throbber
Paper No. 10
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EXPEDIA, INC., FANDANGO, LLC, HOTELS.COM, L.P.,
`HOTEL TONIGHT, INC., HOTWIRE, INC.,
`KAYAK SOFTWARE CORP., OPENTABLE, INC., ORBITZ, LLC,
`PAPA JOHN’S USA, INC., STUBHUB, INC., TICKETMASTER, LLC, LIVE
`NATION ENTERTAINMENT, INC., TRAVELOCITY.COM LP,
`WANDERSPOT LLC, AGILYSYS, INC., DOMINO’S PIZZA, INC.,
`DOMINO’S PIZZA, LLC, HILTON RESORTS CORPORATION,
`HILTON WORLDWIDE, INC., HILTON INTERNATIONAL CO.,
`MOBO SYSTEMS, INC., PIZZA HUT OF AMERICA, INC.,
`PIZZA HUT, INC., and USABLENET, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.,
`Patent Owner
`
`
`
`Case CBM2015-00096
`Patent No. 6,384,850
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b)
`
`53951220.1
`
`
`
`

`

`
`I.
`
`INTRODUCTION
`
`
`
`Petitioner moves the Patent Trial and Appeal Board (“Board”) for joinder of
`
`this case (Case No. CBM2015-00096, “Expedia CBM”) and an earlier case filed
`
`by Apple, Inc. et al. (Case No. CBM2015-00080, “Apple CBM”). The Expedia
`
`CBM is intentionally identical to the Apple CBM in all substantive aspects. Both
`
`seek covered business method (“CBM”) review of claims 12-16 (the “Challenged
`
`Claims”) of Ameranth, Inc.’s (“PO”) U.S. Patent No. 6,384,850 (the “’850
`
`patent”). Further, the Apple CBM and Expedia CBM rely upon the same
`
`analytical framework (e.g., same expert declarant, prior art, claim charts, and claim
`
`constructions) in addressing the Challenged Claims. Accordingly, resolving the
`
`Apple CBM and Expedia CBM will necessarily involve considering the same
`
`issues by all parties and the Board. The Petitioner group for the Apple CBM
`
`(collectively, “Apple”) does not oppose this motion.
`
`Further, joinder at an early stage—at the time of institution of the Apple and
`
`Expedia CBMs and before a schedule has been entered for either case—means that
`
`no trial schedule will be adversely affected. Joinder of these proceedings also
`
`presents the best opportunity to secure the just, speedy, and inexpensive resolution
`
`of the related proceedings without any prejudice to the PO. This includes
`
`consolidated filings and discovery and eliminating the duplicate hearings and
`
`briefing that would surely accompany separate proceedings, which Apple does not
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 2 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`oppose. Joinder should also provide for case management efficiencies for the
`
`
`
`Board.
`
`In light of the similarities of the proceedings and the efficiencies that can be
`
`realized via joinder, Petitioner respectfully requests that the Board join the Apple
`
`CBM and Expedia CBM, if and when both CBM reviews have been instituted.
`
`II. BACKGROUND
`Apple filed a petition requesting CBM review of the ’850 Patent under the
`
`transitional program for CBM patents on February 19, 2015. Apple CBM, Paper 1.
`
`A decision regarding institution of that petition is still pending.
`
`The Apple CBM and Expedia CBM involve different petitioner groups and
`
`real parties-in-interest. Compare Apple CBM, Paper 1 at 1-2 (identifying real
`
`parties-in-interest) with Expedia CBM, Paper 8 at 2 (identifying real parties-in-
`
`interest). However, all such parties are defendants in numerous different
`
`infringement lawsuits asserting the ’850 Patent and three other patents filed by the
`
`PO (collectively, the “PO Patents”) in the U.S. District Court for the Southern
`
`District of California. See Apple CBM, Paper 1 at 2-4 (listing related matters);
`
`Expedia CBM, Paper 8 at 2-4 (listing related matters). The other three PO Patents
`
`are U.S. Patent No. 6,982,733 (“’733 patent”), U.S. Patent No. 8,146,077 (“’077
`
`patent”), and U.S. Patent No. 6,871,325 (“’325 patent”), for which there are
`
`multiple other pending CBM proceedings. A summary of the CBM proceedings
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 3 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`related to the PO Patents is provided below in Tables 1 and 2. We further note
`
`
`
`that the aforementioned litigation has been stayed pending resolution of certain of
`
`the earlier filed CBM petitions (CBM2014-00013 for the ’733 Patent, CBM2014-
`
`00014 for the ’077 Patent, CBM2014-00015 for the ’850 Patent, and CBM2014-
`
`00016 for the ’325 Patent). Stay Order, Ex. 1; Order Continuing Stay, Ex. 2.
`
`Table 1: Related Proceedings
`
`Case
`
`Petitioner
`
`Petition
`Filed
`CBM2014-00013 Oct. 15, 2013 Apple et al.
`CBM2014-00014 Oct. 15, 2013 Agilysys et al.
`CBM2014-00015 Oct. 15, 2013 Agilysys et al.
`CBM2014-00016 Oct. 15, 2013 Agilysys et al.
`CBM2015-00080 Feb. 19, 2015 Apple et al.
`CBM2015-00081 Feb. 19, 2015 Apple et al.
`CBM2015-00082 Feb. 19, 2015 Apple et al.
`CBM2015-00091 Mar. 2, 2015
`Starbucks
`CBM2015-00095 Mar. 3, 2015
`Expedia et al.
`CBM2015-00096 Mar. 3, 2015
`Expedia et al.
`CBM2015-00097 Mar. 4, 2015
`Expedia et al.
`CBM2015-00099 Mar. 6, 2015
`Starbucks
`
`
`Patent
`
`’733 patent
`’077 patent
`’850 patent
`’325 patent
`’850 patent
`’077 patent
`’325 patent
`’850 patent
`’077 patent
`’850 patent
`’325 patent
`’325 patent
`
`Challenged
`Claims
`1-16
`1-18
`1-16
`1-15
`12-16
`1-18
`11-13, 15
`12-16
`1-18
`12-16
`11-13, 15
`11-13, 15
`
`Table 2: Status of Related Proceedings
`
`Case
`CBM2014-00013
`
`CBM2014-00014
`CBM2014-00015
`
`CBM2014-00016
`
`Status
`Instituted for claims 1-16 on ground of 35 U.S.C. § 101;
`denied as to all other grounds; Final Written Decision issued
`Mar. 20, 2015
`Institution denied
`Instituted for claims 1-11 on ground of 35 U.S.C. § 101;
`denied as to all other grounds; Final Written Decision issued
`Mar. 20, 2015
`Instituted for claims 1-10 on ground of 35 U.S.C. § 101;
`denied as to all other grounds; Final Written Decision issued
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 4 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`
`
`
`Case
`
`Status
`Mar. 20, 2015
`CBM2015-00080 Petition pending
`CBM2015-00081 Petition pending
`CBM2015-00082 Petition pending
`CBM2015-00091 Petition pending
`CBM2015-00095 Petition pending
`CBM2015-00096 Petition pending
`CBM2015-00097 Petition pending
`CBM2015-00099 Petition pending
`
`In addition to the present motion, Petitioner will be concurrently filing
`
`petitions to join other CBM cases pertaining to the PO patents. Specifically, by
`
`separate motions, Petitioner is seeking to join CBM2015-00095 with CBM2015-
`
`00081 (’077 patent), and to join CBM2015-00097 with CBM2015-00082 (’325
`
`patent) on bases parallel to the ones set forth below.
`
`III. LEGAL STANDARD
`When more than one petition for CBM review of the same patent is properly
`
`filed and those petitions warrant institution, the Board has the authority and
`
`discretion to join the proceedings. See 35 U.S.C. § 325(c) (permitting joinder of
`
`post-grant review proceedings); 37 C.F.R. § 42.222(b) (same); Leahy-Smith
`
`America Invents Act, Pub. L. No. 112-29 § 18(a)(1), 125 Stat. 284, 329 (2011)
`
`(making certain post-grant review standards and procedures applicable to CBM
`
`review); see also Transitional Program for Covered Business Method Patents, 77
`
`Fed. Reg. 48687 (Aug. 14, 2012). Joinder of one CBM review with another CBM
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 5 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`review is appropriate where it secures the just, speedy, and inexpensive resolution
`
`
`
`of the CBM review proceedings. See 37 C.F.R. § 42.1(b).
`
`A petitioner may request joinder, without prior authorization, up to one
`
`month after the institution date of the proceeding to which joinder is requested. 37
`
`C.F.R. § 42.222(b) (addressing timing to request joinder); Taiwan Semiconductor
`
`Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and IPR2014-782, Paper 5 at 3 (May
`
`29, 2014) (prior authorization not required before one month deadline). Typically,
`
`such a joinder request: (1) sets forth the reasons why joinder is appropriate;
`
`(2) identifies any new grounds of unpatentability asserted in the petition; and
`
`(3) explains what impact (if any) joinder would have on the trial schedule for the
`
`existing review. See, e.g. Microsoft Corp. v. IPR Licensing, Inc., IPR2015-00074,
`
`Paper 21 at 4 (Mar. 4, 2015). A joinder request can additionally address
`
`specifically how briefing and discovery may be simplified. See, e.g., Sony Corp. of
`
`Am. v. Network-1 Security Solutions, Inc., IPR2013-00495, Paper 13 at 3 (Sep. 16,
`
`2013); Fujitsu Semiconductor Ltd. v. Zond, LLC, IPR2014-00845, Paper 14 at 304
`
`(Oct. 2, 2014). Petitioner addresses each of these points below.
`
`IV. ANALYSIS
`If CBM review of any claim of the ’850 Patent is instituted based on the
`
`Apple and Expedia CBMs, Petitioner respectfully requests that the Board grant this
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 6 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`motion for joinder pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b) and
`
`
`
`enter an order consistent with the proposed order provided below.
`
`A. This Joinder Motion Is Timely
`This motion is timely. Under 37 C.F.R. § 42.222(b), joinder can be
`
`requested without prior authorization no later than one month after the institution
`
`date of the proceeding to which joinder is requested. Taiwan Semiconductor,
`
`IPR2014-00781 and IPR2014-782, Paper 5 at 3. Because this motion is being filed
`
`prior to the Board’s decision whether to institute the Apple CBM, it meets the
`
`requirements of § 42.222(b). See, e.g., Biotronik, Inc. v. Atlas IP LLC, IPR2015-
`
`00534, Paper 10 (Feb. 25, 2015) (granting motion for joinder filed concurrently
`
`with institution of IPR review).
`
` Joinder Is Appropriate
`
`B.
`Joinder of the Apple CBM and the Expedia CBM is the most practical way
`
`to secure the just, speedy, and inexpensive resolution of these related proceedings.
`
`See 37 C.F.R. § 42.1(b). The Expedia CBM is intentionally identical to the Apple
`
`CBM in all substantive aspects. That is, the same claims are challenged (claims
`
`12-16 of the ’850 patent) based on the same prior art, same claim charts, and same
`
`claim constructions.1 The same expert declarant is used, and the expert’s
`
`
`1 The later filed Expedia CBM includes a few edits to address typographical errors
`in the earlier filed Apple CBM. These edits do not change the substantive bases
`for challenging the claims of the ’850 Patent.
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 7 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`declarations in the two cases are substantively identical. Further, unity of exhibits
`
`
`
`and exhibit numbering (particularly with respect to prior art) with the Apple CBM
`
`have also been maintained, with only minor exceptions.2 Accordingly, resolving
`
`the Expedia CBM and Apple CBM will necessarily involve considering the same
`
`issues and same papers. Joining these CBM reviews thus presents an opportunity
`
`to streamline review of the ’850 Patent’s Challenged Claims and eliminate
`
`unnecessary duplication of filings, papers, and efforts of the Petitioner, the PO, and
`
`the Board. On the other hand, if the Expedia CBM and Apple CBM proceed
`
`separately, there would undoubtedly be needless duplicate effort.
`
`C. Consolidated Filings and Discovery
`To further ensure a streamlined process, and because the grounds of
`
`unpatentability in the Apple and Expedia CBMs are the same, Petitioner agrees to
`
`work closely with Apple to avoid redundancies wherever possible.
`
`For example, Petitioner will agree to consolidated filings for all substantive
`
`papers in the proceeding (e.g., Reply to the PO’s Response, Opposition to Motion
`
`to Amend, Motion for Observation on Cross Examination Testimony of a Reply
`
`Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude Evidence,
`
`
`2 Exhibits 1030 (PO’s complaints against Petitioner), 1031 (PO’s complaints
`against Petitioner), and 1060 (PO’s Infringement Contentions against Petitioner)
`necessarily differ due to different real parties-in-interest in the Expedia CBM and
`Apple CBM. The Expedia CBM includes the Apple CBMs as additional Exs.
`1068-1070. Otherwise, all exhibits are the same.
`Petitioner’s Motion for Joinder
`- 8 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`53951220.1
`
`

`

`
`and Reply). Specifically, so as to avoid lengthy and duplicative briefing, Petitioner
`
`
`
`will agree to:
`
`
`
`incorporate its filings with those of Apple in a consolidated filing,
`
`subject to the ordinary rules for one party on page limits;
`
`
`
`
`
`be jointly responsible with Apple for the consolidated filings; and
`
`not be permitted to make arguments separately from those advanced
`
`by Petitioner and Apple in the consolidated filings.
`
`Petitioner will also agree to consolidated discovery. This is appropriate
`
`given that Petitioner and Apple are using the same expert declarant who has
`
`submitted a substantively
`
`identical declaration
`
`in
`
`the
`
`two proceedings.
`
`Additionally, Petitioner will agree to designate a single attorney to conduct, on
`
`behalf of Petitioner and Apple, the cross-examination of any witness produced by
`
`PO and the redirect of any witness produced by Petitioner and PO, and to limit
`
`such cross-examinations and redirect to the time normally allotted for one party.
`
`Petitioner and Apple will not receive any separate cross-examination or redirect
`
`time.
`
`D. No New Grounds of Unpatentability
`The Expedia CBM raises no new grounds of unpatentability from those
`
`raised in the Apple CBM. This is because, as noted above, the Apple CBM and
`
`Expedia CBM are substantively identical.
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 9 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`
`
`
`E. No Impact on CBM Trial Schedule
`This motion is being filed before institution of the Apple CBM and, thus,
`
`before a trial schedule has been set in that matter. Accordingly, the trial schedule
`
`for the Apple CBM should not be adversely affected. Further, joinder at an early
`
`stage—at the time of institution of the Apple and Expedia CBMs—means all
`
`parties to the Apple and Expedia CBMs and known issues can be taken into
`
`account before setting the trial schedule, presenting the best opportunity to
`
`complete trial within the statutory one-year period.
`
`F.
`
`Joinder Will Streamline the Proceedings and Result in No
`Prejudice to PO
`
`Joinder will streamline the proceedings and reduce the costs and burden on
`
`Petitioner, PO, and the Board. Joining these proceedings will eliminate duplicate
`
`papers that must be filed, reviewed, and managed in each proceeding if the
`
`proceedings are not joined. Joinder will therefore also create case management
`
`efficiencies for the Board and parties. Further, because Petitioner and Apple have
`
`agreed to cooperate, joinder will also reduce by half the time and expense for
`
`depositions and other discovery that would otherwise accompany separate CBM
`
`proceedings. As such, joinder will simplify briefing and discovery, without any
`
`foreseeable prejudice to PO.
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 10 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`V.
`
`PROPOSED ORDER
`
`
`In light of the benefits of joinder described above, Petitioner proposes
`
`
`
`an order joining the Expedia CBM with the Apple CBM consistent with the
`
`following, which Apple does not oppose:
`
`
`
`If CBM review is instituted on any ground in the Apple CBM, the
`
`Expedia CBM will be instituted on the same grounds and joined with the Apple
`
`CBM;
`
`
`
`The scheduling order entered for the Apple CBM will apply to the
`
`joined proceedings;
`
`
`
`Throughout the joined proceedings, Petitioner and Apple will file
`
`papers as consolidated filings, except for motions that do not involve the other
`
`party, in accordance with the Board’s established rules regarding page limits. So
`
`long as they both continue to participate in the merged proceedings, Petitioner and
`
`Apple will identify each such filing as a Consolidated Filing and will be
`
`responsible for completing all consolidated filings;
`
`
`
`Petitioner and Apple will designate an attorney to conduct the cross
`
`examination of any witness produced by PO and the redirect of any given witness
`
`produced by Petitioner and Apple within the timeframe normally allotted by the
`
`rules for one party. Petitioner and Apple will not receive any separate cross-
`
`examination or redirect time; and
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 11 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`
`
`
`PO will conduct any cross examination of any given witness jointly
`
`produced by Petitioner and Apple and the redirect of any given witness produced
`
`by PO within the timeframe normally allotted by the rules for one cross-
`
`
`
`examination or redirect examination.
`
`VI. CONCLUSION
`For the foregoing reasons, if the Board institutes CBM review, Petitioner
`
`respectfully requests that the Board grant joinder of the Apple CBM and Expedia
`
`CBM.
`
`
`
`
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 12 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`April 7, 2015
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
` /s/ Richard S. Zembek
`By:
`Richard S. Zembek
`Reg. No. 43,306
`Norton Rose Fulbright US LLP
`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
`Norton Rose Fulbright US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, Texas 78701
`Tel: 512-474-5201
`Fax: 512-536-4598
`bert.greene@nortonrosefulbright.com
`
`Attorneys for Expedia, Inc., Fandango, LLC,
`Hotel Tonight, Inc., Hotwire, Inc.,
`Hotels.com, L.P., Kayak Software Corp.,
`Live Nation Entertainment, Inc., Orbitz,
`LLC, OpenTable, Inc., Papa John’s USA,
`Inc., StubHub, Inc., Ticketmaster, LLC,
`Travelocity.com LP, Wanderspot LLC,
`Agilysys, Inc., Domino’s Pizza, Inc.,
`Domino’s Pizza, LLC, Hilton Resorts
`Corporation, Hilton Worldwide, Inc., Hilton
`International Co., Mobo Systems, Inc., Pizza
`Hut of America, Inc. and Pizza Hut, Inc.,
`and Usablenet, Inc.
`
`
`
`
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 13 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`
`
`John W. Osborne
`OSBORNE LAW LLC
`josborne@osborneipl.com
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Motion for Joinder under 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b), together
`with exhibit thereto, was served by electronic mail on April 7, 2015 as follows:
`
`Michael D. Fabiano
`FABIANO LAW FIRM, P.C.
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`mdfabiano@fabianolawfirm.com
`
`
`
`
`
`
`
` /s/ Richard S. Zembek
`By:
`Richard S. Zembek
`
`
`
`
`
`
`
`
`
`53951220.1
`
`Petitioner’s Motion for Joinder
`- 14 -
`CBM2015-00096 (U.S. Patent No. 6,384,850)
`
`

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