`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`______________________
`_
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____
`______________________
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`Agilysys, Inc. et al.
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`Petitioner
`
`v.
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`Ameranth, Inc.
`
`Patent Owner
`_________________________
`
`______________________
`
`Petition No. CBM2014-00015
`Patent No. 6,384,850
`_________________________
`______________________
`
`
`
`PETITIONER’S REPLY TO AMERANTH’S OPPOSITION TO
`PETITIONER’S MOTION TO RECONSTITUTE PETITIONER TO
`EXCLUDE APPLE INC.
`UNDER 37 C.F.R. § 42.20
`
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`WEST\247385247.1
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`Petition No. CBM2014-00015
`Patent No. 6,384,850
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`I.
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`INTRODUCTION
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`In its Opposition to Petitioner’s Motion to Reconstitute (Paper 17),
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`Ameranth, Inc. (“Ameranth”) neither disputes that Petitioner was unaware of the
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`Board’s requirement of proceeding with a single lead counsel nor identifies any
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`reason why Petitioner should have been aware of this requirement. Additionaly,
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`Ameranth’s claimed procedural barriers to granting the relief requested in the
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`Motion to Reconsitute (Paper 16) are illusory. In arguing such alleged barriers,
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`Ameranth ignores provisions in the rules that both allow the Board to determine a
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`proper course of conduct for situations not specifically covered in the rules and
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`also give the Board discretion to waive or suspend any rule when appropriate.
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`Moreover, Ameranth’s claims of prejudice as a result of being “required” to file
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`two sets of reponses to identical petitions filed by Apple are likewise illustory
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`because Ameranth does not explain why its preliminary responses could not also
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`be identical. To the contrary, the Board can put procedures in place to prevent any
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`undue prejudice to the patent owner in joined proceedings. Meanwhile,
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`Ameranth’s proposal only seeks to impose unnecessary estoppel on Apple Inc.
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`(“Apple”) and preclude Apple from proceeding with a counsel of its own choosing.
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`Therefore, Petitioner respectfully requests the Board grant its Motion and permit
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`Apple to file identical petitions and requests to join these proceedings.
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`Petition No. CBM2014-00015
`Patent No. 6,384,850
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`II. ARGUMENT
`A. There Is No Procedural Barrier to Granting Petitioner’s Motion.
`Ameranth’s Opposition relies on a perceived lack of a provision in the rules
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`governing this Covered Business Method (“CBM”) review that would allow the
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`Board to grant the relief requested in the Motion to Reconstitute Petitioner.
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`However, this argument ignores 37 C.F.R. § 42.5(a), which provides that the
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`“Board may determine a proper course of conduct in a proceeding for any situation
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`not specifically covered by this part,” and 37 C.F.R. § 42.5(b), which provides that
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`the “Board may waive or suspend a requirement of parts 1, 41, and 42 and may
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`place conditions on the waiver or suspension.” Thus, this clear language in the
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`rules provides a sound basis for the relief requested in Petitioner’s Motion.
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`B. Ameranth Does Not Dispute That Petitioner Did Not Know of the
`Single-Counsel Requirement.
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`Importantly, Ameranth does not dispute that Petitioner, including Apple, did
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`not know of the requirement for a single lead counsel to represent all parties to the
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`original Petitions. Additionally, Ameranth does not argue or cite to any authority
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`for the proposition that Petitioner should have known of such requirement prior to
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`filing the original Petitions. Therefore, particularly in light of the prior precedent
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`in IPR2013-00026, in which multiple lead counsel for multiple petitioners were
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`permitted, the single-counsel requirement was contrary to Petitioner’s good-faith
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`expectations. Under these circumstances, Petitioner respectfully submits that
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`Petition No. CBM2014-00015
`Patent No. 6,384,850
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`permitting Apple to proceed with its own counsel as Apple would have proceeded
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`had it known of the single counsel requirement is reasonable.
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`C.
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`Permitting Petitioner to Reconstitute to Exclude Apple With
`Later Joinder Will Not Prejudice Ameranth.
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`In its Opposition, instead of pointing to actual injury that would allegedly
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`result from Petitioner’s request, Ameranth merely hypothesizes potential harm
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`should the Board proceed in a manner other than that requested by Petitioner.
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`However, the potential harms identified by Ameranth are illusory.
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`First, Ameranth’s arguments on page 2 of its Opposition as to the potential
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`effect that granting Petitioner’s Motion may have on future parties ignores the fact
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`that such future parties will be on notice of the single counsel requirement in view
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`of the Board’s prior order and its decision on this Motion. Ameranth’s arguments
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`also ignore the fact that the relief being sought by Petitioner is to allow Apple to
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`file identical petitions and motions to join this proceeding—not to walk away from
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`it.
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`Second, Ameranth’s argument on page 3 of its Opposition regarding the
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`need for it to “respond to two separate sets” of papers is likewise illusory. No
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`obligation exists requiring Ameranth to file any preliminary responses, and in view
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`of the fact that the requested relief seeks to allow Apple to file identical petitions,
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`the burden of filing identical responses if Ameranth so chooses is negligible.
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`Petition No. CBM2014-00015
`Patent No. 6,384,850
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`Finally, the potential for prejudice with respect to proceedings after
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`Ameranth’s preliminary responses is also negligible. In similar cases where the
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`Board has granted joinder motions, it has instituted procedural safeguards to
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`prevent such joined proceedings from becoming overly cumbersome or prejudicial.
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`For example, the Board has mandated that joined petitioners work together to
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`allocate between them the time in depositions and the oral hearings usually allotted
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`to a single petitioner. See Dell Inc. v. Network-1 Security Solns., Inc., IPR2013-
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`00385 (Paper 17); Motorola Mobility LLC v. Softview LLC, IPR2013-00256
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`(Paper 10). The Board has further required the joined petitioners to file
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`consolidated papers with the second petitioner (which in this case would be Apple)
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`only being allowed to file seven additional pages of briefing in such limited
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`situations where it disagreed with the first petitioner. See id. Petitioner seeks
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`nothing more here. Therefore, as the Board has previously held, Ameranth’s claim
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`of prejudice is without merit.
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`D. Ameranth’s Proposal Will Unduly Prejudice Apple.
`As discussed in Petitioner’s Motion, entering an adverse judgment against
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`Apple would result in substantial prejudice to Apple. On the other hand, granting
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`Petitioner’s Motion will result in no real prejudice to Ameranth. In reality, such a
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`scenario will leave Ameranth in no worse position that it is now. Coupled with the
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`fact that Petitioner’s Motion was the result of unexpected developments in this
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`Petition No. CBM2014-00015
`Patent No. 6,384,850
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`CBM review, Ameranth’s proposed prejudicial solution should be rejected and
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`Petitioner’s Motion should be granted.
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`III. CONCLUSION
`For the reasons discussed above, Petitioner’s Motion to Reconstitute
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`
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`Petitioner to Exclude Apple Inc. should be granted and Apple should be permitted
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`to file identical petitions accompanied by joinder motions.
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`Respectfully Submitted,
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`
`
`
`
`
`/s/ Richard S. Zembek
`Richard S. Zembek
`Reg. No. 43,306
`
`Fulbright & Jaworski L.L.P.
`1301 McKinney, Suite 5100
`Houston, Texas 77010
`Tel: 713-651-5151
`Fax: 713-651-5246
`richard.zembek@nortonrosefulbright.com
`
`Gilbert A. Greene
`Reg. No. 48,366
`FULBRIGHT & JAWORSKI LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
`Tel: 512.474.5201
`Fax: 512.536.4598
`bert.greene@nortonrosefulbright.com
`
`Attorneys for Petitioner
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`Petition No. CBM2014-00015
`Patent No. 6,384,850
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)
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`I certify that a copy of the foregoing PETITIONER’S REPLY TO
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`
`
`
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`AMERANTH’S OPPOSITION
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`TO
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`PETITIONER’S MOTION
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`TO
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`RECONSTITUTE PETITIONER TO EXCLUDE APPLE INC. UNDER 37 C.F.R.
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`§ 42.20 was served on March 21, 2014 by causing it to be sent by email to counsel
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`for the Patent Owner at the following email addresses:
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`John W. Osborne
`OSBORNE LAW LLC
`Email: josborne@osborneipl.com
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`Michael D. Fabiano
`FABIANO LAW FIRM, P.C.
`Email: mdfabiano@fabianolawfirm.com
`
`
`
`
`/s/ Richard S. Zembek
`Richard S. Zembek
`Reg. No. 43,306
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`
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`WEST\247385247.1
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