Paper No. __________
`Filed: April 10, 2014
`
`Filed on behalf of: Trulia, Inc.
`By: Michael T. Rosato
`Jennifer J. Schmidt
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2529
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`Email: jschmidt@wsgr.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`TRULIA, INC.
`Petitioner
`
`v.
`
`ZILLOW, INC.
`Patent Owner
`
`_____________________________
`
`CBM2014-00115
`Patent No. 7,970,674
`
`_____________________________
`
`PETITIONER’S MOTION
`FOR JOINDER UNDER 37 C.F.R. § 42.222
`
`
`Filed: April 10, 2014
`
`Filed on behalf of: Trulia, Inc.
`By: Michael T. Rosato
`Jennifer J. Schmidt
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2529
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`Email: jschmidt@wsgr.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`TRULIA, INC.
`Petitioner
`
`v.
`
`ZILLOW, INC.
`Patent Owner
`
`_____________________________
`
`CBM2014-00115
`Patent No. 7,970,674
`
`_____________________________
`
`PETITIONER’S MOTION
`FOR JOINDER UNDER 37 C.F.R. § 42.222
`
`
`
`RELIEF REQUESTED
`Petitioner Trulia, Inc. (“Trulia”) hereby moves for joinder of (A) the Petition
`for Covered Business Method Review of claims 2, 5, 15-24 and 40 of U.S. Patent
`No. 7,970,674 (the “’674” Patent”) filed on even date herewith and (B) the
`instituted Covered Business Method Review styled Trulia, Inc. v. Zillow, Inc.,
`Case No. CBM2013-00056.
`Joinder is not opposed by the Patent Owner.
`
`STATEMENT OF MATERIAL FACTS
`On September 11, 2013, Trulia filed a Petition for Covered Business
`1.
`Method Patent Review requesting review of claims 2, 5, 15-25 and 40 of the ’674
`Patent.
`On March 10, 2014, the Board issued a decision instituting trial on
`2.
`claims 2, 5, 15-25 and 40 in CBM2013-00056. CBM2013-00056, PN 13
`(“CBM2013-00056 Decision”).
`3.
`Some of the grounds instituted for trial are based on prior art reference
`or references which are identified in the CBM2013-00056 Decision as prior art
`under 35 U.S.C. §102 (e). CBM2013-00056 Decision, PN 13, p. 34.
`4.
`In particular, the CBM2013-00056 Decision identifies, as an instituted
`ground, claims 2, 5, 15-18, and 40 under 35 U.S.C. § 102(e) as anticipated by
`Foster. Id.
`The CBM2013-00056 Decision also identifies, as an instituted
`5.
`ground, claims 19-24 under 35 U.S.C. § 103 as unpatentable over Foster, Keyes,
`and Calhoun. Id.
`
`Page 2 of 8
`
`
`
`The CBM2013-00056 Decision also identifies, as an instituted
`6.
`ground, claims 2, 5, and 15-18 under 35 U.S.C. § 102(e) as anticipated by Lamont.
`Id.
`
`The CBM2013-00056 Decision also identifies, as an instituted
`7.
`ground, claims 19 and 21-24 under 35 U.S.C. § 103 as unpatentable over Lamont,
`Foster, Keyes, and Calhoun. Id.
`8.
`The CBM2013-00056 Decision also states the following: “Petitioner
`asserts that claims 2, 3, 15-18, 20, 25, and 40 of the ‘674 patent are unpatentable
`under 35 U.S.C. § 103 as obvious over Lamont and Foster. Pet. 69-74. For claims
`2, 5, 15-18, 20, and 40, this ground is redundant in light of the grounds for which
`we institute review of the same claims.” Id. at p. 33.
`9.
`On April 1, 2014, an initial
`telephone conference call was held
`between respective counsel for the parties and Judges Lee, Cocks, and Kim. As
`part of the discussion, Petitioner sought to make of record corresponding published
`patent applications of Patent 7,130,810 (“Foster”), Patent 7,120,599 (“Keyes”), and
`Patent 7,219,078 (“Lamont”). A corresponding Order was issued on April 7, 2014
`(CBM2013-00056, PN 18).
`10. On April 7, 2014, a telephone conference call was held between
`respective counsel for the parties and Judges Lee, Cocks, and Kim. The subject
`matter of the call was the grounds instituted for trial in the CBM2013-00056
`proceeding, that are based on 35 U.S.C. § 102(e) or 35 U.S.C. § 102(e)/103. A
`corresponding Board Order was issued on April 10, 2014. (CBM2013-00056, PN
`19).
`
`Specifically, the prior art references discussed were Patent 7,130,810
`11.
`(Ex. 1006); Patent 7,120,599 (“Keyes”)
`(Ex. 1007); and Patent
`(“Foster”)
`7,219,078 (“Lamont”) (Ex. 1009).
`
`Page 3 of 8
`
`
`
`the corresponding published application is US Pub.
`
`12. Counsel for the Petitioner pointed out that for each of Foster, Keyes,
`and Lamont, there is a corresponding published application with identical content,
`which can serve as prior art under 35 U.S.C. § 102(b).
`13.
`Those publications were identified in the petition, as well as in the
`CBM2013-00056 Decision (p. 5-6).
`14.
`For Foster,
`the corresponding published application is US Pub.
`2004/0073508 (Ex. 1013).
`15.
`For Keyes,
`2001/0044766 (Ex. 1014).
`16.
`For Lamont, the corresponding published application is US Pub.
`2003/0046099 (Ex. 1015).
`17. During the April 7, 2014 conference call, the Board indicated that if
`the parties both desire to replace the grounds based on Foster, Keyes, and Lamont
`with grounds based on the published applications, and have the new grounds
`included in the CBM2013-00056 trial, the Petitioner can file another petition,
`including only prior art grounds based in whole or in part on the publications
`corresponding to Foster, Keyes, and Lamont that are identical in wording, but for
`the identification of references,
`to those grounds instituted for trial
`in the
`CBM2013-00056 proceeding that are based in whole or in part on Foster, Keyes,
`and Lamont. (CBM2013-00056, PN 19).
`18.
`The Board further indicated that, together with the filing of such a
`petition, Petitioner would file a request for joinder for the CBM2013-00056
`proceeding and indicate that joinder is not opposed by Patent Owner. (CBM2013-
`00056, PN 19).
`19.
`The Board further indicated the Board could institute trial on the
`grounds based on the corresponding publications, which substantively would be
`the same as the grounds the Board instituted in the CBM2013-00056 proceeding
`
`Page 4 of 8
`
`
`
`based on Foster, Keyes, and Lamont and then have the new proceeding joined with
`the CBM2013-00056 proceeding. (CBM2013-00056, PN 19).
`20.
`The Board indicated that such a course of action would be considered
`if both parties desire it. (CBM2013-00056, PN 19).
`21. On April 10, 2014, a conference call was held between respective
`counsel for the parties and Judges Lee, Cocks, and Kim.
`22. During the April 10, 2014 conference call, parties informed the Board
`that Petitioner and Patent Owner had conferred and agreed to pursue joinder in the
`manner suggested by the Board.
`23.
`The Patent Owner indicated that joinder would not be opposed by the
`Patent Owner, and that Patent Owner would not file a preliminary response to the
`joinder petition.
`
`GOVERNING RULE(S)
`§ 42.222 Multiple Proceedings and Joinder
`(b) Request for Joinder. Joinder may be requested by a patent owner or
`petitioner. Any request for joinder must be filed, as a motion under § 42.22, no
`later than one month after the institution date of any post-grant review for which
`joinder is requested.
`
`DISCUSSION
`This motion is made within the one month of the date the trial in CBM2013-
`00056 was instituted, as required by § 42.222(b). Trial was instituted on March 10,
`2014, and the instant motion has been filed on or before April 10, 2014.
`The present petition identifies published applications to Foster, Keyes, and
`Lamont corresponding to the Foster, Keyes, and Lamont patents identified in
`CBM2013-00056. For Foster, the corresponding published application is US Pub.
`2004/0073508 (Ex. 1013). For Keyes, the corresponding published application is
`
`Page 5 of 8
`
`
`
`US Pub. 2001/0044766 (Ex. 1014). For Lamont, the corresponding published
`application is US Pub. 2003/0046099 (Ex. 1015).
`Pursuant to the discussions between the parties and the Board in conference
`calls occurring on April 1, 2014, April 7, 2014 and April 10, 2014, the parties both
`desire to replace the grounds based on Foster, Keyes, and Lamont with grounds
`based on the published applications, and have the new grounds included in the
`CBM2013-00056 trial. Accordingly, Petitioner has filed concurrently with this
`request for joinder, a petition including the prior art grounds based in whole or in
`part on the publications corresponding to Foster, Keyes, and Lamont that are
`identical in wording, but for the identification of references, to those grounds
`instituted for trial in the CBM2013-00056 proceeding that are based in whole or in
`part on Foster, Keyes, and Lamont.
`As such, it is requested that the Board institute trial on the grounds based on
`the corresponding publications, which substantively would be the same as the
`grounds the Board instituted in the CBM2013-00056 based on Foster, Keyes, and
`Lamont and then have the new proceeding joined with the CBM2013-00056
`proceeding.
`The Patent Owner has indicated that joinder would not be opposed by the
`Patent Owner, and that Patent Owner would not file a preliminary response to the
`joinder petition.
`Because joinder of the second petition to CBM2013-00056 would not cause
`any undue prejudice or hardship to the Patent Owner, and because the interests of
`efficiency strongly favor joinder, the second petition should be joined to
`CBM2013-00056 under § 42.222.
`
`Page 6 of 8
`
`
`
`Respectfully submitted,
`
`Date:
`
`April 10, 2014
`
`/Michael T. Rosato/
`
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2529
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`Email: jschmidt@wsgr.com
`
`Page 7 of 8
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that I caused to be served a true and correct copy of the
`
`foregoing Petitioner’s Motion for Joinder under 37 C.F.R. § 42.22, on this 10th day
`
`of April, 2014, on the Patent Owner at the correspondence address of the Patent
`
`Owner as follows:
`
`Ramsey M. Al-Salam
`Steven Lawrenz
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4800
`Seattle, WA 98101-3099
`Phone: 206.359.6385
`Fax: 206.359.7385
`
`Respectfully submitted,
`
`Date:
`
`April 10, 2014
`
`/Michael T. Rosato/
`
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2529
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`Email: jschmidt@wsgr.com
`
`Page 8 of 8
`
`
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