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`Paper No. 8
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`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 No.: CBM2015-00097
`Patent No. 6,871,325
`
`
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b)
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`53951221.1
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`I.
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`INTRODUCTION
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`Petitioner moves the Patent Trial and Appeal Board (“Board”) for joinder of
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`this case (Case No. CBM2015-00097, “Expedia CBM”) and an earlier case filed
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`by Apple, Inc. et al. (Case No. CBM2015-00082, “Apple CBM”). The Expedia
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`CBM is intentionally identical to the Apple CBM in all substantive aspects. Both
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`seek covered business method (“CBM”) review of claims 11-13 and 15 (the
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`“Challenged Claims”) of Ameranth, Inc.’s (“PO”) U.S. Patent 6,871,325 (the “’325
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`patent”). Further, the Apple CBM and Expedia CBM rely upon the same
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`analytical framework (e.g., same expert declarant, prior art, claim charts, and claim
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`constructions) in addressing the Challenged Claims. Accordingly, resolving the
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`Apple CBM and Expedia CBM will necessarily involve considering the same
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`issues by all parties and the Board. The Petitioner group for the Apple CBM
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`(collectively, “Apple”) does not oppose this motion.
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`Further, joinder at an early stage—at the time of institution of the Apple and
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`Expedia CBMs and before a schedule has been entered for either case—means that
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`no trial schedule will be adversely affected. Joinder of these proceedings also
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`presents the best opportunity to secure the just, speedy, and inexpensive resolution
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`of the related proceedings without any prejudice to the PO. This includes
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`consolidated filings and discovery and eliminating the duplicate hearings and
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`briefing that would surely accompany separate proceedings, which Apple does not
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`oppose. Joinder should also provide for case management efficiencies for the
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`Board.
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`In light of the similarities of the proceedings and the efficiencies that can be
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`realized via joinder, Petitioner respectfully requests that the Board join the Apple
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`CBM and Expedia CBM, if and when both CBM reviews have been instituted.
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`II. BACKGROUND
`Apple filed a petition requesting CBM review of the ’325 Patent under the
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`transitional program for CBM patents on February 19, 2015. Apple CBM, Paper 1.
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`A decision regarding institution of that petition is still pending.
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`The Apple CBM and Expedia CBM involve different petitioner groups and
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`real parties-in-interest. Compare Apple CBM, Paper 1 at 1-2 (identifying real
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`parties-in-interest) with Expedia CBM, Paper 2 at 1-2 (identifying real parties-in-
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`interest). However, all such parties are defendants in numerous different
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`infringement lawsuits asserting the ’325 Patent and three other patents filed by the
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`PO (collectively, the “PO Patents”) in the U.S. District Court for the Southern
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`District of California. See Apple CBM, Paper 1 at 2-4 (listing related matters);
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`Expedia CBM, Paper 2 at 2-4 (listing related matters). The other three PO Patents
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`are U.S. Patent No. 6,982,733 (“’733 patent”), U.S. Patent No. 6,384,850 (“’850
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`patent”), and U.S. Patent No. 8,146,077 (“’077 patent”), for which there are
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`multiple other pending CBM proceedings. A summary of the CBM proceedings
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`related to the PO Patents is provided below in Tables 1 and 2. We further note
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`that the aforementioned litigation has been stayed pending resolution of certain of
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`the earlier filed CBM petitions (CBM2014-00013 for the ’733 Patent, CBM2014-
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`00014 for the ’077 Patent, CBM2014-00015 for the ’850 Patent, and CBM2014-
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`00016 for the ’325 Patent). Stay Order, Ex. 1; Order Continuing Stay, Ex. 2.
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`Table 1: Related Proceedings
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`Case
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`Petitioner
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`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
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`Patent
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`’733 patent
`’077 patent
`’850 patent
`’325 patent
`’850 patent
`’077 patent
`’325 patent
`’850 patent
`’077 patent
`’850 patent
`’325 patent
`’325 patent
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`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
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`Table 2: Status of Related Proceedings
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`Case
`CBM2014-00013
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`CBM2014-00014
`CBM2014-00015
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`CBM2014-00016
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`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
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`Case
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`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
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`In addition to the present motion, Petitioner will be concurrently filing
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`petitions to join other CBM cases pertaining to the PO patents. Specifically, by
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`separate motions, Petitioner is seeking to join CBM2015-00096 with CBM2015-
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`00080 (’850 patent), and to join CBM2015-00095 with CBM2015-00081 (’077
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`patent) on bases parallel to the ones set forth below.
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`III. LEGAL STANDARD
`When more than one petition for CBM review of the same patent is properly
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`filed and those petitions warrant institution, the Board has the authority and
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`discretion to join the proceedings. See 35 U.S.C. § 325(c) (permitting joinder of
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`post-grant review proceedings); 37 C.F.R. § 42.222(b) (same); Leahy-Smith
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`America Invents Act, Pub. L. No. 112-29 § 18(a)(1), 125 Stat. 284, 329 (2011)
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`(making certain post-grant review standards and procedures applicable to CBM
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`review); see also Transitional Program for Covered Business Method Patents, 77
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`Fed. Reg. 48687 (Aug. 14, 2012). Joinder of one CBM review with another CBM
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`review is appropriate where it secures the just, speedy, and inexpensive resolution
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`of the CBM review proceedings. See 37 C.F.R. § 42.1(b).
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`A petitioner may request joinder, without prior authorization, up to one
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`month after the institution date of the proceeding to which joinder is requested. 37
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`C.F.R. § 42.222(b) (addressing timing to request joinder); Taiwan Semiconductor
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`Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and IPR2014-782, Paper 5 at 3 (May
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`29, 2014) (prior authorization not required before one month deadline). Typically,
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`such a joinder request: (1) sets forth the reasons why joinder is appropriate;
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`(2) identifies any new grounds of unpatentability asserted in the petition; and
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`(3) explains what impact (if any) joinder would have on the trial schedule for the
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`existing review. See, e.g. Microsoft Corp. v. IPR Licensing, Inc., IPR2015-00074,
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`Paper 21 at 4 (Mar. 4, 2015). A joinder request can additionally address
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`specifically how briefing and discovery may be simplified. See, e.g., Sony Corp. of
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`Am. v. Network-1 Security Solutions, Inc., IPR2013-00495, Paper 13 at 3 (Sep. 16,
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`2013); Fujitsu Semiconductor Ltd. v. Zond, LLC, IPR2014-00845, Paper 14 at 304
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`(Oct. 2, 2014). Petitioner addresses each of these points below.
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`IV. ANALYSIS
`If CBM review of any claim of the ’325 Patent is instituted based on the
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`Apple and Expedia CBMs, Petitioner respectfully requests that the Board grant this
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`motion for joinder pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b) and
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`enter an order consistent with the proposed order provided below.
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`A. This Joinder Motion Is Timely
`This motion is timely. Under 37 C.F.R. § 42.222(b), joinder can be
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`requested without prior authorization no later than one month after the institution
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`date of the proceeding to which joinder is requested. Taiwan Semiconductor,
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`IPR2014-00781 and IPR2014-782, Paper 5 at 3. Because this motion is being filed
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`prior to the Board’s decision whether to institute the Apple CBM, it meets the
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`requirements of § 42.222(b). See, e.g., Biotronik, Inc. v. Atlas IP LLC, IPR2015-
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`00534, Paper 10 (Feb. 25, 2015) (granting motion for joinder filed concurrently
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`with institution of IPR review).
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` Joinder Is Appropriate
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`B.
`Joinder of the Apple CBM and the Expedia CBM is the most practical way
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`to secure the just, speedy, and inexpensive resolution of these related proceedings.
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`See 37 C.F.R. § 42.1(b). The Expedia CBM is intentionally identical to the Apple
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`CBM in all substantive aspects. That is, the same claims are challenged (claims
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`11-13 and 15 of the ’325 patent) based on the same prior art, same claim charts,
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`and same claim constructions.1 The same expert declarant is used, and the expert’s
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`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 ’325 Patent.
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`declarations in the two cases are substantively identical. Further, unity of exhibits
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`and exhibit numbering (particularly with respect to prior art) with the Apple CBM
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`have also been maintained, with only minor exceptions.2 Accordingly, resolving
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`the Expedia CBM and Apple CBM will necessarily involve considering the same
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`issues and same papers. Joining these CBM reviews thus presents an opportunity
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`to streamline review of the ’325 Patent’s Challenged Claims and eliminate
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`unnecessary duplication of filings, papers, and efforts of the Petitioner, the PO, and
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`the Board. On the other hand, if the Expedia CBM and Apple CBM proceed
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`separately, there would undoubtedly be needless duplicate effort.
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`C. Consolidated Filings and Discovery
`To further ensure a streamlined process, and because the grounds of
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`unpatentability in the Apple and Expedia CBMs are the same, Petitioner agrees to
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`work closely with Apple to avoid redundancies wherever possible.
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`For example, Petitioner will agree to consolidated filings for all substantive
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`papers in the proceeding (e.g., Reply to the PO’s Response, Opposition to Motion
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`to Amend, Motion for Observation on Cross Examination Testimony of a Reply
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`Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude Evidence,
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`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
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`53951221.1
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`and Reply). Specifically, so as to avoid lengthy and duplicative briefing, Petitioner
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`will agree to:
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`incorporate its filings with those of Apple in a consolidated filing,
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`subject to the ordinary rules for one party on page limits;
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`be jointly responsible with Apple for the consolidated filings; and
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`not be permitted to make arguments separately from those advanced
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`by Petitioner and Apple in the consolidated filings.
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`Petitioner will also agree to consolidated discovery. This is appropriate
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`given that Petitioner and Apple are using the same expert declarant who has
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`submitted a substantively
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`identical declaration
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`in
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`the
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`two proceedings.
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`Additionally, Petitioner will agree to designate a single attorney to conduct, on
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`behalf of Petitioner and Apple, the cross-examination of any witness produced by
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`PO and the redirect of any witness produced by Petitioner and PO, and to limit
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`such cross-examinations and redirect to the time normally allotted for one party.
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`Petitioner and Apple will not receive any separate cross-examination or redirect
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`time.
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`D. No New Grounds of Unpatentability
`The Expedia CBM raises no new grounds of unpatentability from those
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`raised in the Apple CBM. This is because, as noted above, the Apple CBM and
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`Expedia CBM are substantively identical.
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`E. No Impact on CBM Trial Schedule
`This motion is being filed before institution of the Apple CBM and, thus,
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`before a trial schedule has been set in that matter. Accordingly, the trial schedule
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`for the Apple CBM should not be adversely affected. Further, joinder at an early
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`stage—at the time of institution of the Apple and Expedia CBMs—means all
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`parties to the Apple and Expedia CBMs and known issues can be taken into
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`account before setting the trial schedule, presenting the best opportunity to
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`complete trial within the statutory one-year period.
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`F.
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`Joinder Will Streamline the Proceedings and Result in No
`Prejudice to PO
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`Joinder will streamline the proceedings and reduce the costs and burden on
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`Petitioner, PO, and the Board. Joining these proceedings will eliminate duplicate
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`papers that must be filed, reviewed, and managed in each proceeding if the
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`proceedings are not joined. Joinder will therefore also create case management
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`efficiencies for the Board and parties. Further, because Petitioner and Apple have
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`agreed to cooperate, joinder will also reduce by half the time and expense for
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`depositions and other discovery that would otherwise accompany separate CBM
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`proceedings. As such, joinder will simplify briefing and discovery, without any
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`foreseeable prejudice to PO.
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`V.
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`PROPOSED ORDER
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`In light of the benefits of joinder described above, Petitioner proposes an
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`order joining the Expedia CBM with the Apple CBM consistent with the
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`following, which Apple does not oppose:
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`If CBM review is instituted on any ground in the Apple CBM, the
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`Expedia CBM will be instituted on the same grounds and joined with the Apple
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`CBM;
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`The scheduling order entered for the Apple CBM will apply to the
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`joined proceedings;
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`Throughout the joined proceedings, Petitioner and Apple will file
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`papers as consolidated filings, except for motions that do not involve the other
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`party, in accordance with the Board’s established rules regarding page limits. So
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`long as they both continue to participate in the merged proceedings, Petitioner and
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`Apple will identify each such filing as a Consolidated Filing and will be
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`responsible for completing all consolidated filings;
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`Petitioner and Apple will designate an attorney to conduct the cross
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`examination of any witness produced by PO and the redirect of any given witness
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`produced by Petitioner and Apple within the timeframe normally allotted by the
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`rules for one party. Petitioner and Apple will not receive any separate cross-
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`examination or redirect time; and
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`PO will conduct any cross examination of any given witness jointly
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`produced by Petitioner and Apple and the redirect of any given witness produced
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`by PO within the timeframe normally allotted by the rules for one cross-
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`examination or redirect examination.
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`VI. CONCLUSION
`For the foregoing reasons, if the Board institutes CBM review, Petitioner
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`respectfully requests that the Board grant joinder of the Apple CBM and Expedia
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`CBM.
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`April 7, 2015
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`Respectfully Submitted,
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`
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` /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.
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`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
`
`John W. Osborne
`OSBORNE LAW LLC
`josborne@osborneipl.com
`
`By:
`
`
` /s/ Richard S. Zembek
`Richard S. Zembek
`
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`53951221.1
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`Petitioner’s Motion for Joinder
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`CBM2015-00097 (U.S. Patent No. 6,871,325)