identical arguments and the same grounds raised in
`
`the existing Apple IPR.” Id. at 5. Thus, Petitioner explains “through grant
`
`of this joinder, the Board is simply offered the opportunity to ensure that the
`
`instituted Apple IPR is not prematurely terminated based on opportunistic
`
`settlement by Patent Owner with fewer than all parties against which it has
`
`asserted the subject patent.” Id. at 7.
`
`We are persuaded by Petitioner’s arguments. Because the Petition
`
`challenges the same claims on the same grounds using the same prior art,
`
`Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15
`
`at 4. Indeed, the Board “routinely grants motions for joinder where the party
`
`seeking joinder introduces identical arguments and the same grounds raised
`
`in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon
`
`Company, IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016).
`
`Moreover, because the issues to be decided are the same and Petitioner avers
`
`that it will take an “understudy” role to the petitioner in the Apple IPR by
`
`consolidating all filings, refraining from advancing new arguments, binding
`
`itself to any discovery agreements, and limiting its deposition time to the
`
`time already allotted, Kyocera factors (3) and (4) also favor joinder. See
`
`Mot. 8–9; Kyocera, IPR2013-00004, Paper 15 at 4.
`
`Patent Owner raises two arguments in opposing Joinder. First, Patent
`
`Owner alleges that the Petition’s assertion that “Petitioner is not barred or
`
`estopped from requesting IPR of the Challenged Claims on the grounds
`
`6
`
`
`
`IPR2019-01530
`Patent 6,993,049
`
`identified in this petition” because “Petitioner was first served with a
`
`complaint of infringement of the ’049 patent less than one year prior to the
`
`filing of this Petition,” Pet. 1, is false.
`
`Prelim. Resp. 2. According to Patent Owner, “at least real-part-in-
`
`interest LG Electronics U.S.A., Inc. was served a complaint alleging
`
`infringement of the ’049 patent more than one year prior to the filing of this
`
`petition.” Id. at 1. Patent Owner argues that “in light of Petitioner’s reckless
`
`disregard for the truth as to its standing to file the Petition, the Board should
`
`exercise its discretion not to grant Petitioner’s motion for joinder.” We
`
`disagree. Even if Patent Owner is correct about Petitioner’s error, the error
`
`is insignificant because the 35 U.S.C. § 315(b) time bar does not apply to a
`
`request for joinder. See 35 U.S.C § 315(c) (2018). Thus, the date on which
`
`Petitioner was served is not relevant.
`
`Second, Patent Owner argues we should deny joinder because
`
`“joinder in this case is affected by the claim construction rule change.”
`
`Prelim. Resp. 36. In the Apple IPR, we applied the broadest reasonable
`
`interpretation claim construction standard. Apple IPR, Paper 7 at 4. In this
`
`Petition, we apply the claim construction standard applied in civil
`
`proceedings under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2019).
`
`Patent Owner argues that “[i]ntroducing the question of which claim
`
`construction standard should apply and the need for additional briefing
`
`should be avoided here by denying Petitioner’s Motion for Joinder.” Prelim.
`
`Resp. 37. We disagree with Patent Owner. Patent Owner does not explain
`
`how the difference in claim construction standards might reasonably be
`
`outcome determinative to this case. In addition, we view the benefits of
`
`joinder—particularly “ensur[ing] that the instituted Apple IPR is not
`
`7
`
`
`
`IPR2019-01530
`Patent 6,993,049
`
`prematurely terminated based on opportunistic settlement by Patent Owner
`
`with fewer than all parties against which it has asserted the subject patent,”
`
`Mot. 7—to outweigh the burden of possibly having to address what claim
`
`construction standard should apply.
`
`For the reasons explained above, we find that joining Petitioner to the
`
`Apple IPR is appropriate under the present circumstances. We, therefore,
`
`grant Petitioner’s Motion for Joinder.
`
`III. CONCLUSION
`
`For the foregoing reasons, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that it will succeed in showing claims
`
`11 and 12 are unpatentable under 35 U.S.C. § 103. At this preliminary
`
`stage, we have not made a final determination with respect to the
`
`patentability of the challenged claims or any underlying factual and legal
`
`issues.
`
`Given that Petitioner is being joined as a party to the Apple IPR,
`
`Petitioner is bound by the ultimate determination made in the Apple IPR.
`
`See 35 U.S.C. §§ 315(e)(1), 325(d); 37 C.F.R. § 42.73(d)(1). Accordingly,
`
`Petitioner shall not advance any arguments regarding these claims in this
`
`proceeding; all grounds raised by Petitioner regarding these claims will be
`
`addressed in the Apple IPR.
`
`For the reasons given, it is:
`
`IV. ORDER
`
`ORDERED that inter partes review is instituted in IPR2019-01530;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2019-
`
`00251 is granted, and Petitioner is joined as a petitioner in IPR2019-00251;
`
`8
`
`
`
`IPR2019-01530
`Patent 6,993,049
`
`FURTHER ORDERED that IPR2019-01530 is terminated under 37
`
`C.F.R. § 42.72, and all further filings shall be made in IPR2019-00251;
`
`FURTHER ORDERED that Petitioner shall file each paper due in
`
`IPR2019-00251 as a consolidated filing with the petitioner in the Apple IPR,
`
`except for a paper that does not involve the petitioner in the Apple IPR;
`
`FURTHER ORDERED that, for each paper due in IPR2019-00251,
`
`Petitioner may not file any paper in addition to the consolidated paper filed
`
`in the Apple IPR absent prior authorization from the Board;
`
`FURTHER ORDERED that Petitioner and the petitioner in the Apple
`
`IPR 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 petitioner in the Apple IPR, within the timeframes set forth
`
`in 37 C.F.R. § 42.53(c) or agreed to by the parties;
`
`FURTHER ORDERED that Petitioner and the petitioner in the Apple
`
`IPR 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 IPR2019-00251 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 IPR2019-00251.
`
`
`
`
`
`
`
`
`
`
`9
`
`
`
`IPR2019-01530
`Patent 6,993,049
`
`PETITIONER:
`
`Walter Renner
`Jeremy Monaldo
`Roberto Devoto
`axf-ptab@fr.com
`jjm@fr.com
`devoto@fr.com
`
`
`
`
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`10
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 15
`Filed: March 3, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case IPR2019-002514
`Patent 6,993,049 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and
`GARTH D. BAER, Administrative Patent Judges.
`
`
`
`
`4 LG Electronics, Inc., who filed a petition in IPR2019-01530 has been
`joined as a petitioner in this proceeding.
`
`
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