Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 11
`Filed: September 4, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00744
`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
`Denying Institution of Inter Partes Review
`and
`Denying Motion for Joinder
`35 U.S.C. §§ 314(a) and 315(c)
`
`
`
`
`
`
`
`

`

`IPR2019-00744
`Patent 7,167,487 B2
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`A. Background
`
`I. INTRODUCTION
`
`On March 4, 2019, Microsoft Corp. (“Petitioner” or “Microsoft”) filed
`
`a Petition in IPR2019-00744 (“the Microsoft IPR”) requesting inter partes
`
`review of claims 1–6 (“the challenged claims”) of U.S. Patent No. 7,167,487
`
`B2 (Ex. 1001, “the ’487 patent”). Paper 2 (“Pet.”), 5. Uniloc 2017 LLC
`
`(“Patent Owner” or “Uniloc”), filed a Preliminary Response. Paper 6
`
`(“Prelim. Resp.”).
`
`Apple, Inc., LG Electronics, Inc., Samsung Electronics Co., Ltd., and
`
`Samsung Electronics America, Inc. (“collectively, Apple”) previously filed a
`
`petition in IPR2019-00222 (“the Apple IPR”) challenging claims 1–6 of the
`
`’487 patent. See Apple, Inc. v. Uniloc 2017 LLC, Case IPR2019-00222, slip
`
`op. at 4 (PTAB, Nov. 12, 2018) (Paper 5). We instituted inter partes review
`
`of claims 1–6 based on the petition filed in the Apple IPR. See Apple IPR,
`
`slip op. at 58–59 (PTAB June 4, 2019) (Paper 11).
`
`Subsequent to filing the Petition, Microsoft filed a Motion for Joinder
`
`of the Microsoft IPR to the Apple IPR. Paper 7 (“Mot.”). Uniloc filed an
`
`Opposition to the Motion for Joinder (Paper 8, “Opp.”), and Microsoft filed
`
`a Reply (Paper 10). We have jurisdiction under 35 U.S.C. § 314.
`
`For the reasons discussed below, we deny Microsoft’s Motion for
`
`Joinder and deny Microsoft’s Petition for institution of inter partes review.
`
`B. Related Matters
`
`Petitioner and Patent Owner identify various matters between Uniloc
`
`USA, Inc. or Uniloc 2017 LLC, and Apple, Inc., Blackberry Corp., HTC
`
`America, Inc., Huawei Device USA, Inc., LG Electronics USA, Inc.,
`
`Microsoft Corp., Motorola Mobility, LLC, Samsung Electronics America,
`
`2
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`

`

`IPR2019-00744
`Patent 7,167,487 B2
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`
`Inc., or ZTE (USA), in various Federal District Courts including District
`
`Courts for the Eastern, Western, and Northern Districts of Texas, the
`
`Central, Southern, and Northern Districts of California, the District of
`
`Delaware, and the Western District of Washington, as well as various
`
`matters at the Patent Trial and Appeal Board, as matters that can affect or be
`
`affected by this proceeding. See Pet. viii–ix; Paper 3, 2.
`
`C. Evidence Relied Upon1
`
`References
`
`Effective Date2
`
`Exhibit
`
`Peisa
`
`US 6,850,540 B1
`
`Feb. 25, 20003
`
`1005
`
`QoS Concept and Architecture, 3rd
`Generation Partnership Project, 3GPP TS
`23.107 V3.5.0 (2000–12) (“TS 23.107”).
`Services provided by the physical layer
`(Release 1999), 3rd Generation Partnership
`Project, 3GPP TS 25.302 V3.6.0 (2000–09)
`(“TS 25.302”).
`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”).
`
`
`
`Dec. 22, 2000
`
`1006
`
`Oct. 16, 2000
`
`1007
`
`Dec. 10, 2000
`
`1008
`
`Jan. 23, 2001
`
`1010
`
`
`1 Petitioner also relies upon the Declarations of Fabio M. Chiussi, Ph.D.,
`(Ex. 1003) and Friedhelm Rodermund (Ex. 1004).
`
`2 Petitioner relies upon the Rodermund Declaration to establish the public
`accessibility and publication dates of TS 23.107, TS 25.302, TS 25.321, and
`R2-010182. See Pet. 13–16.
`
`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. 48.
`
`3
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`

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`IPR2019-00744
`Patent 7,167,487 B2
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`D. Asserted Grounds of Unpatentability
`
`References
`TS 23.107, TS 25.302, TS 25.321,
`and R2-010182
`
`Peisa and TS 23.107
`
`§ 103(a)
`
`§ 103(a)
`
`Basis
`
`Claims Challenged
`
`1–6
`
`1, 2
`
`4–6
`
`Peisa, TS 23.107, and TS 25.302
`
`§ 103(a)
`
`II. ANALYSIS
`
`A. Institution of Inter Partes Review
`
`Apple previously challenged claims 1–6 of the ’487 patent as obvious
`
`over TS 25.302, TS 25.321, and R2-010182 (“the 3GPP references”), claims
`
`1 and 2 as obvious over Peisa, and claims 4–6 as obvious over Peisa and
`
`TS 25.302. See Apple IPR, Paper 5, 4. Apple supported its petition with a
`
`declaration by R. Michael Buehrer, Ph.D., on the teachings of the prior art,
`
`and a declaration by Craig Bishop on the public accessibility of the 3GPP
`
`references. Id. at 4, 9, 12, 15. We instituted inter partes review of claims 1–
`
`6 of the ’487 patent based upon Apple’s showing that its petition had a
`
`reasonable likelihood of success. Id., Paper 11.
`
`Microsoft, unlike petitioners who file a motion for joinder together
`
`with a “copycat” or “me too” petition, has filed a petition that raises
`
`different grounds of unpatentability than the grounds raised in the Apple
`
`IPR. Specifically, Microsoft adds a new reference, TS 23.107, to each of the
`
`grounds raised in the Apple IPR. See Pet. 5 (challenging claims 1–6 as
`
`obvious over TS 23.107, TS 25.302, TS 25.321, and R2-010182 (“the 3GPP
`
`challenges”), and challenging claims 1 and 2 as obvious over TS 23.107 and
`
`Peisa, and claims 4–6 as obvious over TS 23.107, Peisa, and TS 25.302 (“the
`
`Peisa challenges”)). Microsoft also supports its petition with different
`
`4
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`IPR2019-00744
`Patent 7,167,487 B2
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`declarative testimony, relying on a declaration by Fabio M. Chiussi, Ph.D.,
`
`on the teachings of the prior art, and a declaration by Friedhelm Rodermund
`
`on the public accessibility of the 3GPP references. See id. 13–16; Exs. 1003,
`
`1004.
`
`For its 3GPP challenges, Microsoft argues a person skilled in the art
`
`would have “designed the UMTS MAC Layer and Physical Layer to account
`
`for the relevant QoS Attributes specified by TS 23.107 for different types of
`
`connections.” Id. at 18 (citing Ex. 1003 ¶ 123; Ex. 1006, 13–26). Microsoft
`
`further argues “[t]he importance of TS 23.107 is confirmed by R2-010182,
`
`which expressly explains the benefits of using TS 23.107’s maximum and
`
`guaranteed bitrate attributes as QoS parameters in the MAC layer described
`
`in TS 25.321.” Id. (citing Ex. 1010, 1) (emphases added). Indeed,
`
`Microsoft argues a person skilled in the art would have modified TS
`
`25.321’s TFC selection algorithm “to account for maximum and minimum
`
`bitrate criterion, because R2-010182 explicitly prescribes doing so.” Id. at
`
`19 (citing Ex. 1010, 4) (emphasis added).
`
`For the Peisa challenges, Microsoft argues “Peisa describes a MAC
`
`layer that ‘schedules packet transmission of various data flows’ by selecting
`
`valid TFCs ‘based on guaranteed rate transmission rates.’” Id. at 50.
`
`Microsoft further argues “Peisa teaches that the guaranteed rate for a
`
`logic[al] channel can be provided by a Radio Access Bearer (‘RAB’)
`
`parameter that is associated with the logical channel,” and TS 23.107 teaches
`
`“the minimum suitable bit rates for the various QoS classes can be specified
`
`as RAB guaranteed bit rate attributes.” Id. at 61–62 (citing Ex. 1005, 18:41–
`
`42; Ex. 1006, 25, Table 5). Thus, Microsoft argues, a person of ordinary
`
`skill in the art would have found it obvious “to use the minimum suitable
`
`5
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`IPR2019-00744
`Patent 7,167,487 B2
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`guaranteed bit rate of TS 23.107 as the value of the Guaranteed Rate RAB
`
`parameter for a logical channel in Peisa.” Id. at 62. That is, Microsoft
`
`argues that Peisa’s guaranteed bitrate and TS 23.107’s minimum guaranteed
`
`bitrate are the same RAB logical channel parameter.
`
`Uniloc argues we “should exercise [our] discretion under 35 U.S.C.
`
`325(d) to reject this petition on the grounds that substantially the same prior
`
`art and arguments are pending before the Board in IPR2019-00222,” i.e., in
`
`the Apple IPR. Prelim. Resp. 21. Uniloc further argues that although
`
`Microsoft is not a party to the Apple IPR, that fact alone “does not outweigh
`
`the efficient administration of the Office, given the near identical nature of
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`the grounds in the two proceedings.” Id. at 22.
`
`Microsoft argues we should institute review because the Petition
`
`(a) was filed prior to Uniloc’s preliminary response to the Apple IPR,
`
`(b) presents the art relied on in the Apple IPR “in a different light and relies
`
`on other art not cited” in the Apple IPR, and (c) avoids a time bar that might
`
`otherwise apply should the parties in the Apple IPR settle or terminate that
`
`proceeding. Pet. 8.
`
`The Director has discretion to institute inter partes review, and has
`
`delegated that discretion to the Board. See 35 U.S.C. § 325(d); see also 37
`
`C.F.R. § 42.4(a). The Board may exercise its discretion “to deny a petition
`
`when ‘the same or substantially the same prior art or arguments previously
`
`were presented to the Office.’” NHK Spring Co., Ltd., v Intri-Plex Techs.,
`
`Inc., IPR2018-00752, slip op. at 11 (PTAB Sept. 12, 2018) (Paper 8)
`
`(precedential). We consider several non-exclusive factors in deciding
`
`whether to deny a petition under § 325(d), including: (a) the similarities
`
`and material differences between the currently and previously asserted art;
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`(b) the cumulative nature of the currently asserted art with respect to the
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`previously asserted art; (c) the extent to which the asserted art was
`
`previously considered; (d) the overlap between the currently and
`
`previously presented patentability challenges; (e) whether Petitioner has
`
`pointed out any error in the previously presented patentability challenges;
`
`and (f) the extent to which additional evidence and facts presented in the
`
`Petition warrant reconsideration of the previously asserted art or
`
`patentability challenges.4 Id. at 11–12.
`
`Upon consideration of the prior art and arguments raised in the
`
`Microsoft and Apple IPRs, we find each of NHK Spring factors (a) through
`
`(f) favor denial of institution. Factors (a) and (b) pertain to the similarities
`
`and differences between the prior art relied upon in the Microsoft and Apple
`
`IPRs. As Microsoft acknowledges, the prior art relied upon in the Microsoft
`
`and Apple IPRs is substantially the same. See Mot. 1 (“both IPRs rely on
`
`largely the same references and combinations”). Factors (c) and (d) pertain
`
`to the similarities and differences in the arguments raised in the Microsoft
`
`and Apple IPRs, and factors (e) and (f) pertain to whether Microsoft’s IPR
`
`adds any additional evidence, corrects any errors, or better explains any of
`
`the grounds raised in the Apple IPR. As Microsoft again acknowledges, the
`
`arguments raised in the Microsoft and Apple IPRs are substantially the
`
`same. Id. at 10 (“Microsoft raises overlapping grounds based on much of
`
`
`4 Although NHK Spring involved prior art and arguments previously
`presented during examination, the discretion to deny institution under
`§ 325(d) broadly applies to “prior art and arguments previously . . .
`presented to the Office,” including in previously filed petitions for inter
`partes review.
`
`7
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`IPR2019-00744
`Patent 7,167,487 B2
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`the same evidence”); id. at 12 (“Microsoft presents arguments that overlap
`
`with arguments presented in Apple’s petition”); id. at 13 (“Microsoft
`
`provides similar arguments for the same claims using the same references”).
`
`Although Microsoft adds a new reference, TS 23.107, to each of the
`
`grounds raised in the Apple IPR, TS 23.107 adds little, substantively, to the
`
`grounds raised in the Apple IPR. As Microsoft acknowledges, TS 23.107
`
`“integrates cleanly with the art presented by the Apple IPR,” and is used to
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`“confirm the obviousness of claim elements 1.6 and 2.1.” Id. at 7 (emphasis
`
`added). For example, Apple relies on R2-010182 to teach assigning
`
`minimum and maximum bitrates to logical channels and using these bitrates
`
`in the TFC selection algorithm, and Microsoft argues that “R2-010182
`
`expressly states that TS 23.107[5] defines the maximum and guaranteed
`
`(minimum) bitrates which R2-010182 incorporates into the modified TFC
`
`selection algorithm.” Id. at 8 (emphasis added). Thus, as Microsoft argues,
`
`its 3GPP challenges relying on TS 23.107 are “confirmed by R2-010182,
`
`which expressly prescribes use of a minimum bit rate criterion by the TFC
`
`selection algorithm.” Pet. 32–33 (citing Ex. 1010, 1) (emphases added).
`
`
`5 R2-010182 identifies 3GPP SA 23.107 version 3.4.0 as reference [6], and
`states that “attributes such as Maximum bitrate [and] Guaranteed bitrate
`defined by TSG SA in [6], are specifying requirements for UMTS bearer
`service and radio bearer service.” Ex. 1010, 1. R2-010182 then introduces
`these bitrates as “new parameters to characterise [sic] MAC logical channels
`for TFC selection.” Id. at 4. According to Dr. Chiussi, 3GPP SA 23.107
`version 3.4.0 “is a prior version of TS 23.107, but there are no substantive
`differences between the two versions.” Ex. 1003 ¶ 96 n.19; see also Mot. 8
`n.3 (“R2-010182 references an earlier version of TS 23.107 (v3.4) than that
`used in the Microsoft IPR (v3.5). However, these versions do not differ
`meaningfully with respect to the minimum/maximum bit rates.”).
`
`8
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`IPR2019-00744
`Patent 7,167,487 B2
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`Similarly, although Microsoft adds TS 23.107 to the Peisa or Peisa
`
`and TS 25.302 grounds raised in the Apple IPR, Microsoft argues that Peisa
`
`“expressly references the 3GPP standard, of which TS 23.107 is a part.”
`
`Mot. 8. Like Apple, Microsoft argues that Peisa teaches using a guaranteed
`
`bitrate as a logical channel parameter for a radio access bearer. See Pet. 61
`
`(citing Ex. 1005, 18:41–42). Thus, Microsoft does not argue that Apple’s
`
`reliance on Peisa to teach this claim limitation was in error. Instead,
`
`Microsoft argues that because TS 23.107 also teaches using a minimum
`
`bitrate as a radio access bearer logical channel parameter, it would have been
`
`obvious to use TS 23.107’s minimum bitrate as Peisa’s guaranteed bitrate.
`
`Id. at 61–62 (citing Ex. 1006, 25, Table 5).
`
`In sum, for the reasons stated above, we find NHK Spring factors
`
`(a) through (f) favor denial of Microsoft’s petition, which relies on
`
`substantially the same prior art and raises substantially the same arguments
`
`raised in the Apple IPR. Accordingly, we exercise our discretion under 35
`
`U.S.C. § 325(d) to deny the Petition. Cf. Heckler v. Chaney, 470 U.S. 821,
`
`831 (1985) (indicating an agency, when deciding whether to take action in a
`
`particular matter, must determine whether its resources are best spent on one
`
`matter or another).
`
`B. Motion for Joinder
`
`As discussed above, although the petitions filed in the Microsoft and
`
`Apple IPRs are substantially similar, Microsoft did not file a “copycat” or
`
`“me too” petition. Compare Pet. 5, with Apple IPR, Paper 5, 4. The main
`
`differences between the petitions filed in the Microsoft and Apple IPRs are
`
`Microsoft’s addition of TS 23.107 to all of the grounds raised in the Apple
`
`IPR, id., and Microsoft’s reliance on different declarative testimony on the
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`teachings of the prior art and the public accessibility of the 3GPP references.
`
`Compare Pet. 13–16, 48–51 (relying on the declaration of Fabio M. Chiussi,
`
`Ph.D., on the teachings of the prior art and on the declaration of Friedhelm
`
`Rodermund on the public accessibility of the 3GPP references), with Apple
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`IPR, Paper 5, 9–20 (relying on the declaration of R. Michael Buehrer, Ph.D.,
`
`on the teachings of the prior art and on the declaration of Craig Bishop on
`
`the public accessibility of the 3GPP references).
`
`
`
`Microsoft seeks to “join IPR2019-00744 (‘Microsoft IPR’) . . . with
`
`IPR2019-00222 (‘Apple IPR’).” Mot. 1. That is, Microsoft seeks to join
`
`itself as a party and the grounds and evidence raised in the Microsoft IPR to
`
`the Apple IPR. Microsoft argues such joinder “would preserve Board and
`
`party resources because the patentability challenges presented by the
`
`Microsoft IPR overlap with, while augmenting in important ways, those
`
`presented by the Apple IPR.” Id. Microsoft further argues that joinder
`
`“should not require delay of the Apple IPR trial schedule . . . [b]ecause
`
`Microsoft raises overlapping grounds based on much of the same evidence,”
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`“agrees to cooperate with Apple,” and “will not seek additional discovery.”
`
`Id. at 10. To avoid delay, Microsoft avers that it will largely take an
`
`understudy role in the Apple IPR, and will coordinate with Apple to file
`
`consolidated briefs and arguments “[t]o the extent consideration of TS
`
`23.107 requires additional briefing or argument.” Id. at 10–11. Microsoft
`
`further argues that joinder will not prejudice Uniloc because “the additional
`
`issues or costs to Uniloc will be minimal.” Id. at 16. For example,
`
`Microsoft argues that because “the testimony of Microsoft’s expert declarant
`
`overlaps with the testimony of Apple’s expert declarant in a number of
`
`10
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`respects, any deposition of Microsoft’s expert declarant can be limited to the
`
`additional issues relating to TS 23.107.” Id. at 16–17.
`
`The Director has discretion to join the Microsoft and Apple IPRs.
`
`Section 315(c) of Title 35 of the United States Code 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.
`
`35 U.S.C. § 315(c) (emphasis added). The Board has interpreted § 315(c) to
`
`permit not only joinder of a party to an existing inter partes review, but to
`
`permit joinder of new issues to that proceeding. See Proppant Express
`
`Investments, LLC v. Oren Tech., LLC, Case IPR2018-00914, slip op. at 11
`
`(PTAB Mar. 13, 2019) (Paper 38) (precedential) (“Proppant”). However, in
`
`exercising such discretion, the Board has stated that it will “grant joinder in
`
`situations involving new issues only in limited circumstances.” Id.
`
`Uniloc argues joinder of the Microsoft and Apple IPRs should be
`
`denied under Proppant because joinder “will cause rather than avoid undue
`
`prejudice,” and because Proppant permits joinder of “new issues to an
`
`existing proceeding ‘only in limited circumstances—namely, where fairness
`
`requires it and to avoid undue prejudice to a party.’” Opp. 4–5 (citing
`
`Proppant at 4). Uniloc argues that Microsoft, in filing its Petition, “sought
`
`to distinguish Microsoft’s IPRs from Apple’s IPRs, insisting Microsoft
`
`presented the art in a different light and relied on art not cited by Apple.” Id.
`
`at 7. Therefore, Uniloc argues, denying joinder cannot prejudice Microsoft
`
`because there can be “no prejudice in requiring Microsoft to accept the
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`consequences of its own strategy.” Id. at 8. Uniloc further argues that
`
`granting joinder would unduly prejudice Uniloc because it will require
`
`“Uniloc to: (1) address an additional expert report; (2) depose an additional
`
`expert; and (3) supplement its own expert testimony.” Id. at 5.
`
`We are persuaded by Uniloc’s arguments. Microsoft requests joinder
`
`of itself and new grounds involving the disclosures of TS 23.107 to the
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`Apple IPR. See Mot. 1. Uniloc filed its response to the petition in the Apple
`
`IPR on August 27, 2019. See Apple IPR, Paper 14. Joining the Microsoft
`
`and Apple IPRs would require extending all remaining deadlines in the
`
`Apple IPR to provide Uniloc with sufficient time and opportunity to respond
`
`to not only the new grounds raised in the Microsoft IPR, but to raise and
`
`respond to any differences that may exist in the positions taken by
`
`Microsoft, Apple, and their respective declarants in their respective IPRs.
`
`For example, joining the Microsoft and Apple IPRs would require
`
`granting Uniloc sufficient time and opportunity to determine whether Dr.
`
`Chiussi (Petitioner’s declarant) and Dr. Buehrer (Apple’s declarant) express
`
`any differences of opinion on the teachings of the prior art relied upon, and
`
`whether Mr. Rodermund (Petitioner’s declarant) and Mr. Bishop (Apple’s
`
`declarant) express any differences of opinion on whether and why the 3GPP
`
`references are publicly accessible. At minimum, this would require
`
`providing Uniloc with sufficient time and opportunity to depose Dr. Chiussi
`
`and Mr. Rodermund on the entirety of their respective declarations.
`
`The America Invents Act was “designed to establish a more efficient
`
`and streamlined patent system that will improve patent quality and limit
`
`unnecessary and counterproductive litigation costs.” H.R. Rep. No. 112–98,
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`pt. 1, at 40 (2011); see also 2011 U.S.C.C.A.N. 67, 69 (Post grant reviews
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`were meant to be “quick and cost effective alternatives to litigation”). To
`
`that end, in deciding motions for joinder, the Board considers factors such as
`
`“how the cost and schedule of the first proceeding will be impacted if
`
`joinder is granted, and whether granting joinder will add to the complexity
`
`of briefing and/or discovery” in the first proceeding. Trial Practice Guide
`
`July 2019 Update, 42.
`
`Unlike a typical “me too” or “copycat” petition, where joinder would
`
`not affect the cost, procedural complexity, or scheduling of the Apple IPR,
`
`Microsoft’s petition raises new grounds and relies on different declarative
`
`testimony. Thus, joinder of the Microsoft and Apple IPRs would affect the
`
`cost, procedural complexity, and scheduling of the Apple IPR for the reasons
`
`explained above, and would do so while adding little, substantively, to the
`
`Apple IPR. For example, although Microsoft argues TS 23.107 augments
`
`the grounds raised in the Apple IPR in important ways, the Petition belies
`
`the importance of TS 23.107 to the grounds raised by Microsoft. See Pet.
`
`32–33 (citing Ex. 1010, 1) (alleging the 3GPP challenges relying on TS
`
`23.107 are “confirmed by R2-010182, which expressly prescribes use of a
`
`minimum bit rate criterion by the TFC selection algorithm”) (emphases
`
`added); id. at 60 (alleging that because Peisa discloses using a guaranteed bit
`
`rate as a RAB logical channel parameter, it would have been obvious “to use
`
`the minimum suitable bit rate of TS 23.107 as the value of the Guaranteed
`
`Rate RAB parameter for a logical channel in Peisa”).
`
`Denying joinder, under the facts presented here, does not unduly
`
`prejudice Microsoft because Microsoft chose not only to file a petition that
`
`raises new grounds that do not substantively add to the grounds raised in the
`
`Apple IPR, but to request joinder of the Microsoft and Apple IPRs, rather
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`than simply requesting joinder as a party to the Apple IPR. See Mot. 1; see
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`also 35 U.S.C. § 315(c) (permitting joinder of a party). Indeed, during a
`
`conference call with the Board, Microsoft explained that although it filed its
`
`joinder motion to promote efficiency, it would be acceptable to Microsoft if
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`we considered the Petition on its own without joinder to the Apple IPR.
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`Paper 9, 3.
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`Accordingly, for the reasons discussed above, we deny Microsoft’s
`
`motion to join the Microsoft IPR to the Apple IPR. In doing so, we note that
`
`we have considered Microsoft’s argument that it would be inconsistent to
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`deny joinder on the basis that the Microsoft and Apple IPRs are “too
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`different” and then deny institution under § 325(d) because the Microsoft
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`and Apple IPRs are “too similar.” Paper 10, 5. We are not persuaded by
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`this argument because, as explained above, we deny joinder of the Microsoft
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`and Apple IPRs despite their substantial similarity because joinder would
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`needlessly add to the cost, procedural complexity, and scheduling of the
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`Apple IPR. We similarly deny the Microsoft IPR under § 325(d) because it
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`raises substantially the same grounds using the same or substantially the
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`same prior art as the Apple IPR.
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`III. CONCLUSION
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`We have reviewed the Petition and Preliminary Response, as well as
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`the Motion for Joinder, Opposition to the Motion for Joinder, and Reply to
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`the Opposition, and have considered all of the evidence and arguments
`
`presented by Petitioner and Patent Owner. On this record, for the reasons
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`discussed above, we exercise our discretion to deny institution of inter
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`partes review and to deny Microsoft’s Motion for Joinder to IPR2019-
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`00222.
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`14
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`

`

`IPR2019-00744
`Patent 7,167,487 B2
`
`
`
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`IV. ORDER
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`It is ORDERED that, Petitioner’s Motion for Joinder is denied; and
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`FURTHER ORDERED that the Petition for inter partes review is
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`denied.
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`15
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`

`

`IPR2019-00744
`Patent 7,167,487 B2
`
`
`PETITIONER:
`
`Andrew M. Mason
`Todd M. Siegel
`Joseph T. Jakubek
`John M. Lunsford
`John D. Vandenberg
`andrew.mason@klarquist.com
`todd.siegel@klarquist.com
`joseph.jakubeck@klarquist.com
`john.lunsford@klarquist.com
`john.vandenberg@klarquist.com
`
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
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`16
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`