Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
` Paper 14
`
`
` Entered: September 11, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00160
`Patent 7,774,280 B2
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 324(a), 37 C.F.R. §§ 42.208 and 42.222
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
` Paper 14
`
`
` Entered: September 11, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00160
`Patent 7,774,280 B2
`
`
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 324(a), 37 C.F.R. §§ 42.208 and 42.222
`
`
`
`
`
`
`
`CBM2015-00160
`Patent 7,774,280 B2
`
`I. INTRODUCTION
`On July 17, 2015, Petitioner, Apple Inc. (“Apple”), filed a Petition
`requesting a review under the transitional program for covered business
`method patents of claims 1, 5, 11, 12, and 22 of U.S. Patent No. 7,774,280
`B2 (“the ’280 patent,” Ex. 1001). Paper 1 (“Pet.”). Apple filed its Petition
`along with a Motion for Joinder requesting that we join Apple as a party
`with Google Inc. v. ContentGuard Holdings, Inc., Case CBM2015-00040
`(“Google CBM”). Paper 2 (“Apple Mot.”).
`We previously instituted a covered business method patent review in
`the Google CBM on June 24, 2015, only as to claims 1, 5, and 11 of the ’280
`patent. See Google CBM, Paper 9 (“Google CBM Dec. to Inst.”). The
`Petition filed in this proceeding is essentially the same as the Petition filed in
`the Google CBM. Compare Google CBM, Paper 1, with Pet. Apple,
`however, represents that is willing to limit the asserted grounds of
`unpatentability (“grounds”) in this proceeding to only those grounds that we
`already determined satisfy the “more likely than not” threshold standard for
`institution in the Google CBM. Apple Mot. 6; Google CBM Dec. to Inst.
`43.
`
`Patent Owner, ContentGuard Holdings, Inc. (“ContentGuard”), filed a
`Response to Apple’s Motion for Joinder. Paper 6 (“ContentGuard Resp.”).
`In its Response, ContentGuard represents that is does not oppose joining this
`proceeding to the Google CBM subject to certain conditions. ContentGuard
`Resp. 1. ContentGuard also represents that, if we grant Apple’s Motion for
`Joinder, it is willing to waive its right to file a Preliminary Response in this
`proceeding. Id.
`
`
`
`2
`
`
`
`CBM2015-00160
`Patent 7,774,280 B2
`We have jurisdiction under 35 U.S.C. § 324.1 For the reasons
`discussed below, we institute a covered business method patent review only
`as to claims 1, 5, and 11 of the ’280 patent, and only based on the same
`grounds instituted in the Google CBM. We also grant Apple’s Motion for
`Joinder.
`
`
`II. INSTITUTION OF COVERED BUSINESS METHOD
`PATENT REVIEW
`In the Google CBM, we instituted a covered business method patent
`review only as to claims 1, 5, and 11 of the ’280 patent based on the
`following grounds: (1) claims 1, 5, and 11 as being anticipated under
`35 U.S.C. § 102(b) by Stefik2; and (2) claims 1, 5, and 11 as being
`unpatentable under 35 U.S.C. § 103(a) over the combination of Stefik and
`the knowledge of one of ordinary skill in the art. Google CBM Dec. to Inst.
`30–43. As we indicated previously, although the Petition filed in this
`proceeding is essentially the same as the Petition filed in the Google CBM,
`Apple is willing to limit the asserted grounds in this proceeding to only
`those grounds that we already determined satisfy the “more likely than not”
`threshold standard for institution in the Google CBM. Apple Mot. 6; Google
`CBM Dec. to Inst. 43.
`
`
`1 See Section 18(a)(1) of the Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284, 329 (2011) (“AIA”), which provides that the
`transitional program for covered business method patents will be regarded as
`a post-grant review under Chapter 32 of Title 35 of the United States Code,
`and will employ the standards and procedures of a post-grant review, subject
`to certain exceptions.
`2 U.S. Patent No. 5,634,012, filed Nov. 23, 1994, issued May 27, 1997
`(Ex. 1002, “Stefik”).
`
`
`
`3
`
`
`
`CBM2015-00160
`Patent 7,774,280 B2
`As we explain below, we grant Apple’s Motion for Joinder. Because
`we are granting Apple’s Motion for Joinder, ContentGuard waives its right
`to file a Preliminary Response in this proceeding. See ContentGuard Resp. 1
`(“ContentGuard hereby waives its right to file a Preliminary Response in this
`proceeding, while reserving its right to do so if joinder is denied.”).
`Consequently, we conclude that the information presented in the Petition
`establishes that claims 1, 5, and 11 of the ’280 patent are more likely than
`not unpatentable under §§ 102(b) and 103(a). We, however, determine that
`the information presented in the Petition does not establish that claims 12
`and 22 are more likely than not unpatentable. Pursuant to 35 U.S.C. § 324
`and § 18(a) of AIA, we institute a covered business method patent review
`only as to claims 1, 5, and 11 of the ’280 patent, and only based on the same
`grounds instituted in the Google CBM.
`
`
`III. GRANTING APPLE’S MOTION FOR JOINDER
`Based on authority delegated to us by the Director, we have discretion
`to join a covered business method patent review with another covered
`business method patent review under 35 U.S.C. § 325(c). The regulatory
`provisions governing covered business method patent review proceedings
`address the appropriate timeframe for filing a motion for joinder. Section
`42.222(b) of Title 37 of the Code of Federal Regulations provides, in
`relevant part, “[a]ny 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.”
`
`The Petition and the accompanying Motion for Joinder were both
`accorded filing dates of July 17, 2015. See Paper 4, 1. As such, Apple’s
`Motion for Joinder was filed timely because joinder was requested no later
`4
`
`
`
`
`
`CBM2015-00160
`Patent 7,774,280 B2
`than one month after June 24, 2015—the institution date of the Google
`CBM.
`
`In its Motion for Joinder, Apple contends that joinder between this
`proceeding and the Google CBM is appropriate because both proceedings
`involve the same patent, the same prior art reference, the same expert
`declaration, and the same arguments and rationales. Apple Mot. 5. In other
`words, Apple asserts that the Petition and supporting evidence filed in this
`proceeding does not raise new substantive or procedural issues. See id.
`Apple then represents that it is willing to adhere to the Scheduling Order
`already established for the Google CBM. Id. at 6. Apple also represent that
`it is willing to accept reasonable restrictions on discovery, so long as they do
`not preclude Apple from participating in the joined proceedings. Id. at 7.
`Apple further represents that it is willing to limit its participation to
`providing joint comments with Google, so long as Google remains a party in
`the joined proceedings. Id.
`
`In its Response, ContentGuard represents that it is does not oppose
`joining this proceeding to the Google CBM subject to each of the following
`conditions: (1) the schedule from the Google CBM remain unchanged; (2)
`discovery is limited to the scope previously agreed to by ContentGuard and
`Google—namely, the cross-examination depositions of experts; and (3)
`Apple’s participation in briefing, depositions, and oral argument is limited to
`sharing the briefing and time allotted with Google. ContentGuard Resp. 1.
`ContentGuard also represents that, in the event that Google ends its
`participation in the Google CBM, e.g., via settlement, it agrees to let Apple
`participate as the sole party subject to the same conditions outlined above.
`Id.
`
`
`
`5
`
`
`
`CBM2015-00160
`Patent 7,774,280 B2
`Based on ContentGuard’s willingness to let Apple join the Google
`CBM as a party, albeit subject to each of the conditions specified by
`ContentGuard in its Response, we conclude Apple has demonstrated that
`joinder will not unduly complicate or delay the Google CBM. We,
`therefore, grant Apple’s Motion for Joinder and, as a result, join this
`proceeding with the Google CBM.
`
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 324(a) and § 18(a) of AIA, a
`covered business method patent review is instituted only as to claims 1, 5,
`and 11 of the ’280 patent, and only based on the same grounds instituted in
`Case CBM2015-00040;
`FURTHER ORDERED that Apple’s Motion for Joinder is
`GRANTED, and this proceeding is joined with Case CBM2015-00040;
`FURTHER ORDERED that the grounds on which a covered business
`method patent review was instituted in CBM2015-00040 remain unchanged,
`and no other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Case CBM2015-00160 is instituted,
`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
`joined proceedings shall be made in Case CBM2015-00040;
`FURTHER ORDERED that the Scheduling Order entered in Case
`CBM2015-00040 (Paper 10) shall govern the schedule of the joined
`proceedings;
`FURTHER ORDERED that discovery in the joined proceedings
`remains limited to the scope previously agreed to by ContentGuard and
`Google—namely, the cross-examination depositions of experts;
`6
`
`
`
`
`
`CBM2015-00160
`Patent 7,774,280 B2
`FURTHER ORDERED that Apple’s participation in the briefing,
`depositions, and oral argument of the joined proceedings is limited to
`sharing the briefing and time allotted with Google;
`FURTHER ORDERED that the role of Google and ContentGuard in
`the joined proceedings remains unchanged;
`FURTHER ORDERED that the case caption in Case CBM2015-
`00040 shall be changed to reflect the joinder with this proceeding in
`accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of Case CBM2015-00040.
`
`
`
`7
`
`
`
`
`
`8
`
`CBM2015-00160
`Patent 7,774,280 B2
`For PETITIONER:
`
`Robert R. Laurenzi
`Nisha Agarwal
`Kaye Scholer LLP
`robert.laurenzi@kayescholer.com
`nisha.agarwal@kayescholer.com
`
`
`
`For PATENT OWNER:
`
`Timothy P. Maloney
`Nicholas T. Peters
`Fitch Even Tabin & Flannery LLP
`tim@fitcheven.com
`ntpete@fitcheven.com
`
`Robert A. Cote
`McKool Smith, P.C.
`rcote@mckoolsmith.com
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper:
`Entered:
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC., and APPLE INC.,
`Petitioners,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-0004013
`Patent 7,774,280 B2
`
`
`
`
`
`
`13 Case CBM2015-00160 has been joined with this proceeding.
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