PTAB Denies Institution of Follow-On Copycat Petition, Citing General Plastic

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.