UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00224
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`U.S. PATENT NO. 7,075,917
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`PATENT OWNER OPPOSITION TO MOTION FOR JOINDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00224
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`U.S. PATENT NO. 7,075,917
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`PATENT OWNER OPPOSITION TO MOTION FOR JOINDER
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`IPR2020-00224
`U.S. PATENT NO. 7,075,917
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`I.
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`INTRODUCTION
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`Table of Contents
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`II. ARGUMENT
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`A. Apple’s definition for “understudy” risks causing undue
`prejudice to Patent Owner.
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`B.
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`C.
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`Joinder is not necessary to prevent undue prejudice to
`Apple.
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`The General Plastic factors weigh against institution
`and joinder.
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`III. CONCLUSION
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`7
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`9
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`2
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`IPR2020-00224
`U.S. PATENT NO. 7,075,917
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`I.
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`INTRODUCTION
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`This not Apple’s first IPR petition challenging the validity of the exact same
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`subset of claims of U.S. Patent No. 7,075,917 (“the ’917 patent”). In its prior IPR
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`filing, the Board denied Apple’s petition as failing to meet the even the minimal
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`threshold burden for institution for any of the challenged claim (i.e., claims 1‒3 and
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`9‒10). See Apple Inc. v. Uniloc 2017 LLC, IPR2019-00259, Paper 7 (PTAB Jun.
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`27, 2019) (“Apple ’259 IPR”).
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`On April 19, 2019, Microsoft filed an IPR petition challenging claims 1‒3 and
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`9 and 10 of the ʼ917 Patent. See Microsoft Corporation v. Uniloc 2017 LLC,
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`IPR2019-00973 (the “Microsoft IPR”), Paper 2 at 1. Apple seeks to challenge the
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`same subset of claims it failed to challenge in its original IPR (i.e., Apple ’259 IPR).
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`See Petition (Paper 1) at 1. (“Apple Inc. (‘Petitioner’) respectfully requests inter
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`partes review (‘IPR’) of claims 1-3 and 9-10 of U.S. Patent No. 7,075,917 . . . ,
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`allegedly assigned to Uniloc 2017 LLC.”). While Apple acknowledged conferring
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`with Microsoft regarding its petition and motion before filing, Microsoft is not
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`named as a real party in interest. See Paper 3 (“Mtn.”) at 7 (“Petitioner Apple has
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`conferred with counsel for Petitioner Microsoft[.]”).
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`Relying on at least one reference shared in common with its original petition,
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`Apple now serially files its present follow-on petition after having benefitted from
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`the opportunity to review the arguments and evidence Uniloc had previously
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`presented in its preliminary responses filed in both the Apple ’259 IPR and in the
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`Microsoft IPR. The joinder motion should be denied for several reasons.
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`3
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`IPR2020-00224
`U.S. PATENT NO. 7,075,917
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`II. ARGUMENT
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`As the moving party, Apple has the burden of proof to establish that it is
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`entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). When determining
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`whether to grant a motion for joinder, the Board considers factors including: (1) time
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`and cost considerations, including the impact joinder would have on the trial
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`schedule; and (2) how briefing and discovery may be simplified. See Order
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`Authorizing Motion for Joinder (Paper 15, 4), Kyocera Corp. v. SoftView, LLC,
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`IPR2013-00004 (PTAB Apr. 24, 2013).
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`Even when a party seeks to join a nearly identical petition, joinder should not
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`be granted as a matter of right. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b); 157
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Director
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`is given discretion . . . over whether to allow joinder. This safety valve will allow
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`the Office to avoid being overwhelmed if there happens to be a deluge of joinder
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`petitions in a particular case.”).
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`Here, Apple’s motion should be denied at least because Apple’s definition for
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`“understudy” expressly attempts to reserve the right to actively participate in the
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`Microsoft IPR trial that Apple now seeks to join.
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`A. Apple’s definition for “understudy” risks causing undue prejudice
`to Patent Owner.
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`Apple’s motion should be denied at least because Apple purports to reserve
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`rights by its definition for “understudy” which risk causing undue prejudice to Patent
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`Owner. In another IPR matter involving the same Patent Owner, the Board very
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`recently considered the same definition for “understudy” and found it permissive of
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`IPR2020-00224
`U.S. PATENT NO. 7,075,917
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`active participation that does not comport with a true “understudy” role. Ericsson
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`Inc. v. Uniloc 2017 LLC, IPR2020-00376, Paper 8 (PTAB January 21, 2020)
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`(“Conduct Order”); see also Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01116,
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`Paper 10 at 3-5 (PTAB January 16, 2020) (referencing the Conduct Order).
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`There, the Board first addressed language analogous to what is presented in
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`Apple’s instant motion as follows: “all filings by [the joinder petitioner] in the joined
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`proceeding be consolidated with [the filings of the original petitioner in the
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`Microsoft IPR], unless a filing solely concerns issues that do not involve [the original
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`petitioner in the Microsoft IPR].” Mtn. 7. The Board observed that such language,
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`on its face, purports to reserve the right to participate in filings. Conduct Order
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`2‒3.
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`The Board questioned whether such participation might impermissibly
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`include allowing a joinder petitioner to “prepare its own substantive filings and have
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`that material included within a ‘joint paper’ that also includes separately the
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`substantive arguments and assertions of Petitioner.” Id. This clearly would
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`“substantially increase[s] the complexity of the proceeding.” Id.
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`The Board further questioned whether an “understudy” defined in the same
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`manner at issue here would be allowed to actively participate in drafting filings,
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`“with all positions therein binding on both [original petitioner] and [joinder
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`petitioner], and agreed to by both [original petitioner and joinder petitioner] prior to
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`filing.” Id. Such active participation exceeds a true “understudy” role. Id.
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`IPR2020-00224
`U.S. PATENT NO. 7,075,917
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`The Board further addressed other questionable language analogous to what
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`is presented in Apple’s instant motion as follows: “[Petitioner] at deposition shall
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`not receive any direct, cross-examination or redirect time beyond that permitted for
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`[the petitioner in the Microsoft IPR] alone under either 37 C.F.R. § 42.53 or any
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`agreement between [Patent Owner] and [the petitioner in the Microsoft IPR].” Mtn.
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`7 (brackets original); see also Conduct Order 2‒3. The Board correctly recognized
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`that such language purports to reserve the right for a joinder petitioner to use up the
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`remainder of any direct, cross-examination or redirect time that an original petitioner
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`opts to not use, even though the original petitioner remains in the proceedings.
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`Conduct Order 2‒3. The Board further explained that in a true “understudy” role, a
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`joined petitioner would not be allowed to “seek to take cross examination testimony
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`of any witness or have a role in defending the cross-examination of a witness, so
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`long as Microsoft remains a party in the proceeding.” Id.
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`The Board summarized a true “understudy role” as follows: “[the petitioner
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`seeking joinder] will remain completely inactive, but for issues that are solely
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`directed and pertinent to [the joinder petitioner].” Id. (emphasis added).
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`Applying the same reasoning in the Conduct Order summarized above,
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`Apple’s Motion for joinder should be denied at least because it offers the same
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`overbroad definition for “understudy” (verbatim), which is permissive of active
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`participation that does not comport with a true “understudy” role. Consequently,
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`Apple’s overbroad definition risks causing delay undue prejudice to Patent Owner
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`for the same reasons.
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`IPR2020-00224
`U.S. PATENT NO. 7,075,917
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`Yet another independent basis for denial is that Apple’s Motion here is silent
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`as to whether it will seek to file its own appeal briefing, separate and apart from
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`Microsoft, should Apple eventually seek appellate review. This clearly would
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`complicate the matter on appear and significantly prejudice Patent Owner, as such a
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`strategy would effectively allow two distinct appellants to have twice the pages as
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`Patent Owner in presenting their respective and potentially independent arguments
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`on appeal. Patent Owner would then have half the pages to respond to both sets of
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`independent arguments.
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`B.
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`Joinder is not necessary to prevent undue prejudice to Apple.
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`Apple’s motion does not attempt to identify any prejudice to Apple that
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`joinder will avoid. Apple already was given fair opportunity to present its best
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`validity challenge against the same claims of the ’917 patent. Apple’s failure does
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`not entitle it to a second bite at the apple.
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`C. The General Plastic factors weigh against institution and joinder.
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`Section 315(c) requires that a petition accompanying a request for
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`joinder “warrants the institution of an inter partes review under section 314.”
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`35 U.S.C. § 315(c). In General Plastic Industrial Co., Ltd. v. Canon Kabushiki
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`Kaisha, Case IPR2016-01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19)
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`(precedential), the Board articulated a non-exhaustive list of factors to be considered
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`in determining whether to exercise discretion under § 314(a) to deny a petition that
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`challenges the same patent as a previous petition. Application of the General Plastic
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`factors is not limited solely to instances when multiple petitions are filed by the same
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`7
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`IPR2020-00224
`U.S. PATENT NO. 7,075,917
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`petitioner. Valve Corp. v. Elec. Scripting Prods., Inc., Case IPR2019-00062, -00063,
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`-00084, Paper 11, p. 2 (Apr. 2, 2019) (designated: May 7, 2019). Rather, when
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`different petitioners challenge the same patent, the Board considers any relationship
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`between those petitioners when weighing the General Plastic factors. Id.
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`Here, the first General Plastic factor weighs against institution because Apple
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`previously filed a petition directed to the same claims of the same patent (in Apple
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`’259 IPR). Apple’s Petition purports to have complete overlap with the challenged
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`claims of the Microsoft IPR; and, as noted above, Apple acknowledged conferring
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`with Microsoft, including before filing its IPR. At least these facts collectively weigh
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`against institution and joinder.
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`The second factor also weighs against institution and joinder—i.e., whether at
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`the time of filing the first petition the petitioner knew or should have known of the
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`prior art asserted in the second petition. Apple acknowledges its second petition
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`contains overlapping art with its first petition. In addition, Apple does not even
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`allege the additional art in the instant (second) petition could not have found and
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`asserted in its first petition with reasonable diligence.
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`The third factor also weighs against institution—i.e., “Petitioner’s potential
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`benefit from receiving and having the opportunity to study Patent Owner’s
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`Preliminary Response, as well as [the Board’s] institution decisions on the first-filed
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`petitions, prior to filing follow-on petitions.” While Microsoft did not have the
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`benefit of the Board’s institution decision in Apple ’259 IPR or Uniloc’s preliminary
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`response when Microsoft filed its petition, Apple is now seeking to take advantage
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`IPR2020-00224
`U.S. PATENT NO. 7,075,917
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`of its knowledge of the institution decision in the Microsoft IPR and Uniloc’s
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`preliminary response. Apple should not be allowed benefit from the preliminary
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`responses and the institution decisions, which is precisely what would happen if
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`Apple takes a lead role in the petition it seeks to join.
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`Factors four and five weigh against institution and joinder because Apple
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`provides no adequate explanation for the time elapsed between the filing of the
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`Apple ’259 IPR and Apple’s joinder motion.
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`Factors six and seven weigh against institution and joinder because, as
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`explained above, Apple purports offers a definition for “understudy” which purports
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`to preserve rights unnecessarily complicates the proceeding in a manner that
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`increases the possibility that Board resolution may be required.
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`Apple’s attempt to take the second bite at the apple, implicates the same
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`efficiency concerns underpinning General Plastic and the Valve Corporation
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`opinions. See Valve Corporation v. Electronic Scripting Products, Inc., IPR2019-
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`00064, -00065, -00085 (PTAB May 1, 2019) (Paper 10) (“Valve II”) (precedential);
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`Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00084 (PTAB
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`Apr. 2, 2019) (Paper 11) (“Valve I”).
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`III. CONCLUSION
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`For the foregoing reasons, joinder should be denied.
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`Date: January 21, 2020
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`Respectfully submitted,
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`By: Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
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`9
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`IPR2020-00224
`U.S. PATENT NO. 7,075,917
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`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an
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`electronic copy of the foregoing document was filed via the PTAB E2E system and
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`email to Petitioner’s counsel at the addresses identified in Petitioner’s consent to
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`electronic service.
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`By: Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`10
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