Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: November 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BLACKBERRY CORP.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01283
`Patent 7,167,487 B2
`
`
`
`
`
`
`
`
`
`Before ROBERT J. WEINSCHENK, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`HORVATH, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`

`

`IPR2019-01283
`Patent 7,167,487 B2
`
`I.
`
`INTRODUCTION
`A. Background
`BlackBerry Corporation (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1113 (“the challenged claims”) of U.S. Patent
`No. 7,167,487 B2 (Ex. 1001, “the ’487 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 2017
`LLC, IPR2019-00252 (PTAB) (“the Apple IPR”). Paper 3 (“Mot.”).
`Uniloc 2017 LLC (“Patent Owner”) filed an Opposition to the Motion for
`Joinder (Paper 7, “Opp.”) and a Preliminary Response to the Petition
`(Paper 9, “Prelim. Resp.”). Petitioner file a Reply to Patent Owner’s
`Opposition. Paper 8 (“Reply”). 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. Real Parties in Interest
`Petitioner identifies itself and BlackBerry Ltd. as the real parties-in-
`interest. Pet. 81. Patent Owner identifies itself as the real party-in-interest.
`Paper 4, 1.
`
`C. Related Matters
`Petitioner and Patent Owner identify various matters between Uniloc
`Luxembourg SA, Uniloc USA, Inc. or Uniloc 2017 LLC, and Apple, Inc.,
`AT&T Services, Inc., BlackBerry Corp., HTC America, Inc., Huawei
`Device USA, Inc., LG Electronics USA, Inc., Microsoft Corp., Motorola
`Mobility, LLC, Samsung Electronics America, Inc., or ZTE (USA) Inc.,
`currently before the Board and various Federal District Courts, including
`District Courts for the Eastern, Western, and Northern Districts of Texas, the
`
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`IPR2019-01283
`Patent 7,167,487 B2
`Central and Northern Districts of California, the District of Delaware, and
`the Western District of Washington, as matters that could affect or be
`affected by this proceeding. See Pet. 81–83; Paper 4, 2.
`D. Evidence1
`
`References
`MAC protocol specification (Release 1999),
`3rd Generation Partnership Project, 3GPP TS
`25.321 V3.6.0 (2000–12) (“TS 25.321”).
`Corrections to logical channel priorities in
`MAC protocol, 3rd Generation Partnership
`Project, 3GPP TSG-RAN WG2 Meeting #18
`(“R2-010182”).
`Services provided by the physical layer
`(Release 1999), 3rd Generation Partnership
`Project, 3GPP TS 25.302 V3.6.0 (2000–09)
`(“TS 25.302”).
`Peisa
`
`
`US 6,850,540 B1
`
`Effective Date2
`
`Exhibit
`
`Dec. 10, 2000
`
`1007
`
`Jan. 23, 2001
`
`1008
`
`Oct. 16, 2000
`
`Oct. 27, 20003
`
`1009
`
`1013
`
`E. Asserted Grounds
`Petitioner asserts that claims 11–13 are unpatentable on the following
`grounds:
`Claims Challenged
`11–13
`11–13
`
`References
`TS 25.321, TS 25.302, R2-
`010182
`Peisa
`
`35 U.S.C. §
`103(a)
`103(a)
`
`
`1 Petitioner also relies upon the Declarations of R. Michael Buehrer, Ph.D.,
`FIEEE (Ex. 1002) and Craig Bishop (Ex. 1006).
`2 Petitioner relies upon the Bishop Declaration to establish the public
`availability of TS25.302, TS25.321, and R2-010182, and their respective
`publication dates. See Pet. 10, 13, 17.
`3 Petitioner relies on the U.S. filing date of Peisa to establish its availability
`as prior art under 35 U.S.C. § 102(e). See Pet. 21.
`
`3
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`IPR2019-01283
`Patent 7,167,487 B2
`
`II. ANALYSIS
`A. Institution of Inter Partes Review
`In its Motion for Joinder, Petitioner avers that its Petition “is
`substantively identical to the Apple [p]etition, containing only minor
`differences related to the formalities required by a different party filing the
`petition and the updated claim construction standard.” Mot. 5.4 Petitioner,
`therefore, avers that the Petition “challenges the same claims, relies on
`declarations from the same experts, and is based on the same grounds and
`combinations of prior art submitted in the Apple [p]etition.” Id. Our
`independent review of the Petition and the Apple petition, including the
`expert declarations filed in both, confirm Petitioner’s representations.
`The petition in the Apple IPR was filed on November 12, 2018,
`challenging claims 11–13 of the ’487 patent on the same grounds raised in
`this Petition. Compare Apple IPR, Paper 5 at 4, with Pet. 4. Patent Owner
`filed a preliminary response to the Apple IPR petition on March 6, 2019.
`Apple IPR, Paper 9. We instituted inter partes review of claims 11–13 of
`the ’487 patent based on the petition in the Apple IPR on June 4, 2019. Id.,
`
`
`4 In the Apple IPR, we applied the broadest reasonable interpretation claim
`construction standard, but declined to expressly construe any claim term.
`Apple IPR, Paper 11 at 7–8. Thus, we found all claim terms had their
`ordinary and customary meaning as understood by a person skilled in the art
`in the context of the patent’s disclosure. Id. (citing In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)). 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). Nonetheless, because neither
`Petitioner nor Patent Owner request express construction of any claim term,
`we decline to expressly construe any claim term, and instead find all claim
`terms have their ordinary and customary meaning as understood by a person
`skilled in the art in the context of the patent’s disclosure and prosecution
`history. Id.; see also Pet. 24; Prelim. Resp. 15.
`
`4
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`IPR2019-01283
`Patent 7,167,487 B2
`Paper 11 at 60. Patent Owner filed a response to the petition in the Apple
`IPR on August 27, 2019. Id., Paper 14.
`Patent Owner filed a Preliminary Response to this Petition on
`October 22, 2019. See Prelim. Resp. 27. Based on our independent review,
`the arguments raised in Patent Owner’s Preliminary Response are the same
`as or substantially similar to the arguments raised in Patent Owner’s
`preliminary response to the petition in the Apple IPR. Compare Prelim.
`Resp. 16–27, with Apple IPR, Paper 9 at 20–35.5 Moreover, the arguments
`raised in Patent Owner’s Preliminary Response are nearly identical to the
`arguments raised in Patent Owner’s response to the petition in the Apple
`IPR. Compare Prelim. Resp. 1–27, with Apple IPR, Paper 14 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.
`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 ’487 patent, grant the
`Petition, and institute inter partes review of the challenged claims.
`
`
`5 The Preliminary Response does not raise several arguments Patent Owner
`raised in its preliminary response to the petition in the Apple IPR, including
`arguments regarding raising redundant challenges in multiple grounds, and
`arguments regarding the Constitutionality of inter partes reviews. See Apple
`IPR, Paper 9 at 17–19, 36.
`
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`IPR2019-01283
`Patent 7,167,487 B2
`
`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, IPR2013-00004,
`Paper 15 at 4 (PTAB Apr. 24, 2013).
`We instituted trial in the Apple IPR on June 4, 2019. See Apple IPR,
`Paper 11. Petitioner timely filed this Petition and Motion for Joinder on
`July 2, 2019, i.e., within one month of the institution date of the Apple IPR.
`See Mot. 4; 37 C.F.R. § 42.122(b) (2019).
`As discussed above, Petitioner avers that its Petition “is substantially
`identical to the Apple [p]etition,” and that it “involves the same patent,
`challenges the same claims, relies on declarations from the same experts,
`and is based on the same grounds and combinations of prior art.” See
`Mot. 5. Thus, Petitioner avers that the Petition “does not present any new
`grounds of unpatentability, and is substantively identical to the Apple
`[p]etition.” Id. at 6. Petitioner further avers that, should it be joined to the
`Apple IPR, Petitioner will “take an ‘understudy’ role in the joined
`proceeding, absent termination of the original petitioners.” Id. at 8. Thus,
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`IPR2019-01283
`Patent 7,167,487 B2
`Petitioner agrees to consolidate all filings with the Apple IPR petitioner,
`refrain from advancing any arguments not advanced by the Apple 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 “proceedings are substantively identical . . . [and] the Board can
`effectively resolve all grounds in a single proceeding.” Id. at 6. Petitioner
`further argues joinder is appropriate because, in addition to Petitioner’s own
`interest in demonstrating the unpatentability of the challenged claims, there
`is a “broader public interest in the likely invalidity of an issued patent,” and
`Petitioner can advance unpatentability arguments if it is joined to the Apple
`IPR “even if the original petitioners in [the Apple IPR] were to reach a
`settlement with Patent Owner.” Id.
`Patent Owner opposes Petitioner’s Motion for Joinder, arguing “the
`Board should exercise its discretion under 35 U.S.C. § 325(d) to reject
`Petitioner’s petitions, and consequently its joinder motions, because the
`same prior art and arguments are pending before the Board in the Apple
`IPRs.” Opp. 2. Patent Owner argues the Board should deny the Petition and
`Motion for Joinder for the same reasons the Board denied the Personal Web
`petition and motion for joinder, namely, because “each of the challenged
`claims is under review [in another IPR] and, if that trial were to proceed to a
`final written decision, a determination will be made as to whether [the
`claims . . . ] are unpatentable.” Id. at 3 (quoting Unified Patents, Inc. v.
`Personal Web Tech., LLC, IPR2014-00702, Paper 13 at 8 (PTAB July 24,
`2014)).
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`IPR2019-01283
`Patent 7,167,487 B2
`In its Reply, Petitioner argues that its Motion for Joinder should be
`granted because it “is timely, the petition is substantively identical to
`Apple’s petition in IPR2019-00252, and the joinder will not impact the trial
`schedule in IPR2019-00252.” Pet. Reply 1. Petitioner argues that the fact
`that its “petitions are cumulative—in fact, substantively identical—to [the]
`Apple petitions counsels strongly in favor of joinder, not against it.” Id.
`(citing Samsung Elecs., Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 9
`(PTAB Aug. 24, 2016)). Petitioner further argues that the Personal Web
`petition and motion for joinder were not denied because the petition was too
`similar to the earlier filed petition. Rather, they were denied because the
`nature of the petitioner, Unified Patents, entitled Personal Web to
`“additional discovery in order to determine what companies, if any, fund and
`control Unified,” which resulted in “a new substantive issue . . . weigh[ing]
`in favor of denying” the petition and motion for joinder. Id. at 3 (quoting
`Personal Web, IPR2014-00702, Paper 12 at 4–6). By contrast, Petitioner
`argues, its Motion for Joinder is grantable because the Petition raises no
`“new substantive issues that would require additional discovery in a joined
`proceeding.” Id.
`We are persuaded by Petitioner’s arguments. The parties here agree
`that the Petition challenges the same claims on the same grounds using the
`same prior art. See Mot. 5; Opp. 2. Thus, 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., IPR2016-00962, Paper 12 at 9. 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
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`IPR2019-01283
`Patent 7,167,487 B2
`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.
`Accordingly, on the basis of Petitioner’s representations, we agree
`that joining Petitioner to the Apple IPR is appropriate under the present
`circumstances. We, therefore, grant Petitioner’s Motion for Joinder.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes review is instituted in IPR2019-01283;
`FURTHER ORDERED that the Motion for Joinder with IPR2019-
`00252 is granted, and Petitioner is joined as a petitioner in IPR2019-00252;
`FURTHER ORDERED that all further filings shall be made in
`IPR2019-00252;
`FURTHER ORDERED that Petitioner shall file each paper due in
`IPR2019-00252 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 IPR2019-00252,
`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;
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`IPR2019-01283
`Patent 7,167,487 B2
`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 IPR2019-00252 shall
`be changed to reflect joinder of BlackBerry 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 IPR2019-00252.
`
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`IPR2019-01283
`Patent 7,167,487 B2
`FOR PETITIONER:
`
`Robert C. Mattson
`Alexander B. Englehart
`OBLON, McCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketmattson@oblon.com
`cpdocketenglehart@oblon.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
`
`
`
`
`11
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`IPR2019-01283
`Patent 7,167,487 B2
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC., BLACKBERRY CORP., 6
`LG ELECTRONICS INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-00252
`Patent 7,167,487 B2
`
`
`
`
`
`
`
`
`
`
`
`
`6 BlackBerry Corp., who filed a petition in IPR2019-01283, has been joined
`as a petitioner to this proceeding.
`
`12
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`