Paper No. 2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner
`
`Patent No. 7,774,280
`Issued: August 10, 2010
`Filed: October 4, 2004
`Inventors: Nguyen, et al.
`Title: System and Method for Managing Transfer of Rights Using Shared State
`Variables
`
`
`
`CBM2015-00160
`__________________________________________________________________
`
`MOTION FOR JOINDER TO CBM2015-00040
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner
`
`Patent No. 7,774,280
`Issued: August 10, 2010
`Filed: October 4, 2004
`Inventors: Nguyen, et al.
`Title: System and Method for Managing Transfer of Rights Using Shared State
`Variables
`
`
`
`CBM2015-00160
`__________________________________________________________________
`
`MOTION FOR JOINDER TO CBM2015-00040
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`
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`
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`
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`CBM2015-00160 - Motion for Joinder
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 325(c), 37 C.F.R. § 42.222, and 37 C.F.R. § 42.300
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`Petitioner Apple Inc. (“Petitioner” or “Apple”) moves to join its concurrently filed
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`petition for Contested Business Method Review of U.S. Patent No. 7,774,280 (the
`
`’280 patent) with the Contested Business Method Review of the ’280 patent
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`requested by Google Inc., CBM2015-00040 (the “Google CBM”). On June 24,
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`2015, the Board instituted trial on claims 1, 5, and 11 of the ’280 patent in the
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`Google CBM. This Motion for Joinder is timely filed under 37 C.F.R. §§ 42.22
`
`and 42.222(b) as it is submitted no later than one month after the June 24, 2015
`
`institution date of CBM2015-00040.
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`Joinder is appropriate because the Apple petition and the Google CBM
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`petition are substantially identical. The Apple petition relies on the same grounds
`
`as those advanced by Google. Joinder is appropriate because it will permit Apple
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`to protect its interests related to the validity of the ’280 patent,1 and Apple could be
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`prejudiced if it is not permitted to join this proceeding. Joinder is also appropriate
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`because it will not disrupt the efficient resolution of the validity of the involved
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`patent and it will not prejudice the parties of the Google CBM. Thus, the factors
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`relevant to joinder favor granting this motion, including that: (i) the same schedule
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`1 Apple has been sued for infringement of the ’280 patent in the Eastern District of
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`Texas.
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`1
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`CBM2015-00160 - Motion for Joinder
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`for various proceedings can be adopted, (ii) Apple is not advancing any new
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`grounds or any expert testimony, and thus, discovery will not be impacted by
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`joinder, and (iii) joinder will not materially affect the range of issues needing to be
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`addressed by the Board and by the parties in the joined proceedings. See Kyocera
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`Corp. v. Softview LLC, IPR2013-00004, Paper No. 15 at 4 (Apr. 24, 2013).
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`Because all these factors support joining these proceedings, Apple requests the
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`Board to grant this motion.
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`II. RELEVANT FACTS
`On December 9, 2014, Google Inc. (“Google”), filed a Petition requesting a
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`review under the transitional program for covered business method patents of
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`claims 1, 5, 11, 12, and 22 of U.S. Patent No. 7,774,280. CBM2015-00040, Paper
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`1. On April 6, 2015, Patent Owner, ContentGuard Holdings, Inc.
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`(“ContentGuard”), filed a Preliminary Response. Id., Paper 8. On June 24, 2015,
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`the Board instituted trial on claims 1, 5, and 11 the ’280 patent on the following
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`grounds:
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`• Claims 1, 5, and 11 as being anticipated under § 102(b) by Stefik (Ex.
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`1002, US 5,634,012); and
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`• Claims 1, 5, and 11 as being unpatentable under § 103(a) over the
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`combination of Stefik and the knowledge of one of ordinary skill in
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`the art.
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`2
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`CBM2015-00160 - Motion for Joinder
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`CBM2015-00040, Paper 9.
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`The Apple CBM petition (CBM2015-00160) is substantially identical to the
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`Google CBM petition (CBM2015-00040). With the exception of Exhibit 1031 (the
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`complaint in ContentGuard Inc. v. Amazon.com Inc., et al., showing Apple has
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`been sued for infringement of the ’280 patent), all exhibits in the Apple CBM
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`petition (CBM2015-00160) are identical to the exhibits in the Google CBM
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`petition (CBM2015-00040).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (“AIA”) provides for joinder of
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`CBM proceedings. See 35 U.S.C. § 325(c). In exercising its discretion to grant
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`joinder, the Board considers the impact of substantive and procedural issues on the
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`proceedings, as well as other considerations, while being “mindful that patent trial
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`regulations, including the rules for joinder, must be construed to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” See Dell Inc. v.
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`Network-1 Security Solutions, Inc., Case IPR2013-00385, Paper No. 17, July 29,
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`2013 at 3 (“Dell”); Trulia, Inc. v. Zillow, Inc., Case CBM2014-00115, Paper No. 8,
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`May 1, 2014 at 18-19 (“Trulia”); Motorola Mobility LLC v. Softview, LLC,
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`IPR2013-00256, Paper 10 at 5 (“Motorola”); see also Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 157, 48758 (Aug. 14, 2012) (“The rules are to be construed so
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`as to ensure the just, speedy, and inexpensive resolution of a proceeding …”).
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`3
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`
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`CBM2015-00160 - Motion for Joinder
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`Under this framework, joinder of the present petition with CBM2015-00040 is
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`appropriate.
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`Joinder with the Google CBM is justified because each factor identified by
`
`the Board as supporting joinder is met. For example, the Board has explained that
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`a motion for joinder should: (1) explain the reasons why joinder is appropriate; (2)
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`identify any new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the existing
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`review; and (4) address specifically how briefing and discovery may be simplified.
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`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (representative
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`order); see also Skimlinks, Inc. v. Linkine, Inc., CBM2015-00087, Paper No. 14,
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`June 15, 2015 at 24 (citing Frequently Asked Question H5,
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`http://www.uspto.gov/patents-application-process/appealing-patent-
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`decisions/trials/patent-review-processing-system-prps-0 (last visited June 2,
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`2015)). Each of these factors is addressed below, and when considered together,
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`strongly support granting this motion for joinder.
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`Joinder Is Appropriate
`
`A.
`This Motion for Joiner is timely because it is being filed within one month
`
`of the date, June 24, 2015, on which the Board instituted a trial in CBM2015-
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`00040. See 37 C.F.R. § 42.222(b). Granting the present motions will further the
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`interests of justice in that it will permit Apple to protect its interests related to the
`
`4
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`CBM2015-00160 - Motion for Joinder
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`validity of the ’280 patent—interests which could be predjudiced if Apple were not
`
`permitted to be joined. And, joinder between the instant petition and the Google
`
`CBM is appropriate because they involve the same patent, the same art, the same
`
`expert declaration, and the same arguments and legal rationales. Apple’s proposed
`
`grounds of invalidity are identical to Google’s. See Dell at 10 (The Board should
`
`“take into account the policy preference for joining a party that does not present
`
`new issues that might complicate or delay an existing proceeding.”).2 Joinder of
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`proceedings is appropriate because it will facilitate the efficient administration of
`
`the Office by consolidating identical challenges to the validity of the ’280 patent.
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`Permitting joinder will not prejudice Google or ContentGuard. Apple raises
`
`no issues that are not already before the Board so joinder would not affect the
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`timing of the Google CBM or the substance of any of ContentGuard’s responses.
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`Moreover, Apple is amendable to coordinating with Google and, as such, Google
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`will not suffer any additional costs or burdens in preparing motions and arguments.
`
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`2 Citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)
`
`(“The Office anticipates that joinder will be allowed as of right - if an inter partes
`
`review is instituted on the basis of a petition, for example, a party that files an
`
`identical petition will be joined to that proceeding, and thus allowed to file its own
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`briefs and make its own arguments.”).
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`5
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`
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`CBM2015-00160 - Motion for Joinder
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`Accordingly, because of the substantially identical petitions involved here, joinder
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`is appropriate.
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`B. No New Grounds of Unpatentability in the Apple Petitions
`The instant petition sets forth the same grounds specified in the petition filed
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`in the Google CBM. In its June 24, 2015 Institution Decision in the Google CBM,
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`the Board granted institution on some, but not all of the requested grounds. Apple
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`is willing to limit its challenge in this proceeding to only those which the Board
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`has already determined meet the requirements for institution of review; namely
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`that claims 1, 5 and 11 of the ’280 patent. See CBM2015-00040, Paper No. 9 at
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`43. Petitioner proposes no new grounds of rejection or prior art references.
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`C. No Impact on the Trial Schedule or Costs of the Proceeding
`Granting this motion for joinder will have no impact on the trial schedule of
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`the proceeding because Apple does not raise any issues that are not already before
`
`the Board. ContentGuard does not need to specifically address any issues raised
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`by Apple, and thus, joinder would have no impact on the cost of the proceeding. In
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`addition, Apple is willing to adhere to the schedule already established for
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`CBM2015-00040.3 See, e.g. Motorola, IPR2013-000256, Paper 10 at 2-3
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`3 The schedule is set forth in paper 10 of CBM2015-00040. In that schedule, Due
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`Date 1 is set for September 11, 2015, with Due Date 7 being set for February 24,
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`2016. Apple is prepared to operate under this schedule.
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`6
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`CBM2015-00160 - Motion for Joinder
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`(identifying “impact of the joinder on the schedule and costs of the proceeding” as
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`a factor relevant to decide whether to join proceedings).
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`Joinder Will Simplify Briefing and Discovery
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`D.
`Joinder will simplify briefing of CBM2015-00160 and CBM2015-00040 by
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`eliminating the need for the Patent Owner to respond to substantially identical
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`petitions twice. In the interest of efficiency, Apple is willing to accept reasonable
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`restrictions on discovery as long as they do not effectively preclude Apple from
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`participating in the joined proceeding. For example, Apple has not filed a separate
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`expert declaration, and thus, ContentGuard will not need to depose any additional
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`witnesses. Apple is also willing to coordinate with Google to avoid duplicative
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`cross-examination of ContentGuard witnesses. Moreover, Apple is willing to limit
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`its participation to providing joint comments with Google so long as Google is
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`actively participating in the proceeding, or to accept other reasonable conditions on
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`the conduct of the joined proceeding.
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`Joinder Will Not Prejudice ContentGuard
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`E.
`Finally, ContentGuard will suffer no prejudice from joinder. ContentGuard
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`has instigated litigation against Apple in district court, and has been participating
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`in the covered business method patent review of the ’280 patent. Joinder will
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`enable the efficient resolution of these proceedings before the Board without
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`affecting the schedule of concurrent litigation and will reduce, rather than increase,
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`7
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`CBM2015-00160 - Motion for Joinder
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`the complexity of the concurrent litigation by reducing the number of issues in
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`ContentGuard Holdings, Inc. v. Amazon.com, Inc. et. al. Case No.:13-cv-01112-
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`JRG (E.D. Tex.), of which Apple is a party.
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`IV. Conclusion
`Because the relevant factors relevant strongly support joinder, Apple
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`requests that the Board join this proceeding (i.e., CBM2015-00160) to related
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`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan (Reg No. 43,401)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`
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`proceeding CBM2015-00040.
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`
`
`Dated:
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`July 17, 2015
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`8
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`CBM2015-00160 - Motion for Joinder
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 17th day of July, 2015, a copy of this Motion for
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`Joinder of Proceedings was caused to be served in its entirety on July 17, 2015, to
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`the following address for Patent Owner:
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`ContentGuard Holdings, Inc.
`6900 N. Dallas Parkway, Suite 850
`Plano, Texas, 75024
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`Prosecution Counsel & Address of Record in PAIR:
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`Reed Smith LLP
`P.O. Box 488
`Pittsburgh PA 15230
`
`Marc S. Kaufman
`Reed Smith LLP
`1301 K Street, N.W.
`Suite 1100 – East Tower
`Washington, DC 20005
`Litigation Counsel:
`
`Samuel F. Baxter (sbaxter@mckoolsmith.com)
`MCKOOL SMITH, P.C.
`104 East Houston, Suite 300
`Marshall, Texas 75670
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`
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`Dated:
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`July 17, 2015
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner
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`Page 1
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