Uniloc 2017 LLC

Patent Trials and Appeals Board

Jun 18, 2020

IPR2020-00420 (P.T.A.B. Jun. 18, 2020)

Trials@uspto.gov Paper 7
571-272-7822 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

IPR2020-00420
Patent 6,868,079 B1
2
I. INTRODUCTION
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).
A. Related Matters
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.
B. The ’079 Patent
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.
IPR2020-00420
Patent 6,868,079 B1
3
(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.

IPR2020-00420
Patent 6,868,079 B1
4
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.
C. Illustrative Claims
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.”
IPR2020-00420
Patent 6,868,079 B1
5
[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
D. Asserted Grounds of Unpatentability
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.
IPR2020-00420
Patent 6,868,079 B1
6
Claims Challenged 35 U.S.C. § References
1, 5, 7, 17 103(a)5 Merakos,6 Kay,7 Alamouti8
3, 4 103(a) Merakos, Kay, Alamouti, Dent9
2 103(a) 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”).
IPR2020-00420
Patent 6,868,079 B1
7
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
IPR2020-00420
Patent 6,868,079 B1
8
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
IPR2020-00420
Patent 6,868,079 B1
9
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
IPR2020-00420
Patent 6,868,079 B1
10
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.
IPR2020-00420
Patent 6,868,079 B1
11
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.
IPR2020-00420
Patent 6,868,079 B1
12
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
IPR2020-00420
Patent 6,868,079 B1
13
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.
IPR2020-00420
Patent 6,868,079 B1
14
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.
IPR2020-00420
Patent 6,868,079 B1
15
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
IPR2020-00420
Patent 6,868,079 B1
16
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.
IPR2020-00420
Patent 6,868,079 B1
17
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