Apple Inc. v. Uniloc 2017 LLC

Trials@uspto.gov 	Paper 9
571-272-7822 	Entered: October 28, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
APPLE INC.,
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.
____________
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Patent 6,467,088 B1
____________
Before MIRIAM L QUINN, AMANDA F. WIEKER, and
SCOTT RAEVSKY, Administrative Patent Judges.
QUINN, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
Denying Motion for Joinder
35 U.S.C. § 315(c); 37 C.F.R. § 42.122

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I. 	INTRODUCTION
Apple Inc. (“Petitioner” or “Apple”) filed a Petition for inter partes
review of claims 1−4, 6−14, and 16−21 of U.S. Patent No. 6,467,088 B1
(Ex. 1001, “the ’088 patent”). Paper 1 (“Pet.”). Petitioner also filed a
Motion for Joinder with Microsoft Corp. v. Uniloc 2017 LLC, IPR2020-
00023 (“the 023 IPR”). Paper 3 (“Mot.”). Uniloc 2017 LLC (“Patent
Owner”) filed an Opposition to the Motion for Joinder. Paper 7 (“Opp.”).1
Petitioner filed a Reply to Patent Owner’s Opposition. Paper 8 (“Reply”).
We have authority under 35 U.S.C. § 314(a), which provides that an inter
partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.”
For the reasons described below, we do not institute an inter partes
review of the challenged claims and deny Petitioner’s Motion for Joinder.
II. 	RELATED PROCEEDINGS
The parties indicate that the ’088 patent is the subject of several court
proceedings, the 023 IPR filed by Microsoft, and a prior petition for inter
partes review filed by Petitioner. Pet. 10; Paper 5, 2. In particular, the
’088 patent was the subject of Apple Inc. v. Uniloc 2017 LLC, IPR2019-
00056 (“the 056 IPR”), where the Board issued a decision not to institute
inter partes review. Pet. 10.
In the 023 IPR, we instituted an inter partes review of claims 1−4,
6−14, and 16−21 of the ’088 patent based on the following asserted prior art
and grounds:
1 Patent Owner did not file a Preliminary Response.

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1) Apfel: U.S. Patent No. 5,974,454, filed as Exhibit 1004;
2) Lillich: U.S. Patent No. 5,613,101, filed as Exhibit 1005;
3) Todd: U.S. Patent No. 5,867,714, filed as Exhibit 1006; and
4) Pedrizetti: U.S. Patent No. 6,151,708, filed as Exhibit 1007.
Microsoft Corp. v. Uniloc 2017 LLC, IPR2020-00023, Paper 7 at 6, 29−31
(PTAB Apr. 14, 2020) (“023 Decision” or “023 Dec.”). The following table
summarizes the grounds of unpatentability in the 023 IPR:
Claims Challenged
in 023 IPR 35 U.S.C. §2 References/Basis
1–4, 6–14, 16–21 	103(a) 	Apfel, Lillich, Todd
9, 19 	103(a) 	Apfel, Lillich, Todd, Pedrizetti
1–3, 9–13, 19–21 	103(a) 	Apfel, Lillich
1, 3, 4, 6–11, 13, 14,
16–21 103(a) 	Apfel, Todd
Id.
III. 	WHETHER TO INSTITUTE INTER PARTES REVIEW
The Petition in this proceeding asserts the same grounds of
unpatentability as those upon which we instituted review in the 023 IPR.
Compare Pet. 13−15, with 023 Dec. 5, 30. Indeed, Petitioner contends that
the Petition “is substantially identical to the petition filed in the [023] IPR
Proceeding.” Pet. 11; see also Ex. 1016 (comparing in redline the
differences between the petition in the 023 IPR and the instant Petition). We
agree that the Petition here asserts challenges and evidence identical to those
2 Because the application leading to the ’088 patent was filed before
March 16, 2013, patentability is governed by the version of 35 U.S.C. § 103
preceding the Leahy-Smith America Invents Act (“AIA”), Pub L. No. 112–
29, 125 Stat. 284 (2011).

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asserted in the 023 IPR. Having already considered the merits of those
challenges and evidence vis-à-vis the threshold of institution for inter partes
review, we determine that the Petition here also presents a reasonable
likelihood of prevailing on the challenge of at least one claim of the
’088 patent.
Notwithstanding the merits, however, Patent Owner argues that we
should exercise our discretion to deny institution under 35 U.S.C. § 314(a)
and, accordingly, deny joinder, citing and discussing the Fintiv and General
Plastic factors. Opp. 2−9 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019,
Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”) and
General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)).
Petitioner argues that neither the Fintiv Order nor the General Plastic factors
applies here, where Petitioner seeks to join as a party to the 023 IPR and
take an inactive or understudy role. Reply 1−2, 4. As explained in further
detail below, Petitioner’s understudy argument is not persuasive here where
the copied petition is Petitioner’s second challenge to the patent, and should
Microsoft settle, Petitioner would stand in to continue a proceeding that
would otherwise be terminated. In effect, it would be as if Apple had
brought the second challenge to the patent in the first instance. This is the
kind of serial attack that General Plastic was intended to address. General
Plastic, Paper 19 at 17 (“Multiple, staggered petitions challenging the same
patent and same claims raise the potential for abuse.”).
That Petitioner seeks to join the 023 IPR does not obligate us to
institute this proceeding without first considering whether to exercise

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discretion under § 314(a). The statutory provision governing joinder in inter
partes review proceedings is 35 U.S.C. § 315(c), which reads:
If the Director institutes an inter partes review, the Director, in
his or her discretion, may join as a party to that inter partes
review any person who properly files a petition under section 311
that the Director, after receiving a preliminary response under
section 313 or the expiration of the time for filing such a
response, determines warrants the institution of an inter partes
review under section 314.
See also Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332
(Fed. Cir. 2020) (determining that § 315(c) requires “two different
decisions,” first “whether the joinder applicant’s petition for IPR ‘warrants’
institution under § 314,” and then whether to “exercise . . . discretion to
decide whether to ‘join as a party’ the joinder applicant”). Under 35 U.S.C.
§ 315(c), the discretion of the Director to join a party to an ongoing IPR is
premised on the Director’s determination that the petition warrants
institution. That determination is not limited to determining whether the
merits of the petition meet the reasonable likelihood threshold for at least
one challenged claim. Under General Plastic, the Board may deny a
petition based on the Director’s discretionary authority of § 314(a). General
Plastic, Paper 19 at 15. Thus, before determining whether to join Apple as a
party to the 023 IPR, even though the Petition is a “me-too petition,” we first
determine whether application of the General Plastic factors warrants the
exercise of discretion to deny the Petition under § 314(a).
A. Prior Petitions
In General Plastic, the Board recognized certain goals of the AIA but
also “recognize[d] the potential for abuse of the review process by repeated
attacks on patents.” General Plastic, Paper 19 at 16–17. On October 17,

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2018, Apple filed a first petition challenging the ’088 patent. 056 IPR,
Paper 1. We denied that petition on April 29, 2019 because the evidence
and arguments presented failed to meet substantively the reasonable
likelihood threshold required for institution. Id. at Paper 7. Subsequently,
Apple filed a request for rehearing the Board’s decision denying institution,
which the Board denied on July 15, 2019. Id. at Papers 8, 9. At this point in
the timeline of events, because Patent Owner had served Apple with the
district court complaint more than a year prior to the Board’s decision
denying rehearing, Apple was barred from filing any further petitions against
the ’088 patent. See 35 U.S.C. § 315(b).
Patent Owner sued Microsoft Corporation (“Microsoft”) in district
court on May 20, 2019, almost a year after the complaint against Apple was
filed. Pet. 10. Microsoft then filed its petition challenging the ’088 patent,
on October 11, 2019. 023 IPR, Paper 2. The Board granted that petition and
instituted the 023 IPR on April 14, 2020. 023 Decision, 1.
As for the instant proceeding, Apple filed its second petition on
April 23, 2020, together with the Motion for Joinder, seeking to join the
023 IPR. Although Patent Owner did not file a Preliminary Response, it
filed an Opposition to the Motion for Joinder. In its Opposition, Patent
Owner challenges Apple’s request to join the 023 IPR because, among other
arguments, Apple’s first petition was denied, and this second petition should
be denied under General Plastic because Apple is using the joinder
procedure as an “end run around its failed petition.” Opp. 7. Apple
responded to that Opposition with a Reply, and, as stated above, Apple
responds that General Plastic does not apply to its request for joinder.
Reply 4−5.

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By way of summary, Apple failed in its first attempt to challenge the
’088 patent, and, over a year later and subject to a § 315(b) bar, seeks to join
an ongoing proceeding challenging that same patent.
B. General Plastic Factors
The Board’s decision in General Plastic articulates a non-exhaustive
list of factors to be considered in evaluating whether to exercise discretion,
under 35 U.S.C. § 314(a), to deny a petition that challenges a patent that was
previously challenged before the Board. These factors are:
1. whether the same petitioner previously filed a petition directed to the
same claims of the same patent;
2. whether at the time of filing of the first petition the petitioner knew of
the prior art asserted in the second petition or should have known of
it;
3. whether at the time of filing of the second petition the petitioner
already received the patent owner’s preliminary response to the first
petition or received the Board’s decision on whether to institute
review in the first petition;
4. 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;
5. 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;
6. the finite resources of the Board; and
7. 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 9−10.

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C. Assessment of the Factors
The Petition in the instant proceeding is undeniably the second
petition Apple has filed challenging the ’088 patent. Patent Owner urges
that we exercise discretion to deny the Petition and deny joinder because of
Apple’s repeated challenge and because, in the year since the denial of the
first petition, Apple has had the benefit of Patent Owner’s filings in prior
IPRs, and Apple has failed to explain the timing of its second petition and its
knowledge of the asserted prior art. Opp. 8−9. Accordingly, we address
each of the factors below.
1. “whether the same petitioner previously filed a petition
directed to the same claims of the same patent”
As stated above, this is the second petition Apple has filed challenging
the claims of the ’088 patent. Opp. 8, Pet. 10. In its first petition, Apple
challenged claims 1−21 of the ’088 patent. IPR2019-00056, Paper 1, 3.
Here, in Apple’s second petition, Apple challenges a subset of those claims.
Pet. 13−14.
Apple unpersuasively argues that its agreement to take an
“understudy” role in the 023 IPR makes this factor irrelevant. Reply 4. As
stated earlier, however, the General Plastic factors are relevant to our
determination whether denial is warranted under § 314(a), even when the
petition filed is a follow-on petition and Petitioner is not seeking an active
role in the ongoing IPR. Accordingly, we conclude that this first General
Plastic factor weighs in favor of denying institution of the proceeding.

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2. “whether at the time of filing of the first petition the
petitioner knew of the prior art asserted in the second
petition or should have known of it”
In addressing this second General Plastic factor, Patent Owner argues
that Apple “has provided no indication that it was not aware of the art later
asserted in . . . [the 023] IPR” at the time it filed its first petition. Opp. 8.
Patent Owner further argues that “Apple should have known of the art at
th[e] time [of filing its first petition], having performed prior art searches to
prepare its petition, and has not provided a persuasive explanation
otherwise.” Id. Apple’s contention is that this second General Plastic factor
is either neutral or irrelevant because there is no overlap between the prior
art asserted in Apple’s first petition and the 023 IPR petition, and because it
“is merely seeking to join in an understudy role.” Reply 4.
We agree with Patent Owner that, in connection with this factor,
Apple has not explained its knowledge of the prior art asserted in the
023 IPR and here. However, contrary to Patent Owner’s argument, we do
not presume Petitioner’s knowledge of the prior art based on prior art
searches alleged to have been performed in preparation of its first petition.
The issue for us here is that Apple has failed to set forth facts or offer an
explanation concerning its knowledge, at the time it filed the first petition, of
the prior art asserted in the 023 IPR and here. Because of the lack of
explanation, we conclude that this second General Plastic factor weighs in
favor of denying institution of the proceeding.

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3. “whether at the time of filing of the second petition the
petitioner already received the patent owner’s preliminary
response to the first petition or received the Board’s
decision on whether to institute review in the first petition”
In addressing the third General Plastic factor, Patent Owner argues
that the Board had denied Apple’s first petition when Apple filed this second
petition and Motion for Joinder. Opp. 9. We agree that, as explained above
in the timeline of events, Apple had received a Board decision denying the
first petition well before the filing of Apple’s second petition. In its Reply,
Apple focuses on the fact that its second petition is substantively identical to
the 023 IPR petition and seeks to join Microsoft as an “understudy,” thereby
arguing that its second petition is not an attempt to “harass Uniloc or
otherwise engage in serial, tactic filings.” Reply 4−5.
Apple’s argument is unpersuasive because the third General Plastic
factor addresses whether Apple had access to a Board decision or a
preliminary response concerning its first petition, such that Apple would
have been in a position to gain a benefit from having that information before
filing its second petition. The timing of events here shows that Apple indeed
had two Board decisions concerning its first petition, the decision denying
institution and a decision of the request for rehearing of that decision.
Consequently, we conclude that the third General Plastic factor weighs in
favor of denying institution of the proceeding.
4. “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”
In connection with the fourth General Plastic factor, Patent Owner
argues that Apple has not explained when it learned of the art asserted in the

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023 IPR and here. Opp. 9. Patent Owner repeats that Apple should have
known of the art when it filed its first petition. Id. Apple argues that this
factor is inapplicable because its second petition was filed for purposes of
seeking joinder with the 023 IPR. Reply 5.
We are not persuaded that this factor is irrelevant to our analysis. The
fourth General Plastic factor seeks to address a delay, if any, in filing a
second petition. As stated above with regard to the second General Plastic
factor, the lack of explanation by Apple provides no context by which to
ascertain Apple’s knowledge of the prior art asserted in the 023 IPR.
Therefore, on the record before us, we cannot determine how much time
elapsed between Apple’s knowledge of the prior art in the 023 IPR and the
filing of its second petition. Because of the lack of explanation, we conclude
that this fourth General Plastic factor weighs in favor of denying institution
of the proceeding.
5. “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”
Patent Owner and Apple argue the fourth and fifth General Plastic
factors together. Opp. 5; Reply 5. For the same reasons stated above, for
instance, Apple’s lack of explanation, we conclude that this fifth General
Plastic factor also weighs in favor of denying institution.
6. “the finite resources of the Board”
In connection with the sixth General Plastic factor, Patent Owner
argues that “it is appropriate to consider the resources of the Board in the
event Microsoft were to cease participation in the Microsoft IPR.” Opp. 9.

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Patent Owner is correct that if Microsoft and Patent Owner were to settle,
Apple would stand in as a petitioner in the joined proceeding and that the
Board would expend resources in continuing the proceeding in that event.
Id. Apple argues that this last General Plastic factor weighs against denial
of institution because the 023 IPR is already ongoing and Apple’s
involvement in an understudy role would not impact the Board’s resources.
Reply 5.
Although a joinder request is usually an efficient mechanism by which
to become a petitioner in an IPR, in this case, Apple’s understudy role
argument is not persuasive. Rather, we agree with Patent Owner that
because this is Apple’s second petition, should Microsoft settle, Apple
would stand in to continue a proceeding that would otherwise be terminated.
Joinder in this circumstance would allow Apple to continue a proceeding,
even after settlement with the primary petitioner, based on a second attempt
by Apple. On balance, we conclude that this sixth General Plastic factor
weighs in favor of denying institution of the proceeding.
7. “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”
Like the sixth General Plastic factor, the seventh factor, “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,” implicates an efficiency consideration. Because there is no
evidence or persuasive argument towards this factor, we determine this
factor’s weight is neutral.

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D. Conclusion
After a holistic review of the General Plastic factors and the
arguments presented for and against the exercise of discretionary denial, we
conclude that the majority of the factors weigh in favor of denying
institution of the proceeding. On balance and in view of the policy goals
articulated in General Plastic, we conclude that it is appropriate here to
exercise our discretion under 35 U.S.C. § 314(a). Because we decide not to
institute based on the application of the General Plastic factors, we do not
address additional arguments Patent Owner presents urging denial of the
Petition on other grounds.
IV 	DENIAL OF MOTION FOR JOINDER
As stated above, the Director may join a party to an ongoing IPR only
if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c).
Because we are exercising discretion to deny institution under § 314, we
deny Petitioner’s Motion for Joinder.
IV. 	ORDER
Accordingly, it is:
ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
denied; and
FURTHER ORDERED that the Motion for Joinder is denied.

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PETITIONER:
Larissa S. Bifano
Michael Van Handel
DLA PIPER LLP (US)
larissa.bifano@dlapiper.com
michael.vanhandel@dlapiper.com
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