UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ERICSSON 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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`IPR2020-00315
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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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`ERICSSON 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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`IPR2020-00315
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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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`I.
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`INTRODUCTION
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`The ’917 patent has not and is presently not the subject of any district court
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`litigation. On April 19, 2019, Microsoft filed an IPR petition challenging claims
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`1‒3 and 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. Ericsson seeks to join the
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`Microsoft IPR. See generally Paper 3 (“Mtn.”). Ericsson acknowledged conferring
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`with Microsoft regarding Ericsson’s petition and motion before filing, though
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`Ericsson does not name Microsoft as a real party in interest. See Mtn. 1 (“Petitioner
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`in the Microsoft IPR does not oppose Ericsson’s instant motion”).
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`While Ericsson asserts that, if joined, it will take an “understudy’ role” (Mtn.
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`1), in another IPR matter involving the same parties,1 the Board recently considered
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`and rejected Ericsson’s same definition for “understudy” as impermissibly reserving
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`the right to actively participate, regardless whether the original petitioner
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`(Microsoft) has been terminated.
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`II. ARGUMENT
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`As the moving party, Ericsson 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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`1 Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376, Paper 8 (PTAB January 21,
`2020) (“Conduct Order”).
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`1
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`IPR2020-00315
`U.S. PATENT NO. 7,075,917
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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, Ericsson’s motion should be denied for the same reasons articulated by
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`the Board in the Conduct Order (issued just today) involving the same parties. See
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`Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376, Paper 8 (PTAB January 21,
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`2020) (“Conduct Order”); see also Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-
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`01116, Paper 10 at 3-5 (PTAB January 16, 2020) (referencing the Conduct Order).
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`Specifically, Ericsson’s motion should be denied at least because Ericsson purports
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`to reserve impermissible for a joinder petitioner rights by offering the same rejected
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`definition for “understudy” which risk causing undue prejudice to Patent Owner.
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`In another IPR matter involving the same parties, the Board very recently
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`considered Ericsson’s same definition for “understudy” and found it permissive of
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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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`2
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`IPR2020-00315
`U.S. PATENT NO. 7,075,917
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`Specifically, the Board summarized the Board found the same definition for
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`“understudy” Ericsson repeats here as leaving upon the possibility for the joinder
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`petitioner to play an active role, regardless whether the original petitioner has been
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`terminated from the proceeding. Id.
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`There, the Board first addressed language analogous to what is presented in
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`Ericsson’s instant motion as follows: “all filings by [the joinder petitioner] in the
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`joined 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. 8. 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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`3
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`IPR2020-00315
`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 Ericsson’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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`Ericsson’s similar motion for joinder here should be denied at least because it offers
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`the same overbroad definition for “understudy” (verbatim), which is permissive of
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`active participation that does not comport with a true “understudy” role.
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`Consequently, Ericsson’s overbroad definition risks causing delay undue prejudice
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`to Patent Owner for the same reasons.
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`4
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`IPR2020-00315
`U.S. PATENT NO. 7,075,917
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`Yet another independent basis for denial is that Ericsson’s motion here is
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`silent as to whether it will seek to file its own appeal briefing, separate and apart
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`from Microsoft, should Ericsson eventually seek appellate review. This clearly
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`would complicate the matter on appear and significantly prejudice Patent Owner, as
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`such a strategy would effectively allow two distinct appellants to have twice the
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`pages as Patent Owner in presenting their respective and potentially independent
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`arguments on appeal. Patent Owner would then have half the pages to respond to
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`both sets of independent arguments.
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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
`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`5
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`IPR2020-00315
`U.S. PATENT NO. 7,075,917
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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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`via 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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`6
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