Uniloc 2017 LLC

Patent Trials and Appeals Board

Sep 9, 2020

IPR2020-00448 (P.T.A.B. Sep. 9, 2020)

Trials@uspto.gov Paper 13
Tel: 571-272-7822 Date: September 9, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC,
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.
____________

IPR2020-00448
Patent 6,329,934 B1
____________

Before ROBERT J. WEINSCHENK, MONICA S. ULLAGADDI,
and SCOTT RAEVSKY, Administrative Patent Judges.

RAEVSKY, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing of
Decision Denying Institution
37 C.F.R. § 42.71(d)

IPR2020-00448
Patent 6,329,934 B1
2
I. INTRODUCTION
Google LLC (“Petitioner”) filed a Petition seeking inter partes review
of claim 3 of U.S. Patent No. 6,329,934 B1 (Ex. 1001, “the ’934 patent”).
Paper 1 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary
Response on April 23, 2020. Paper 7 (“Prelim. Resp.”). Upon consideration
of the Petition and the Preliminary Response, we exercised our discretion to
deny the Petition under 35 U.S.C. § 314(a) according to certain
considerations outlined in the Trial Practice Guide. Paper 11 (“Decision”);
Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”) 55–63.1
Petitioner asks us to reconsider our decision to exercise discretion.
Paper 12 (“Req.”). For the reasons given below, we decline to modify our
Decision.
II. LEGAL STANDARDS
When rehearing a decision on institution, we review the decision for
an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of
discretion may be indicated if a decision is based on an erroneous
interpretation of law, if a factual finding is not supported by substantial
evidence, or if the decision represents an unreasonable judgment in weighing
relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed.
Cir. 2005). The burden of showing that the Institution Decision should be
modified is on Petitioner, the party challenging the Decision. See 37 C.F.R.
§ 42.71(d) (2019). In addition, “[t]he request must specifically identify all
matters the party believes [we] misapprehended or overlooked, and the place

1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-00448
Patent 6,329,934 B1
3
where each matter was previously addressed in a motion, an opposition, or a
reply.” Id.
Under § 314(a), we have discretion to deny institution of an inter
partes review. 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)); Harmonic Inc. v. Avid
Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under
§ 314(a), “the PTO is permitted, but never compelled, to institute an IPR
proceeding”). Although “two petitions by a petitioner may be needed, . . .
this should be rare.” CTPG 59. “[M]ultiple petitions by a petitioner are not
necessary in the vast majority of cases.” Id.
III. ANALYSIS
In our Decision, we determined that “the presence of alleged
indefinite means-plus-function terms in claim 3” did not justify a second
petition. Decision 6. To the contrary, we determined that Petitioner could
have filed a single petition to address two nearly identical claims. Id. at 7.
Due to the “highly duplicative nature of these two petitions,” we determined
one petition should have been sufficient. Id. at 8.
Petitioner first contends that our Decision “rests on an overly-rigid
application of the circumstances envisioned by the Trial [Practice] Guide
governing when a second petition may be necessary.” Req. 1. According to
Petitioner, the “potentially indefinite means-plus-function language” in
claim 3 justifies filing this second Petition. Id. at 2. Petitioner contends we
applied a “bright-line rule that the filing of two or more petitions is only
justified for circumstances involving a ‘large number of asserted claims in
litigation or a priority dispute.’” Id. at 3 (quoting Decision 6).
IPR2020-00448
Patent 6,329,934 B1
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We disagree. Our Decision did not draw a bright line rule that
precludes filing two petitions when the challenged patent includes
potentially indefinite means-plus-function language. Although it is true that
we determined Petitioner did “not persuasively argue this case is analogous
to [the Trial Practice Guide’s] examples,” this was only one factor in our
Decision. Decision 6. Other factors we considered were that the two
parallel petitions are duplicative and each addresses only a single, nearly
identical claim. Id. As we explained in our Decision,
Petitioner could have filed a single petition directed to
both claims. Then, even if claim 3 had an unclear means-plus-
function term, we still could have instituted the petition if
Petitioner had met its burden on claim 1. . . . This is not the kind
of situation as in other cases where the Board has denied
institution when petitioners met their institution burden on only
a small subset of the challenged claims.
. . . .
[T]he mere fact that each petition addresses a different
claim is insufficient to justify filing two petitions.
. . . .
The highly duplicative nature of these two petitions and
the small number of claims at issue further indicates that one
petition should have been sufficient.
Id. at 7, 8. Thus, Petitioner’s argument that we applied a bright line rule to
deny the Petition overlooks the Decision’s application of multiple factors.
Petitioner also argues that the Decision will create two negative
consequences:
If the Board takes the position that potentially indefinite
means-plus-function terms cannot create a justification for two
petitions, petitioners would be placed in an impossible position:
(1) they can proceed to challenge all claims in a single petition,
but risk denial of the entire petition even though the facts compel
IPR2020-00448
Patent 6,329,934 B1
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a finding that certain claims lacking the means-plus-function
language are unpatentable; (2) they can omit a challenge to
claims containing means-plus-function language, even though
the Board may have ultimately found them amenable to
construction and unpatentable. Neither result is fair, consistent
with the purposes of the AIA, or in the public’s interest.
Id. at 7. This argument also inaccurately implies that our Decision
establishes a bright-line rule for denying parallel petitions based on
potentially indefinite means-plus-function terms. Accordingly, this
argument does not persuade us of error.2
Petitioner also contends that the second petition was necessary to
explain theories of invalidity under both its means-plus-function
construction and a plain and ordinary meaning construction. Id. at 5–6. But
Petitioner already made similar arguments using similar constructions in its
first petition, while not reaching the maximum word count. See, e.g.,
Google LLC v. Uniloc 2017 LLC, IPR2020-00447, Paper 1, 22 (arguing
“partially decoding” should be mean “variable length decoding, inverse
quantizing, and inverse discrete cosine transforming, but not motion
compensating”—similar to its means-plus-function construction here (see
Pet. 18)), 27–28 (discussing district court construction), 45–46 (applying
preferred and ordinary meaning constructions of “partially decoding”),
Certificate of Compliance (using 12,542 words). In a single petition,
Petitioner could have referred back to earlier arguments when discussing

2 Further, our Decision would not have the effects Petitioner foretells
because it is nonprecedential and therefore non-binding on other Board
panels. See PTAB Standard Operating Procedure (SOP) 2 (Rev.10),
available at http://www.uspto.gov/patents-application-process/patent-trial-
and-appeal-board/resources.
IPR2020-00448
Patent 6,329,934 B1
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similar limitations in claim 3. We remain unconvinced that it was necessary
for Petitioner to expend an entire second petition to address a separate
means-plus-function construction and theories of invalidity similar to those
addressed in the -447 IPR petition.
Petitioner further contends that the Petition neither places a substantial
and unnecessary burden on the Board and Patent Owner, nor raises fairness,
timing, and efficiency concerns because both petitions are based on the same
prior art and arguments and are limited to one challenged claim each.
Req. 4, 10. Petitioner asserts that “any additional burden on the Board and
Patent Owner would be minimal and further alleviated by coordinating trial
schedules,” including coordinating depositions and holding a consolidated
oral hearing. Id. at 8, 10. We disagree. Whenever multiple petitions are
filed, it always creates at least some additional work for the Board and
Patent Owner, even if those petitions are consolidated.
Petitioner also contends that other panels have instituted multiple
petitions “while rejecting patent owner’s argument that the grounds from the
two petitions should have been consolidated into a single petition.” Id. at 9–
10 (citing Flex Logix Tech., Inc. v. Venkat Konda, IPR2020-00260, Paper
22, 27–28 (PTAB Aug. 3, 2020); Flex Logix Tech., Inc. v. Venkat Konda,
IPR2020-00261, Paper 22, 23–24 (PTAB Aug. 3, 2020)). The cases
Petitioner relies on are inapposite because they involved several more claims
than this case. See Flex Logix, IPR2020-00260, Paper 22 (addressing claims
1, 15–18, 20–22, 32, and 47); Flex Logix, IPR2020-00261, Paper 22
(addressing claims 2–7 and 11).
Petitioner also asserts that the public interest weighs against
discretionary denial because we have already preliminarily found claim 1 is
IPR2020-00448
Patent 6,329,934 B1
7
likely unpatentable over the same art. Req. 7 n.2. The AIA was “designed
to establish a more efficient and streamlined patent system that will improve
patent quality and limit unnecessary and counterproductive litigation costs.”
CTPG 56 (quoting H.R. Rep. No. 112–98, pt. 1, at 40 (2011)). Further, as
expressed in the Trial Practice Guide, “[t]wo or more petitions filed against
the same patent at or about the same time . . . may place a substantial and
unnecessary burden on the Board and the patent owner and could raise
fairness, timing, and efficiency concerns.” CTPG 59. In addition, “multiple
petitions by a petitioner are not necessary in the vast majority of cases.” Id.
Accordingly, Petitioner’s reference to the public interest does not persuade
us that we misapprehended or overlooked any matter.
Finally, Petitioner emphasizes that no other petitioner has previously
challenged the ’934 patent. Req. 11. This is irrelevant. The Trial Practice
Guide describes “multiple petitions by a petitioner” as “not necessary in the
vast majority of cases.” CTPG 59 (emphasis added).3
IV. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated that we
misapprehended or overlooked its arguments or abused our discretion in
denying the Petition.

3 Petitioner further notes in passing that it “filed two petitions at its own
expense.” Req. 7. While we are mindful of the expense born by Petitioner
in filing this Petition, such expense alone is not a justification for instituting.
If it were, institution would be a mere formality, contrary to Congressional
intent. See, e.g., 35 U.S.C. § 314(a).
IPR2020-00448
Patent 6,329,934 B1
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ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Request for Rehearing is denied.

IPR2020-00448
Patent 6,329,934 B1
9
PETITIONER:

Naveen Modi
Joseph E. Palys
Quadeer Ahmed
Jason Heidemann
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
quadeerahmed@paulhastings.com
jasonheidemann@paulhastings.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