Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: June 18, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ERICSSON INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00420
`Patent 6,868,079 B1
`
`Before JAMESON LEE, SALLY C. MEDLEY, and JASON M. REPKO,
`Administrative Patent Judges.
`LEE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
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`IPR2020-00420
`Patent 6,868,079 B1
`
`INTRODUCTION
`I.
`Ericsson Inc. (“Petitioner”) filed a Petition for inter partes review of claims
`1–5, 7, and 17 of U.S. Patent No. 6,868,079 B1 (Ex. 1001, “the ’079 patent”).
`Paper 2 (“Pet.”).1 Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is
`authorized by statute when “the information presented in the petition . . . and any
`response . . . 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.”
`35 U.S.C. § 314(a) (2012). For reasons discussed below, however, we do not
`reach the substantive merit of any argument based on the content of prior art. We
`also do not reach arguments about discretionary denial under 35 U.S.C. § 325(d).
`Instead, we discretionarily deny the Petition under 35 U.S.C. § 314(a).
`Related Matters
`A.
`Petitioner and Patent Owner indicate that the ’079 patent is the subject of
`several court proceedings, as well as inter partes review proceedings IPR2019-
`00510 (“IPR510” (filed by Apple Inc., LG Electronics Inc., Samsung Electronics
`Co., Ltd., and Samsung Electronics America, Inc. and for which trial was instituted
`on July 25, 2019)) and IPR2020-00038 (“IPR038” (filed by Motorola Mobility
`LLC and for which trial was instituted on April 13, 2020)). Pet. 2–3; Prelim.
`Resp. 6–7.
`The ’079 Patent
`B.
`The ’079 patent describes “a method of operating a radio communication
`system,” where the radio communication system is “required to be able to
`exchange [signaling] messages between a Mobile Station (MS) and a Base Station
`
`
`1 Petitioner identifies each of Ericsson Inc. and Telefonaktiebolaget LM Ericsson
`as a real party-in-interest. Pet. 2.
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`2
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`IPR2020-00420
`Patent 6,868,079 B1
`(BS).” Ex. 1001, 1:7–8, 1:18–20. The ’079 patent further describes that an object
`of the invention “is to improve the efficiency of the method by which a MS
`requests resources from a BS.” Id. at 1:56–58. The ’079 patent describes a
`secondary station (i.e., MS) transmitting a request for resources to a primary
`station (i.e., BS) in a time slot allocated to the secondary station, where the
`secondary station re-transmits the request in at least a majority of its allocated time
`slots until an acknowledgment is received from the primary station. Id. at 1:60–67.
`Because there is no possibility of requests from different secondary stations
`colliding, a secondary station can retransmit requests in each allocated time slot.
`Id. at 2:3–5. Further, the primary station can improve the accuracy with which it
`determines whether a request was sent by a particular secondary station if the
`received signal strength is close to the detection threshold by examining the
`received signals in multiple time slots allocated to the secondary station in
`question. Id. at 2:9–14.
`An example of a radio communication system is illustrated in Figure 1,
`reproduced below.
`
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`IPR2020-00420
`Patent 6,868,079 B1
`Figure 1 is a block diagram of a radio communication system comprising a primary
`station (BS) 100 and a plurality of secondary stations (MS 110). Id. at 3:10–12.
`Communication from BS 100 to MS 110 takes place on a downlink channel 122,
`while communication from MS 110 to BS 100 takes place on an uplink channel
`124. Id. at 3:19–21.
`Illustrative Claims
`C.
`Claims 1 and 17 are independent. Both are directed to a method for
`operating a radio communication system and both are reproduced below:
`1.
`[1.pre] A method of operating a radio communication
`system, comprising:
`[1.a] allocating respective time slots in an uplink channel to a plurality
`of respective secondary stations; and
`[1.b] transmitting a respective request for services to establish required
`services from at least one of the respective secondary stations to a
`primary station in the respective time slots;
`[1.c] wherein the at least one respective secondary stations [re-
`transmits] the same respective request in consecutive allocated time
`slots without waiting
`for an acknowledgement until said
`acknowledgement is received from the primary station,
`[1.d] wherein the primary station determines whether a request for
`services has been transmitted by the at least one respective
`secondary station from a combination of the received signals in a
`plurality of successive time slots allocated to the at least one
`respective secondary station.
`Ex. 1001, 6:1–19.2 The bracketed annotations are added to correspond to
`Petitioner’s annotations. Pet. 31–47.
`17.
`[17.pre] A method of operating a radio communication
`system, comprising:
`
`
`2 In the first wherein clause, claim 1 of the ’079 patent uses “re,transmit” where
`“re-transmit” appears to be intended. We regard “re,transmit” as a misspelling and
`read the wherein clause as reciting “re-transmit.”
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`IPR2020-00420
`Patent 6,868,079 B1
`[17.a] allocating respective time slots in an uplink channel to a plurality
`of respective secondary stations; and
`[17.b] transmitting a respective request for services to establish
`required services from at least one of the plurality of respective
`secondary stations to a primary station in the respective time slots;
`[17.c] wherein the at least one of the plurality of respective secondary
`stations re-transmits the same respective request in consecutive
`allocated time slots without waiting for an acknowledgement until
`said acknowledgement is received from the primary station,
`[17.d] wherein the primary station determines whether a request for
`services has been transmitted by the at least one of the plurality of
`respective secondary stations by determining whether a signal
`strength of the respective transmitted request of the at least one of
`the plurality of respective secondary stations exceeds a threshold
`value.
`Ex. 1001, 8:12–33. The bracketed annotations are added to correspond to
`Petitioner’s annotations. Pet. 55–56.
`Claim 1 reads essentially the same as claim 17, except that the second
`wherein clause of the two claims, i.e., limitations [1.d] and [17.d], are substantively
`different. 3
`Asserted Grounds of Unpatentability
`D.
`Petitioner asserts the following grounds of unpatentability:4
`
`
`
`
`
`3 Insignificant differences include a misspelling in claim 1 of the word “retransmit”
`as “re,transmit,” and claim 1’s reciting “one of the” or just “one,” instead of “one
`of the plurality of,” ahead of “respective secondary stations,” as does claim 17.
`4 Petitioner also relies on the Declaration of Vijay K. Madisetti, Ph. D. Ex. 1007.
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`IPR2020-00420
`Patent 6,868,079 B1
`Claims Challenged
`1, 5, 7, 17
`3, 4
`2
`
`
`
`35 U.S.C. §
`103(a)5
`103(a)
`103(a)
`
`References
`Merakos, 6 Kay, 7 Alamouti8
`Merakos, Kay, Alamouti, Dent9
`Merakos, Kay, Alamouti, and Ling10
`
`II. DISCUSSION
`Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS
`Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the
`Director with discretion on the question whether to institute review . . . .”
`(emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`(2016) (“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes
`the trial on behalf of the Director.”). “[T]he PTO is permitted, but never
`compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356, 1367 (Fed. Cir. 2016).
`Patent Owner argues that we should discretionarily deny the Petition under
`35 U.S.C. § 314(a). Prelim. Resp. 9. Alternatively, Patent Owner argues that
`because, with respect to the challenged independent claims, the alleged ground of
`unpatentability is the same as that previously presented in IPR2020-00038, we
`should discretionarily deny the Petition under 35 U.S.C. § 325(d). Id. at 14.
`
`
`5 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
`(“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’079 patent has an
`effective filing date before the effective date of the applicable AIA amendments,
`we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and 103.
`6 US 5,521,925, issued May 28, 1996 (Ex. 1003, “Merakos”).
`7 US 5,299,198, issued Mar. 29, 1994 (Ex. 1004, “Kay”).
`8 US 5,933,421, issued Aug. 3, 1999 (Ex. 1006, “Alamouti”).
`9 US 5,430,760, issued July 4, 1995 (Ex. 1005, “Dent”).
`10 US 6,172,970 B1, issued Jan. 9, 2001, filed May 5, 1997 (Ex. 1009, “Ling”).
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`IPR2020-00420
`Patent 6,868,079 B1
`For reasons discussed below, we discretionarily deny the Petition under
`35 U.S.C. § 314(a). We do not reach the issue of discretionary denial under
`35 U.S.C. § 325(d). We also do not reach the substantive merit of the arguments
`based on the specific content of the prior art.
`A petition for inter partes review may be denied as a matter of discretion.
`See 35 U.S.C. § 314(a). We consider a non-exhaustive list of factors when
`determining whether to exercise that discretion. General Plastic Co. v. Canon
`Kabushiki Kaisha, IPR2016-01357, Paper 19 at 9 (PTAB Sept. 6, 2017)
`(precedential as to Section II.B.4.i). Under the first factor, we consider whether
`the same petitioner previously filed a petition directed to the same claims of the
`same patent. Id. That consideration was expanded to include a previous petition
`filed by another petitioner against the same claims of the same patent, so long as
`there exists a “significant relationship” between the multiple petitioners. Valve
`Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB
`Apr. 2, 2019) (precedential). In Valve, a significant relationship was found to
`have existed where the first and second petitioners were co-defendants in
`litigation and accused of infringing the same patent based on “HTC’s . . .
`devices that incorporate technology licensed from Valve.” Valve, IPR2019-
`00062, Paper 11, at 10.
`The Petition in IPR510 was filed by Apple Inc., LG Electronics Inc.,
`Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. (“IPR510
`Petitioner”). IPR2019-00510, Paper 2, 1. The only challenged claims are claims
`17 and 18 of the ’079 patent. Id. Patent Owner does not argue, nor do we find,
`that there is any significant relationship between the IPR510 Petitioner and
`Petitioner. For instance, neither Petitioner nor Patent Owner represents that
`Petitioner is a party to the district court litigation in which Patent Owner sued the
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`IPR510 Petitioner for patent infringement. Neither Petitioner nor Patent Owner
`represents that the accused product in that litigation incorporates anything licensed
`from Petitioner, designed from Petitioner, or manufactured by Petitioner.
`The Petition in IPR038 was filed by Motorola Mobility LLC. IPR2020-
`00038, Paper 2, 1–2. Patent Owner filed suit based on the ’079 patent against
`Motorola Mobility LLC in Case No. 1:18-cv-01841 (D. Del.). Pet. 2, Paper 5, 2.
`Neither Petitioner nor Patent Owner represents that Petitioner is a party to the
`district court litigation in which Patent Owner sued the IPR038 Petitioner for
`patent infringement. Neither Petitioner nor Patent Owner represents that the
`accused product in that litigation incorporates anything licensed from Petitioner,
`designed from Petitioner, or manufactured by Petitioner.
`Patent Owner argues, however, the Board has held that a “significant
`relationship” for purposes of analyzing follow-on petitions between different
`petitioners can be created by a subsequent petitioner who uses the former
`petitioner’s work as a menu or roadmap to arrive at the follow-on petition, citing
`Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 12 (PTAB Mar. 17,
`2020). Prelim. Resp. 10. Based on the record before us, and as explained below,
`we find that Petitioner did use the Petition in IPR038 as a menu or roadmap in
`preparing the Petition here, but disagree that that fact creates a “significant
`relationship.”
`In IPR038, the sole challenged claim is claim 17 of the ’079 patent, and
`claim 17 was challenged on two grounds: (1) Merakos (inclusive of Kay
`(incorporated-by-reference by Merakos)) and Alamouti, and (2) Merakos
`(inclusive of Kay (incorporated-by-reference by Merakos)), and U.S. Patent
`4,829,543 (“Borth”). IPR038, Paper 2. Ground (1) in IPR038 is the same as the
`ground asserted by Petitioner here against claims 1, 5, 7, and 17, i.e., obvious over
`Merakos, Kay, and Alamouti. Petitioner states that it “only learned of the Kay and
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`Patent 6,868,079 B1
`Alamouti references by reviewing the Motorola Mobility petition after it was filed
`on October 11 [, 2019].” Pet. 72. Thus, prior to reviewing the Petition in IPR038,
`which challenged claim 17 on the basis of Merakos, Kay, and Alamouti, Petitioner
`allegedly was unaware of Kay and Alamouti, and after Petitioner learned of Kay
`and Alamouti by reviewing the Petition in IPR038, Petitioner filed a petition
`challenging claims 1, 5, 7, and 17 on the basis of Merakos, Kay, and Alamouti.
`The obviousness reasoning between the two petitions with respect to claim 17 is
`substantially similar. The record supports a finding that Petitioner used the
`Petition in IPR038 as a menu or roadmap to prepare the challenge of claim 17 in
`the Petition here. We do so find.
`Further, as discussed above, claim 1 is substantially the same as claim 17.
`Claims 5 and 7 each depend from claim 1. The record similarly supports a finding
`that Petitioner used the Petition in IPR038 as a menu or roadmap to prepare the
`challenge of claims 1, 5, and 7, and we so find. Additionally, claims 2, 3, and 4
`each depend, directly or indirectly from claim 1. Petitioner’s challenge of each of
`claims 2, 3, and 4 relies in part on the combined teachings of Merakos, Kay, and
`Alamouti, in a similar manner to how those references are put together in the
`Petition of the IPR038 to account for claim 17. The record supports a finding that
`Petitioner used the Petition in IPR038 as a menu or roadmap to prepare the
`challenge of claims 2, 3, and 4. We do so find.
`However, we do not agree that Petitioner’s reliance on the Petition in
`IPR038 as a menu and roadmap creates a significant relationship between
`Petitioner and the Petitioner in IPR038. To the extent the Board held otherwise in
`Ericsson Inc., IPR2019-01550, Paper 8 at 12, we are not bound, as Ericsson is not
`precedential authority. We read Valve as expressing that if there is a significant
`relationship between two Petitioners, where the second Petitioner filing a Petition
`challenging the same claim or claims as the first, that weighs in favor of
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`Patent 6,868,079 B1
`discretionary denial under factor one of General Plastic. A petitioner’s reviewing
`an earlier petition filed by another and even agreeing with and liking the analysis in
`the earlier petition does not create a significant relationship between the two
`petitioners.
`For the foregoing reasons, factor one weighs against discretionarily denying
`the Petition.
`Under General Plastic factor two, we consider whether, at the time of filing
`of the earlier petition, the petitioner knew of the prior art asserted in the later
`petition or should have known of it. General Plastic, Paper 19, at 16. Petitioner
`asserts that at the time of filing of the Petition in IPR038, it was not aware of
`Kay, Alamouti, and Ling. Pet. 72. But Kay is expressly mentioned in Merakos
`which incorporates by reference the disclosure of Kay. Ex. 1003, 1:9–16.
`Petitioner cannot be aware of Merakos but unaware of Kay. Also, Petitioner
`does not contend that it knew of no reference that discloses what Alamouti
`discloses and what Ling discloses. Based on the record before us, factor two
`weighs in favor of discretionarily denying the Petition.
`The third factor of General Plastic is whether, at the time of filing of the
`later petition, petitioner had already received patent owner’s preliminary response
`to the earlier petition or received the Board’s decision on whether to institute
`review in the earlier petition. General Plastic, Paper 19, at 16. Patent Owner
`correctly points out the following:
`In fact, the Petitioner already had the benefit of the Patent Owner’s
`Preliminary Response, the Institution Decision and the Patent Owner
`Response in IPR2019-00510, which also challenges Clam 17. The
`Petitioner has thus been able to assess the strengths and weaknesses of
`the prior art at issue in IPR2019-00510, and to identify art and prepare
`arguments with the benefit not only of the Board’s Institution
`Decision as to Claim 17, but both the [Patent Owner’s] Preliminary
`Response and the Patent Owner Response.
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`Patent 6,868,079 B1
`Prelim. Resp. 12. Indeed, having had access to the information identified in the
`above-quoted text, Petitioner chose not to rely on the references applied in the
`Petition in IPR510, and to rely on all new references instead. Petitioner, however,
`cannot be faulted for having had such advance knowledge when filing its Petition.
`Petitioner intervened as a defendant in Uniloc 2017 LLC v. AT&T Services, Inc.
`et al., Case No. 2:19-cv-00102 (E.D. Tex.), a civil action that commenced on
`March 26, 2019. Ex. 1028, 3001. The Petitioner in IPR510 was sued by Patent
`Owner, based on the ’079 patent, eight months prior to March 26, 2019. IPR2020-
`00038, Paper 9, 8. For these reasons, we find the third factor to be neutral.
`Factor four is “the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the filing of the second
`petition.” Gen. Plastic, Paper 19, at 16. Petitioner represents that it was aware of
`Merakos prior to the time the Petition was filed in IPR038. Pet. 71. Petitioner,
`however, asserts that it first became aware of Kay and Alamouti by reviewing the
`Petition in IPR038. Pet. 72. That is unpersuasive with regard to Kay, because
`Merakos expressly incorporates-by-reference the disclosure of Kay. Ex. 1003,
`1:9–16. The time when Petitioner became aware of Merakos necessarily also is the
`time Petitioner became aware of Kay. Petitioner asserts that it filed the Petition on
`January 17, 2020, in “just over three months after learning of those references.”
`Pet. 73. The assertion incorrectly assumes that Petitioner’s pre-existing knowledge
`of Kay, no matter how long, does not matter. It does matter, at least where, as
`here, Petitioner has not represented that it was lack of knowledge of the subject
`matter described in Alamouti and Ling, wherever disclosed, that prevented earlier
`filing of the Petition. For instance, Alamouti was relied on by Petitioner for its
`description of diversity transmission and reception techniques. Pet. 27–28.
`Petitioner does not contend that diversity transmission and/or reception originated
`with Alamouti or was not otherwise disclosed in any prior art known to Petitioner.
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`Patent 6,868,079 B1
`For the foregoing reasons, factor four weighs in favor of denying the
`Petition.
`Factor five is “whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed to the same claims
`of the same patent.” Gen. Plastic, Paper 19, at 16. Petitioner discusses factor five
`as though it is the same as factor four and as though both factors concern whether
`there is undue delay in filing the Petition after Petitioner learned of the references
`relied on in the Petition. Pet. 73. For instance, Petitioner asserts: “Petitioner filed
`its challenges promptly, and thus factors four and five both weigh against denial.”
`Id. That approach amounts to a categorical disregard of factor five, which is not
`the same as factor four. Instead, factor five is much broader and concerns the
`entire circumstance of why Petitioner could not have filed the Petition earlier. In
`that regard, Petitioner has not provided an adequate explanation.
`Petitioner further asserts that it filed the Petition here within four months
`after becoming a party to the district court litigation in Uniloc 2017 LLC v. AT&T
`Services, Inc., et. al., Case No. 2:19-CV-00102-JRG (E.D. Tex.) by way of a
`motion to intervene as a defendant. Pet. 73. Patent Owner asserts that that is not
`an adequate accounting of factor five. Prelim. Resp. 13. We agree.
`In the context of factor five, Petitioner’s accounting must begin from when it
`first learned that Patent Owner had filed suit accusing products designed and
`manufactured by Petitioner of infringing claims of the ’079 patent. We understand
`that the actual language of factor five reads “whether the petitioner provides
`adequate explanation for the time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent.” Gen. Plastic, Paper 19, at 16.
`That is for probing why the Petitioner filed one petition first and another one later.
`After Valve explained that Gen. Plastic. considerations apply to petitions filed by
`different petitioners, as discussed above, factor five is reasonably read to refer to
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`when Petitioner first had a reason to file a petition. That is because the focus is
`always on the Petitioner itself. Here, factor five probes why Petitioner took as long
`as it did to file this Petition.
`In Uniloc 2017 LLC v. AT&T Services, Inc., et. al., Case No. 2:19-CV-
`00102-JRG (E.D. Tex.), Petitioner filed a motion to intervene as defendant, on the
`basis that it designed and manufactured the products which were accused of
`infringing the ’079 patent. Ex. 1028, 1 n.1. The Motion was granted on
`September 16, 2019. Id. But Petitioner does not reveal when it first learned that
`the products it designed and manufactured were accused of infringing the ’079
`patent. The complaint in that civil action was filed on March 26, 2019. Ex. 3001.
`The Petition here was filed on January 17, 2020. We agree with Patent Owner
`(Prelim. Resp. 13) that “[i]t is reasonable that the Petitioner became aware of the
`accusation of infringement promptly after March 26, 2019, meaning that it waited
`nearly ten months to file the present Petition.” The near ten-month gap between
`March 26, 2019, and January 17, 2020, has not been adequately explained by
`Petitioner. Accordingly, factor five urges in favor of denying the Petition.
`Under the sixth and seventh General Plastic factors, we consider “the finite
`resources of the Board” and “the requirement under 35 U.S.C. § 316(a)(11) to
`issue a final determination not later than 1 year after the date on which the Director
`notices institution of review.” General Plastic, Paper 19, at 16. Patent Owner
`argues that “institution here would require the Board to engage in a needless
`duplication of effort, in considering a challenge to Claim 17 based on precisely the
`same prior art asserted in IPR2020-00038.” Prelim. Resp. 14. Although the
`resources of the Board are limited, institution of review would not present an
`excessive burden and we have no reason to believe that there would be difficulty in
`satisfying the “1 year” requirement of 35 U.S.C. § 316(a)(11). We regard factors 6
`and 7 concerning the resources of the Board to be neutral in the circumstance here.
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`Of the General Plastic factors discussed above, three favor discretionary
`denial, one weigh against, and three are neutral. In General Plastic, it was held
`that the Board recognizes “that additional factors may arise in other cases for
`consideration, where appropriate.” General Plastic, Paper 19, at 18. In this case,
`there are additional reasons which favor discretionary denial, as discussed below.
`Petitioner asserts that it “should be given its own opportunity to be heard on
`its arguments challenging new claims not challenged in any prior Petition.”
`Pet. 71 (emphasis added). We note that claims 2–5 and 7 were not challenged in
`the petitions of IPR510 or IPR038 but are challenged here. The argument is
`unpersuasive in the circumstance here for two reasons.
`First, the argument provides no justification to institute review of claim 17
`for the third time, particularly on the same ground for which review was instituted
`for claim 17 in IPR038. Note that “if the PTAB institutes a trial, the PTAB will
`institute on all challenges raised in the petition.” See USPTO, Guidance on the
`Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”). Petitioner has
`not demonstrated a need for an additional petition which challenges claim 17 for a
`third time, where both earlier petitions resulted in institution of trial and where the
`alleged ground of unpatentability for claim 17 here is the same as that raised in one
`of the two earlier petitions. 11 The inclusion of claim 17 in the Petition undermines
`Petitioner’s argument that it should be entitled to challenge claims 2–5 and 7 which
`were not challenged in any previous petition. Indeed, the inclusion of claim 17 is
`unnecessary for any petition challenging claims 1–5 and 7.
`
`11 Petitioner erroneously states that it does not challenge any of the same claims
`challenged in IPR510. Pet. 72 n.3. The Petition in IPR510 challenges claims 17
`and 18 of the ’079 patent. IPR2019-00510, Paper 2, 1.
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`Second, although Petitioner states that “[c]laims 1–5 and 7 are asserted by
`Patent Owner in litigation against Petitioner’s products and have not been
`previously challenged in any petition” (Pet. 71 n.2), Petitioner provides no citation
`to any court record to support the assertion. The record does not show that Patent
`Owner has asserted any of claims 1–5 and 7 against Petitioner or Petitioner’s
`products. Exhibit 1028, submitted by Petitioner, is a copy of a U.S. District
`Court’s Order granting Petitioner’s unopposed motion to intervene as a defendant
`in Case No. 2:19-CV-00102-JRG (E.D. Tex.). The case is captioned as Uniloc
`2017 LLC v. AT&T Services, Inc., AT&T Mobility LLC. Ex. 1028. Petitioner and
`Patent Owner indicate that the case involves the ’079 patent. Pet. 2; Paper 4, 2.
`We obtained a copy of the Complaint in that civil action and herein enter it
`as Exhibit 3001 in this proceeding. We also obtained a copy of the docket sheet
`for the civil action, as of May 4, 2020, and herein enter it as Exhibit 3002 in this
`proceeding. The Complaint indicates only that claim 17 was asserted by Patent
`Owner. Ex. 3001. We also see no amended complaint in the docket sheet.
`Ex. 3002. We have been directed to no evidence that Patent Owner asserted any of
`claims 1–5 and 7 against Petitioner or Petitioner’s products. Instead, the record
`suggests that the focus of the Petition is on claim 17, not claims 1–5 and 7. That
`further undermines Petitioner’s argument that it “should be given its own
`opportunity to be heard on its arguments challenging new claims not challenged in
`any prior Petition.” Pet. 71 (emphasis added).
`An objective of the AIA is to provide an effective and efficient alternative to
`a district court litigation by considering the patentability of claims that are
`involved in the district court litigation. Here, claims 1–5 and 7 have not been
`shown to be involved in a district court litigation and we independently do not find
`claims 1–5 and 7 to be involved in the district court case in which Petitioner
`intervened. Petitioner’s unsupported representation that claims 1–5 and 7 are
`
`15
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`

`

`IPR2020-00420
`Patent 6,868,079 B1
`asserted by Patent Owner in litigation against Petitioner’s products, which
`representation is refuted by what we find in the public records, should not be, and
`is not, taken well. The circumstance here relating to Petitioner’s incorrect
`representation is treated as an additional factor weighing against institution, aside
`from the General Plastic factors discussed above.
`Having considered all of the factors discussed above, we deny institution
`under 35 U.S.C. § 314(a).
`
`III. CONCLUSION
`For the foregoing reasons, we exercise our delegated discretion not to
`institute review.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied, and no inter partes review is
`instituted on any claim over any alleged ground of unpatentability.
`
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`

`IPR2020-00420
`Patent 6,868,079 B1
`FOR PETITIONER:
`J. Andrew Lowes
`Clint Wilkins
`Samuel Drezdzon
`HAYNES AND BOONE, LLP
`andrew.lowes@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`samuel.drezdzon@haynesboone.com
`
`FOR PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Brian Koide
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`brian@etheridgelaw.com
`jeff@etheridgelaw.com
`
`17
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`