Apple Inc. v. Uniloc 2017 LLC

When a petitioner who previously filed an unsuccessful (denied) petition on the same patent files a follow-on "me-too" petition with a motion to join another party's instituted IPR under § 315(c), the Board applies the General Plastic factors under § 314(a) before reaching joinder, and the petitioner's offer to take an inactive "understudy" role does not make those factors inapplicable. Because § 315(c) permits joinder only of a petition that "warrants the institution of an inter partes review under section 314," discretionary denial under § 314(a) also requires denial of the joinder motion. The decision applies General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) to a joinder-seeking copycat petition; the text names no prior precedent that addressed that situation directly. A petitioner whose first petition was denied cannot count on a substantively identical petition, filed with a joinder motion in an already instituted IPR, to avoid General Plastic scrutiny. It must explain what it knew of the art, when, and why it waited. The patent owner can oppose joinder with General Plastic arguments, even where it filed no preliminary response, and can point to the risk that the follow-on petitioner would continue the proceeding if the original petitioner settles. The Board relied on Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020), for the point that § 315(c) requires two different decisions: whether the joinder applicant's petition warrants institution under § 314, and then whether to exercise discretion to join. LEGAL TEST OR STANDARD: The General Plastic non-exhaustive factors under § 314(a): 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. The Board weighed them holistically. TRIGGERING FACTS: Apple's first petition on the '088 patent was denied for failing the reasonable likelihood threshold, and rehearing was denied. Apple was then barred by § 315(b) from filing further petitions. Over a year later it filed a second, substantively identical copy of Microsoft's petition, which had been instituted as the 023 IPR, together with a joinder motion offering an understudy role. Apple gave no explanation of when it learned of the art or why it waited. Factors 1 through 6 favored denial and factor 7 was neutral. Whether Microsoft might settle, leaving Apple to continue the proceeding, was weighed under the finite-resources factor. KEY QUOTE: "This is the kind of serial attack that General Plastic was intended to address." (Paper 9, p. 4) PRIOR PRECEDENT AFFECTED: Applies General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) to a follow-on joinder petition. Notes Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), which Patent Owner cited, but decides on General Plastic. Follows Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321 (Fed. Cir. 2020). PRACTICE TIP: If you filed an earlier petition on the same patent that was denied, do not assume a copycat petition with a joinder motion avoids General Plastic. Put into the petition or joinder motion a factual explanation of when you learned of the art, why you did not raise it earlier, and the timing of the second filing. Do not rely on an understudy offer alone.