Uniloc 2017 LLC

Patent Trials and Appeals Board

Oct 16, 2020

IPR2019-01584 (P.T.A.B. Oct. 16, 2020)

Trials@uspto.gov Paper 9
571-272-7822 Date: October 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2019-01584
Patent 6,519,005 B2

Before JAMESON LEE, KEVIN F. TURNER, and
THOMAS L. GIANNETTI, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge TURNER
Opinion Concurring filed by Administrative Patent Judge GIANNETTI
TURNER, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

IPR2019-01584
Patent 6,519,005 B2
2
I. INTRODUCTION
On April 23, 2020, Petitioner Google LLC filed a Request for
Rehearing (Paper 8, “Reh’g Req.”) under 37 C.F.R. § 42.71(d) of the
Board’s Decision Denying Institution of Inter Partes Review (Paper 7,
“Decision” or “Dec.”) of claims 1−3, 5, 6, 8, 39, and 41 of U.S. Patent No.
6,519,005 B2 (“the ’005 Patent”) per Petitioner’s Petition (Paper 1, “Pet.”).
The Request is denied.
II. STANDARD OF REVIEW
When rehearing a decision on institution, we do not review the merits
of the decision de novo, but instead review the decision for an abuse of
discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a
“decision was based on an erroneous conclusion of law or clearly erroneous
factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
(citations omitted). The party requesting rehearing has the burden to show
that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally,
the 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.” Id.
III. ANALYSIS
The main contention raised by the Rehearing Request is that we
overlooked “the relevant factors for consideration of discretionary denial
under binding precedent.” Reh’g Req. 1. Petitioner asserts that “the panel
majority failed to fully evaluate and address binding precedent regarding
discretionary denials involving multiple petitions under section 314(a),” and
if properly addressed, “[we] would have concluded that the relevant factors
IPR2019-01584
Patent 6,519,005 B2
3
weigh in favor of institution.” Id. at 2. In addition, Petitioner asserts that
our analysis is “at odds with the AIA statutory scheme and Congressional
intent behind it.” Id. at 3.
Petitioner’s first assertion is that we overlooked certain precedential
Board decisions, namely General Plastic Indus. Co., Ltd. v. Canon
Kabushiki Kaisha, IPR2016-01357, Paper No. 19 (Sep. 6, 2017) (designated
precedential in relevant part) and Valve Corp. v. Elec.Scripting Prods., Inc.,
IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential). Reh’g Req.
3. This is a curious assertion, given that General Plastic was specifically
discussed (Dec. 12−13), and that the dissent raised Valve Corp. only with
respect to whether a “significant relationship” exists between different
petitioners. See Dec. 18. We are not persuaded that we overlooked either
precedential decision, although we acknowledge the dissent’s view that
“recent Board jurisprudence on discretionary denials is not supportive of the
panel majority’s denial here.” In fact, the dissent’s assertion illustrates that
the full panel considered Valve Corp., although it was not considered to be
in favor of Petitioner, which we discuss below.
Additionally, Petitioner asserts that “[n]othing in the Consolidated
Trial Practice Guide (‘CTPG’) (which the majority cites to for the
proposition that the General Plastic factors are non-exclusive), Dec. at 12,
permits the Board to ignore binding precedent involving similar facts or
issues.” Reh’g Req. 3−4. Petitioner also asserts that “[t]he panel majority
appears to presume that the CTPG gives the Board a broad license to apply
discretion however it sees fit in a given situation.” Id. at 4. We disagree that
we ignored binding precedent in favor of some “license” supplied by the
CTPG; rather, the majority cited to the CTPG for the simple proposition that
the General Plastic factors are non-exclusive. Given that the majority
IPR2019-01584
Patent 6,519,005 B2
4
opinion considered and discussed those same General Plastic factors (Dec.
12−13), we cannot agree that we ignored any precedential decisions of the
Board.
Petitioner continues that “reasoned balancing of the General Plastic
factors favors institution.” Reh’g Req. 5 (citing Pet. 72−76). Petitioner
asserts that the first factor “weighs heavily in favor of institution given the
lack of any relationship between petitioners in connection with the
challenged claims,” and the second factor “is inapplicable, given Google did
not file any previous petition.” Id. at 6. Petitioner further asserts that the
third factor “also weighs heavily in favor of institution,” because Petitioner
could not have used the prior proceedings to “road map” its grounds because
of the early stages of those proceedings. Petitioner argues that it explained
the “inapplicability of the fourth and fifth General Plastic factors” because it
did not file the earlier petitions and there was no coordination with the initial
petitioners. Id. at 7−8. Petitioner notes “[t]he majority fails to cite to any
precedential authority allowing it to consider a timeframe based on when
petitioner was ‘sued’ for infringement.” Id. at 8. Petitioner also asserts that
“the majority does not provide a reasoned basis” for the sixth factor
weighing against institution, and that the seventh was argued by Petitioner to
favor institution. Id. at 9. Lastly, Petitioner alleges that “the majority
decision simply does not properly balance the General Plastics factors.” Id.
As an initial point, we acknowledge that the institution decision does
not explicitly call out the General Plastic factors individually, but rather
discusses the factors more generally. See Dec. 12−16. As acknowledged in
the majority opinion, “this is the first petition filed against the ’005 Patent by
Petitioner” (Dec. 13), such that we agreed that the first factor weighed in
favor of institution. With respect to the second factor, Petitioner suggests
IPR2019-01584
Patent 6,519,005 B2
5
that inquiries relating to the similarity between prior art cited across multiple
petitions are only relevant if Petitioner was a party to the prior proceedings,
or had a relationship with the prior petitioners. Reh’g Req. 7. But a review
of the cited precedential decision does not reflect Petitioner’s suggestion.
See General Plastic, Paper No. 19 at 15−19 (“Our intent in formulating the
factors was to take undue inequities and prejudices to Patent Owner into
account.”). General Plastic does not proscribe panels of the Board from
considering whether a subsequent petitioner knew of the prior art cited in the
subsequent petition at the time of filing of the first petition, per the second
factor. Similarly, we are not barred, under General Plastic, from
considering the length of time that elapsed between when a petitioner
learned of the art and when the petition, based on that art, was filed, or
whether petitioner provides an adequate explanation for the time elapsed
between the filings of multiple petitions, per the fourth and fifth factors.
Additionally, we are not persuaded that the factors enumerated in
General Plastic, as viewed through the lens of Valve Corp., must all be
limited by any possible relationship between the multiple petitioners.
Although the discussion of the first factor in Valve Corp. makes clear that
“any relationship between those petitioners when weighing the General
Plastic factors” must be considered, the remaining factors take into account
the knowledge of the second petitioner irrespective of a specific relationship.
See Valve Corp., Paper 11 at 9−15. As such, the relationship between the
different petitioners certainly has some bearing on what the second
petitioner knew, when they knew it, and when they acted upon it, but the
consideration of the second through seventh factors does not require a
showing of a specific relationship between the petitioners to consider those
factors.
IPR2019-01584
Patent 6,519,005 B2
6
As detailed in the majority opinion, all of those factors were
considered. See Dec. 13−15. The majority determined that:
although the grounds of unpatentability provided in the instant
Petition are not identical to the grounds provided in the petitions
of the Unified and Sling TV IPRs, we are not persuaded that they
are distinctive; nor are we persuaded that the instant grounds are
not cumulative with respect to the grounds provided in the
petitions of the Unified and Sling TV IPRs.
Dec. 15. We further considered the resources of the Board, as well as the
time constraints of issuing a final determination, per the sixth and seventh
factors, to find that “[o]verall, a third trial under these circumstances it is not
an efficient use of the Board’s resources.” Id.
As such, we appreciate that Petitioner does not agree with the weight
and consideration that we gave to the General Plastic factors in the
institution decision, but we do not agree that we failed to properly apply the
binding precedential decisions, namely General Plastic and Valve Corp.,
regarding its follow-on Petition.
Petitioner also argues that the majority opinion nullifies the statutory
one-year bar and improperly binds Petitioner to the positions of another
petitioner. Reh’g Req. 10−15. Petitioner continues that Patent Owner
served Petitioner and prior petitioner Sling TV less than a week apart, and
that “Sling TV’s choice to self-expedite should not count against Google’s
right to fashion a challenge of its own at a later time.” Id. at 10−11.
Petitioner further argues that requiring it to file prior to its co-defendants
removes the one-year safe harbor for accused infringers to challenge
validity, per 35 U.S.C. § 315(b). Id. at 11. Petitioner also argues that the
panel majority’s reasoning requires that a petitioner must be the first
petitioner to file to have its petition properly considered, and that such
IPR2019-01584
Patent 6,519,005 B2
7
“jurisprudence certainly cannot be consistent with Congressional intent
behind the AIA and § 315(b) in particular.” Id. at 12.
We note that all of the Petitioner’s arguments raised could also be
raised by a serial petitioner that files multiple petitions within the statutory
one-year period guaranteed by 35 U.S.C. § 315(b). Such arguments have
been made by serial petitioners that discovered “new” art that shed light on
the patentability of claims already under review. That is why the decisions
discussed above, namely General Plastic and Valve Corp., take into account
what subsequent petitioners knew and how and when they arrived at that
knowledge, recognizing the goals of the AIA, but also “recognize[ing] the
potential for abuse of the review process by repeated attacks on patents.”
General Plastic, Paper No. 19 at 16−17. Just as those decisions are not
objectively viewed as eliminating the one-year bar under § 315(b), we are
not persuaded that limiting overlapping petitions by multiple petitioners
“nullifies the statutory one-year bar.”
Petitioner also argues that “[t]he error in the majority’s analysis cannot
be salvaged by its assertion that Google’s prior art is similar to that at issue in
the Unified and Sling TV IPRs.” Reh’g Req. 13. We note, however, our
consideration of the similarities between the prior art and the challenges
asserts in the various petitions was made in our determination as to whether
“an additional examination of the challenged claims is warranted.” Dec. 15.
We are not persuaded of error for the majority of the panel to consider whether
it is an efficient use of the Board’s resources to reconsider essentially the same
arguments and evidence that are already before the Board.
Petitioner also asserts that the majority opinion asserted that Petitioner
should have sought joinder to the earlier petitions. Reh’g Req. 10. To be
clear, the majority was not asserting that joinder was the sole option of
IPR2019-01584
Patent 6,519,005 B2
8
Petitioner, but merely that joinder would have “mitigate[d] efficiency
concerns relating to a third challenge to this patent.” Dec. 13. By seeking
such an avenue, Petitioner would not have risked having no “fair chance to
challenge the asserted patent,” as Petitioner asserts. Reh’g Req. 14.
Petitioner does not persuade us that we overlooked or misapprehended
any matter, or sufficiently show that not instituting an inter partes review of
claims 1−3, 5, 6, 8, 39, and 41 of the ’005 Patent was an abuse of discretion.
IV. ORDER
For the reasons given, it is:
ORDERED that Petitioner’s Request for Rehearing is denied.
Trials@uspto.gov Paper 9
571-272-7822 Date: October 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2019-01584
Patent 6,519,005 B2
____________

Before JAMESON LEE, KEVIN F. TURNER, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge, concurring in the result only.
I respectfully concur in the result only.

IPR2019-01584
Patent 6,519,005 B2
2
For PETITIONER:
Naveen Modi
Joseph E. Palys
Quadeer Ahmed
PAUL HASTINGS L.L.P.
naveenmodi@paulhastings.com
josephpalys@paulhastings.com
quadeerahmed@paulhastings.com
PH-Google-Uniloc-IPR@paulhastings.com

For 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

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