December 11, 2020
Authored and Edited by Richard Hildreth III; Amanda K. Murphy, Ph.D.
On December 4, the PTAB designated as precedential its decision in Apple Inc. v. Uniloc 2017 LLC denying both institution and a motion for joinder of a follow-on copycat petition. IPR2020-00854, Paper No. 9 (P.T.A.B. Oct. 28, 2020).
Apple first filed an IPR petition challenging U.S. Patent No. 6,467,088 in 2018. After that petition was denied, the Board instituted a separate challenge in 2020 by Microsoft against the same patent. This institution led Apple to file a second IPR asserting identical art and challenges as those contained in Microsoft’s IPR, along with a motion to join Microsoft’s IPR. Uniloc argued that the Board should exercise its discretion to deny institution under Rule 314(a) and, accordingly, deny joinder under the Fintiv and General Plastic factors. In response, Apple argued that neither the Fintiv nor General Plastic factors applied because it sought to take an “inactive or understudy role” in Microsoft’s IPR.
The Board did not find Apple’s “understudy argument” persuasive, noting that if Microsoft settled, Apple would stand in to continue a proceeding that would otherwise be terminated, with the same effect as if Apple had brought the second challenge to the patent in the first instance. Describing this as “the kind of serial attack that General Plastic was intended to address,” the Board denied both institution and the motion for joinder.
Copyright © 2020 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Conference
Boston Intellectual Property Law Association 4th Annual Symposium
April 10-11, 2024
Boston
Conference
Best Practices in Intellectual Property– A Decade of Dedication to IP Excellence
April 8-9, 2024
Tel Aviv
INCONTESTABLE® Blog
Winning the Battle but Not the War: Disclaimer Requirement Overturned, Section 2(d) Objection Upheld
March 28, 2024
INCONTESTABLE® Blog
The Federal Circuit’s Heartfelt Affirmation of Everybody’s Right to Use “Everybody vs. Racism”
March 22, 2024
Federal Circuit IP Blog
March 21, 2024
Conference
2nd Annual Forum on IP, Funding and Tech Strategies for Novel Therapeutic Modalities
March 20, 2024
Boston
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.