Uniloc 2017 LLC

Patent Trials and Appeals Board

May 12, 2020

IPR2020-00115 (P.T.A.B. May. 12, 2020)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Date: May 12, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

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

IPR2020-00115
Patent 8,407,609 B2
____________

Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

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

IPR2020-00115
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2
I. INTRODUCTION
On March 27, 2020, the Board issued an Institution Decision, which
exercised discretion under 35 U.S.C. § 314(a) to deny institution of inter
partes review of claims 1–3 of U.S. Patent No. 8,407,609 B2 (“the ’609
patent”). Paper 8 (“Decision”). On April 27, 2020, Petitioner filed a
Request for Rehearing. Paper 9 (“Request”).
For the reasons provided below, Petitioner’s Request is denied.
II. BACKGROUND
The ’609 patent is asserted against Petitioner in Uniloc 2017 LLC v.
Google LLC, 2:18-cv-00502 (E.D. Tex.) (“the Texas Litigation”). Paper 1
(“Pet.”), 63; Paper 6 (“Prelim. Resp.”), 9. According to the district court’s
Amended Docket Control Order,1 fact discovery closed on March 30, 2020,
expert discovery closed on May 11, 2020, and jury selection will begin on
August 17, 2020. Ex. 2002, 1–3. In addition, the district court has invested
time and resources in the Texas Litigation: the district court issued a
Markman order with a detailed discussion of a number of disputed claim
terms and phrases (Ex. 2001, 57–78), and the court issued that order within
two weeks of its Markman hearing (id. at 1, 78).
Petitioner’s invalidity contentions in the Texas Litigation contain the
same arguments as are presented in the Petition for independent claim 1.

1 The Amended Docket Control Order (Ex. 2002) is the only evidence in the
record regarding the schedule of the Texas Litigation. Although Petitioner
argues that the district court may modify these deadlines in the future (see
Request 8–11, 13), Petitioner neither contends that this order has since been
amended, nor identifies any prior instances of the district court materially
modifying any of these dates.
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Compare Pet. 24 (asserting anticipation based on Hayward and obviousness
based on Hayward and Middleton), with Ex. 2003, 14–15, 18 (same). The
Petition also challenges dependent claims 2 and 3 (Pet. 24), which are not
currently asserted in the Texas Litigation (Ex. 2003, 1); however, Petitioner
has expressly sought to incorporate all of the Petition’s contentions into the
Texas Litigation (id. at 5).
Despite the advanced stage of the Texas Litigation, the Petition
addressed neither the stage of, nor the contentions presented in, the Texas
Litigation. See generally Pet.; cf. Consolidated Trial Practice Guide (Nov.
2019) (“Consolidated TPG”), 58, available at https://www.uspto.gov/sites/
default/files/documents/tpgnov.pdf (noting that proceedings related to the
same patent at a district court may favor denial of a petition and inviting
parties to “address in their submissions whether any other such reasons exist
in their case . . . and whether and how such factors should be considered”
(citing, inter alia, NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-
00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (“NHK”)).2
In its Preliminary Response, Patent Owner argued that the Board’s
precedential decision in NHK was “on point” and, thus, that the Board
should exercise discretion to deny the Petition. Prelim. Resp. 10–13.
As explained in the Decision, we agreed. Specifically, we concluded
that the relevant facts were substantially the same as those presented in
NHK. Decision 6–9. The district court had scheduled trial for August

2 Although the Consolidated TPG was published after the Petition was filed,
the earlier version (available when the Petition was filed) also includes this
guidance. See July 2019 Office Trial Practice Guide Update, 84 Fed. Reg.
33,925 (July 16, 2019).
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2020—more than seven months before a final written decision would be
due—and the record included “no evidence that the district court has granted
(or would grant) a stay pending inter partes review.” Id. at 7. Further,
Petitioner “present[ed] overlapping arguments in the Texas Litigation and in
the Petition.” Id. at 8 (citing Pet. 24; Ex. 2003, 5, 14–15, 18). Although
“the Texas Litigation and the Petition [did] not involve an identical set of
claims”—as dependent claims 2 and 3 were not asserted in the Texas
Litigation, but were challenged in the Petition—we were not persuaded that
this fact alone justified a trial here, as the Board had already instituted two
other inter partes review proceedings challenging all claims of the ’609
patent. Id. at 9 (citing Sling TV, L.L.C. v. Uniloc 2017 LLC, IPR2019-
01367, Paper 7 (PTAB Feb. 4, 2020) (Institution Decision); Netflix, Inc. v.
Uniloc 2017, IPR2020-00041, Paper 10 (PTAB Mar. 25, 2020) (Institution
Decision)). For these reasons, we exercised our discretion to deny the
Petition. Id. at 10.
III. ANALYSIS
A request for rehearing “must specifically identify all matters the
party believes the Board misapprehended or overlooked, and the place where
each matter was previously addressed in a motion, an opposition, or a reply.”
37 C.F.R. § 42.71(d). “The burden of showing a decision should be
modified lies with the party challenging the decision.” Id.
“When rehearing a decision on petition, a panel will review the
decision for an abuse of discretion.” 37 C.F.R. § 42.71(c); see 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.”).
“An abuse of discretion is found if the decision: (1) is clearly unreasonable,
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arbitrary, or fanciful; (2) is based on an erroneous conclusion of law;
(3) rests on clearly erroneous fact finding; or (4) involves a record that
contains no evidence on which the Board could rationally base its decision.”
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367
(Fed. Cir. 2016).
The Request contends that the Decision applied the Board’s
precedential decision in an “unreasonable” manner and asks the Board to
“reweigh the NHK Spring factors.” Request 1. In support, Petitioner argues
that the Decision departed from prior Board decisions (id. at 2–6),
misapprehended the uncertainty surrounding a “final” decision on validity in
the Texas Litigation (id. at 6–11), and “undermine[d] Congress’ intent” (id.
at 12–15).
We are not persuaded. Petitioner does not dispute that NHK applies
and does not contend that we overlooked any relevant arguments or
evidence. Petitioner identifies (and we perceive) no place where any of the
Request’s arguments were previously presented. See generally Request; cf.
37 C.F.R. § 42.71(d) (requiring identification of “the place where each
[allegedly misapprehended] matter was previously addressed in a motion, an
opposition, or a reply”). Indeed, Petitioner made the decision not to address
NHK or the facts relevant to that analysis in its Petition. See Decision 5
(citing Pet. i, 60–65); Paper 7, 3 (finding Patent Owner’s NHK arguments to
be foreseeable). We could not have misapprehended or overlooked
something Petitioner never presented or explained.
Petitioner’s Request also fails to identify an abuse of discretion.
Petitioner does not contend that the Decision conflicts with the Board’s
guidance in the Consolidated TPG or its precedential decision in NHK.
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Rather, Petitioner asserts that the Decision “deviates” from other, non-
precedential Board decisions that also applied NHK and that, according to
Petitioner, “gave significant weight to whether a district court would address
the validity of all claims challenged in an IPR.” Request 2–3; see id. at 3–4
(identifying decisions).
We disagree. Aside from each of the decisions cited by Petitioner
being non-precedential, we do not find any inconsistency with the present
Decision. Of the five decisions cited by Petitioner, three are readily
distinguishable because no trial date had been set in the copending district
court litigation. See Resideo Techs., Inc. v. Innovation Sciences, LLC,
IPR2019-01306, Paper 19 at 11 (PTAB Jan. 27, 2020) (“That the district
court has not yet set a trial date is a significant factor distinguishing this case
from NHK Spring.”); PUMA N. Am., Inc. v. Nike, Inc., IPR2019-01043,
Paper 8 at 9 (PTAB Oct. 31, 2019); Oticon Med. AB v. Cochlear Ltd.,
IPR2019-00975, Paper 15 at 23–24 (PTAB Oct. 16, 2019). In another cited
case, the panel was persuaded not to deny institution because of significant
differences in the claim sets and in the prior art asserted in the petition and
the litigation. See Facebook, Inc. v. Blackberry Ltd., IPR2019-00899, Paper
15 at 12 (PTAB Oct. 8, 2019). Finally, in the last cited case, the district
court litigation was less advanced, and the patent owner had not argued for
discretionary denial of institution. See Uniden Am. Corp. v. Escort Inc.,
IPR2019-00724, Paper 6 at 5–9 (PTAB Sept. 17, 2019). Moreover, none of
the cited decisions involved a crucial fact present here: the challenged
patent is currently the subject of two instituted IPRs that cover all claims
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missing from the litigation.3 Our guidance explains that other proceedings
related to the patent, including those in district courts and at the Office, may
bear on the Board’s exercise of discretion. Consolidated TPG 58.4
The remainder of the Request presents various reasons why the Board
should not exercise its discretion to deny institution. See Request 6–15. But
none of these arguments were previously presented, and none are indicative
of any abuse of discretion. Rather, Petitioner merely disagrees with our
Decision and argues that we should have reached a different result. Mere
disagreement with the Board’s analysis or conclusion is not a proper basis
for rehearing.

3 Petitioner complains that it is not a party to those IPRs (Request 4–5), but
Petitioner did not seek to join either IPR, despite receiving the Decision
denying institution of the Petition more than three weeks before a motion to
join IPR2020-00041 would have been due.
4 Petitioner contends that the Decision should have evaluated the General
Plastic factors to consider these other IPRs. Request 5–6. We disagree:
The General Plastic factors . . . are not intended to represent all
situations where it may be appropriate to deny a petition. There
may be other reasons besides the “follow-on” petition context
where the “effect . . . on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability
of the Office to timely complete proceedings,” favors denying a
petition even though some claims meet the threshold standards
for institution under 35 U.S.C. §§ 314(a), and 324(a). This
includes, for example, events in other proceedings related to the
same patent, either at the Office, in district courts, or the ITC.
Consolidated TPG 58 (citations omitted; second alteration in original).
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Patent 8,407,609 B2
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IV. CONCLUSION
Consequently, Petitioner has not persuaded us that we
misapprehended or overlooked any matter or that we abused our discretion.
Accordingly, we see no reason to modify our Decision in this proceeding.
V. ORDER
Accordingly, it is:
ORDERED that Petitioner’s Request for Rehearing (Paper 9) is
denied.

IPR2020-00115
Patent 8,407,609 B2
9
PETITIONER:
Erika H. Arner
Joshua L. Goldberg
A. Grace Mills
FINNEGAN, HENDERSON, FARABOW,
GARRETT, & DUNNER LLP
erika.arner@finnegan.com
joshua.goldberg@finnegan.com
gracie.mills@finnegan.com

PATENT OWNER:
Ryan Loveless
Brett Mangrum
James Etheridge
Jeffrey Huang
ETHERIDGE LAW GROUP
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
jeff@etheridgelaw.com