`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`APPLE INC., EVENTBRITE, INC. and STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.
`
`Petitioner
`v.
`
`AMERANTH, INC.,
`
`Patent Owner
`
`
`
`CASE CBM Unassigned
`
`Patent No. 6,871,325
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 325(c)
`AND 37 C.F.R. §§ 42.22 AND 42.222(b)
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial & Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`i
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`
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`TABLE OF CONTENTS
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`
`Page
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`STATEMENT OF RELIEF REQUESTED ................................................... 1
`I.
`BACKGROUND ............................................................................................ 2
`II.
`III. LEGAL STANDARD .................................................................................... 5
`IV. ANALYSIS ..................................................................................................... 7
`A.
`This Joinder Motion is Timely ............................................................. 7
`B.
`Joinder is Appropriate .......................................................................... 7
`C. No New Grounds of Unpatentability Are Asserted in the
`Petition .................................................................................................. 8
`Consolidated Filings and Discovery .................................................... 9
`No Impact on the CBM Trial Schedule .............................................. 10
`Joinder will Streamline the Proceedings and Result in No
`Prejudice to the Patent Owner ............................................................ 10
`PROPOSED ORDER ................................................................................... 11
`V.
`VI. CONCLUSION ............................................................................................. 12
`
`D.
`E.
`F.
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`i
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. §§ 42.22 and 42.222(b), Apple
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`Inc., Eventbrite, Inc. and Starwood Hotels & Resorts Worldwide, Inc. (collectively
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`“Petitioner”) respectfully requests joinder of the concurrently filed Petition for
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`Covered Business Method (“CBM”) review of U.S. Patent No. 6,871,325 (“the
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`’325 patent) (“Apple Petition”) with the instituted and on-going CBM Trial under
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`Case No. CBM2015-00099 (“Starbucks CBM”), which was instituted on
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`September 14, 2015. CBM2015-00099, Paper 9. The Apple Petition seeks review
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`of the same claims (claims 11-13 and 15) of the same patent (the ’325 patent) on
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`the same grounds under 35 U.S.C. § 103 as the Starbucks CBM. Further, the
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`Apple Petition and Starbucks CBM rely on the same the same expert declarant, the
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`same prior art and the same invalidity analysis. Indeed, in order to minimize any
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`additional burden that would result from the joinder requested in this Motion, the
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`substantive portions of the Apple Petition are intentionally identical to the petition
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`submitted by Starbucks in CBM2015-00099 (“Starbucks Petition”), except that the
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`Apple Petition excludes grounds that were not instituted by the Board.
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`Joinder is appropriate because it will promote efficient resolution of the
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`validity of the ’325 patent as the timely-filed Apple Petition involves the same
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`patent, the same claims, the same prior art, and the same instituted grounds set
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`forth in the Starbucks CBM. No new or additional grounds of unpatentability are
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`
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`1
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`
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`set forth in the Apple Petition, and there will be no impact, or minimal impact if
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`any, on the trial schedule for the existing review. Further, Petitioner lists
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`procedures the Board may adopt to simplify briefing and discovery. 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. Joinder should also
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`provide for case management efficiencies for the Board.
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`In light of the similarities of the Apple Petition and Starbucks CBM and the
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`efficiencies that can be realized via joinder, Petitioner respectfully requests that the
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`Board join the Apple Petition and the Starbucks CBM.
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`II. BACKGROUND
`On March 6, 2015, Starbucks filed a petition requesting CBM review of
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`claims 11-13 and 15 of the ’325 patent on thirteen grounds of unpatentability under
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`35 U.S.C. §§ 101, 102, 103 and 112. CBM2015-00099, Paper 2. Ameranth Inc.
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`(“Patent Owner” or “Ameranth”) submitted a Preliminary Response on June 22,
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`2015. CBM2015-00099, Paper 7.
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`On September 14, 2015, the Board entered a decision instituting CBM
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`review on four of the thirteen requested grounds. Specifically, the Board instituted
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`review as to the following Grounds of the Starbucks Petition:
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` Ground 9 – claims 11-13 of the ’325 patent as being unpatentable
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`under 35 U.S.C. § 103(a) over the combination of Japanese
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`
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`2
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`
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`Unexamined Application No. H10-247183 to Brandt et al. (“Brandt”),
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`NetHopper Version 3.2 User’s Manual (“Nethopper”) and European
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`Unexamined App. No. EP 0845748A2 (“Carter”);
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` Ground 10 – claim 15 of the ’325 patent as being unpatentable under
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`35 U.S.C. § 103(a) over the combination of Brandt, NetHopper,
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`Carter and U.S. Patent No. 5,809,415 (“Rossmann”);
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` Ground 11 – claims 11-13 of the ’325 patent as being unpatentable
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`under 35 U.S.C. § 103(a) over the combination of Brandt, Alan
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`Demers et al., “The Bayou Architecture: Support for Data Sharing
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`Among Mobile Users” (“Demers”), Gustavo Alonso, et al.,
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`“Exotica/FMDC: A Workflow Management System for Mobile and
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`Disconnected Clients”) (“Alonso”) and Carter; and
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` Ground 12 – claim 15 of the of the ’325 patent as being unpatentable
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`under 35 U.S.C. § 103(a) over the combination of Brandt, Demers,
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`Alonso, Carter and Rossmann. CBM2015-00099, Paper 9 at 46.
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`Both Petitioner and Starbucks are among numerous defendants in
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`infringement lawsuits asserting the ’325 patent as well as several other Ameranth
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`patents (collectively, the “Ameranth patents”) in the U.S. District Court for the
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`Southern District of California. See Apple Petition at § II.A.2 (listing related
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`matters). The other three Ameranth Patents asserted in litigation are U.S. Patent
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`
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`3
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`
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`No. 6,982,733 (“the ’733 patent”), U.S. Patent No. 8,146,077 (the “’077 patent”)
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`and U.S. Patent No. 6,384,850 (“the ’850 patent”), for which there are multiple
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`other pending CBM proceedings. A summary of the CBM proceedings related to
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`the Ameranth Patents is provide below in Tables 1 and 2.
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`Table 1: Related Proceedings
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`Case
`
`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. 3, 2015 Expedia et al.
`CBM2015-00099 Mar. 6, 2015 Starbucks
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`Patent
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`Challenged
`Claims
`’733 patent 1-16
`’077 patent 1-18
`’850 patent 1-16
`’325 patent 1-15
`’850 patent 12-16
`’077 patent 1-18
`’325 patent 11-13, 15
`’850 patent 12-16
`’077 patent 1-18
`’850 patent 12-16
`’325 patent 11-13, 15
`’325 patent 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
`Mar. 20, 2015
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`4
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`CBM2015-00080
`CBM2015-00081
`CBM2015-00082
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`CBM2015-00091
`CBM2015-00095
`CBM2015-00096
`CBM2015-00097
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`CBM2015-00099
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`Instituted for claims 12-16 on ground under 35 U.S.C. § 103
`Institution denied
`Instituted for claims 11-13, and 15 on ground under 35 U.S.C.
`§ 103
`Instituted for claims 12-16 on grounds under 35 U.S.C. § 103
`Institution denied
`Instituted for claims 12-16 on ground under 35 U.S.C. § 103
`Instituted for claims 11-13, and 15 on ground under 35 U.S.C.
`§ 103
`Instituted for claims 11-13, and 15 on grounds under 35 U.S.C.
`§ 103
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`In addition to the present motion, Petitioner will be concurrently filing a
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`petition for Covered Business Method review of the ’850 patent (“the Apple ’850
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`Petition”), and a motion for joinder of the Apple ’850 Petition with CBM2015-
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`00091 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. Specifically, the Leahy-Smith America Invents
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`Act (“AIA”) provides for joinder of CBM proceedings. The statutory provision
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`governing joinder of CBM proceedings is 35 U.S.C. § 325(c) that reads as follows:
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`(c) JOINDER.-- If more than 1 petition for a post-grant [or covered
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`business method] review under this chapter is properly filed against
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`the same patent and the Director determines that more than 1 of these
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`petitions warrants the institution of a post-grant review under section
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`5
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`324, the Director may consolidate such reviews into a single postgrant
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`review.
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`In exercising its discretion to grant joinder, the Board considers the impact
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`of substantive and procedural issues on the proceedings, as well as other
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`considerations, while being “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” See Trulia, Inc. v. Zillow, Inc., Case CBM2014-
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`00115, Paper No. 8, May 1, 2014 at 18-19 (“Trulia”).
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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); Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-
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`00781 and IPR2014-782, Paper 5 at 3 (May 29, 2014).
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`The Board has identified a Representative Order, IPR2013-0004 Paper 15,
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`regarding motions for joinder. This Order requires that a motion for joinder must:
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`(1) “explain the reasons why joinder is appropriate,” (2) identify any new ground
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`of unpatentability being raised in [the] concurrently-filed petition”, (3) “explain
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`how the impact on the schedule and costs of the current proceedings will be
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`minimized” and (4) “specifically address how briefing and/or discovery may be
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`simplified to minimize schedule impact.” As discussed in greater detail below,
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`each of these factors weighs in favor of granting the present motion for joinder.
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`6
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`IV. ANALYSIS
`A. This Joinder Motion is Timely
`This Motion for Joinder is timely filed. Under 37 CFR § 42.222(b), joinder
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`can be requested without prior authorization no later than one month after the
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`institution date of the proceeding to which joinder is requested. Taiwan
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`Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and IPR2014-782,
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`Paper 5 at 3 (May 29, 2014). Because this Motion for Joinder is being filed no
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`later than one month after the Board instituted review of the Starbucks CBM on
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`September 14, 2015, it meets the requirements of 37 CFR § 42.222(b).
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`Joinder is Appropriate
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`B.
`Joinder of the Apple Petition with the Starbucks CBM is the most practical
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`way to secure the just, speedy and inexpensive resolution of these related
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`proceedings. See 37 C.F.R. § 42.1(b). The Apple Petition is intentionally
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`substantially identical to the Starbucks CBM in all substantive respects, except that
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`the Apple Petition omits grounds which were not instituted by the Board.
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`In particular, the Apple Petition challenges the same claims (claims 11-13
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`and 15) of the same patent (the ’325 patent) based on the same prior art on the
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`same grounds instituted by the Board. Moreover, the invalidity analysis in the
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`Apple Petition is virtually identical to the Starbucks CBM petition. Compare
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`Apple Petition at § V.B with Starbucks Petition at § V.B. The Apple Petition relies
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`7
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`on a declaration from the same expert declarant, and the expert’s declaration is
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`substantially identical to the declaration submitted in connection with the
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`Starbucks CBM with regard to substantive matters. Further, the Apple Petition has
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`substantially maintained the same exhibit numbering (particularly with respect to
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`prior art) with the Starbucks CBM.1 Thus, the Apple Petition presents no new
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`issues that would complicate or delay the proceeding.
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`Accordingly, joining the Apple Petition with the Starbucks CBM presents an
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`opportunity to streamline review of the Challenged Claims of the ’325 patent and
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`eliminate unnecessary duplication of filings, papers and efforts of the Petitioner,
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`Patent Owner and the Board.
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`C. No New Grounds of Unpatentability Are Asserted in the Petition
`The Apple Petition does not raise any new grounds of unpatentability. The
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`Apple Petition involves the same patent, same claims, same prior art and same
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`1 Exhibit 1045 (Ameranth’s complaints against Petitioner) necessarily differs due
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`to different real parties-in-interest in the Apple Petition and the Starbucks Petition.
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`Likewise, the Apple Petition includes a different Exhibit 1003 (Helal Declaration),
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`although this declaration in substantially identical in substance to Exhibit 1003 in
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`the Starbucks CBM. The Apple Petition also includes additional Exhibits 1062-
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`1066. Otherwise, all exhibits are the same.
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`8
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`grounds of unpatentability already instituted by the Board in the Starbucks CBM.
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`Specifically, the Apple Petition includes only Grounds 9-12 set forth in the
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`Starbucks Petition, which have already been instituted by the Board.
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`D. Consolidated Filings and Discovery
`To further ensure a streamlined process, and because the grounds of
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`unpatentability in the Apple Petition and Starbucks CBM are the same, Petitioner
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`agrees to refrain from taking positions inconsistent with Starbucks’ positions so
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`long as Starbucks remains a party to the joined CBM proceeding. In addition,
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`Petitioner agrees to allow Starbucks to lead the joined CBM proceeding on behalf
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`of all named petitioners so long as Starbucks remains a party to the joined CBM
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`proceeding.
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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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`and Reply). Specifically, so as to avoid lengthy and duplicative briefing, Petitioner
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`will agree to the following, so long as Starbucks remains a party to the CBM
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`proceeding:
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` incorporate its filings with those of Starbucks in a consolidated filing,
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`subject to the ordinary rules for one party on page limits;
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`9
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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` not be permitted to submit evidence separately from those in the
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`consolidated filings; and
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` not be permitted to make arguments separately from those advanced
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`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 Starbucks are using the same expert declarant who has
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`submitted a substantially similar declaration in the two proceedings. Additionally,
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`so long as Starbucks remains a party to the joined CBM proceeding, Petitioner will
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`agree to delegate to Starbucks the cross-examination of any witness produced by
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`Patent Owner and the deposition defense and redirect of any witness produced by
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`Starbucks and Petitioner, and to limit such cross-examinations and redirect to the
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`time normally allotted for one party. Petitioner will not receive any separate cross-
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`examination or redirect time.
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`E. No Impact on the CBM Trial Schedule
`The Apple Petition should have no impact, or a minimal impact if any, on
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`the Trial schedule, because it does not raise any issues that are not already before
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`the Board. As discussed above, the Apple Petition includes only those grounds
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`that were instituted, and in order to facilitate joinder with the Starbucks CBM, the
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`Apple Petition intentionally presents duplicates of the grounds set forth in the
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`Starbucks petition for which trial was instituted. Furthermore, because the Apple
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`10
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`Petition and Starbucks CBM both rely upon the same expert, it will be possible to
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`hold a single deposition for this witness covering all instituted grounds in both
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`proceedings.
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`F.
`Joinder will Streamline the Proceedings and Result in No
`Prejudice to the Patent Owner
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`Joinder will streamline the proceedings and reduce the costs and burden on
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`Petitioner, Patent Owner, and the Board. Joining these proceedings will eliminate
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`duplicate papers that must be filed, reviewed, and managed in each proceeding if
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`the 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 Starbucks
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`have 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 Patent Owner.
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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 Apple Petition with the Starbucks CBM consistent with the
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`following, which Starbucks does not oppose:
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`
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`The scheduling order entered for the Starbucks CBM will apply to the
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`joined proceedings;
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`11
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`Throughout the joined proceedings, Petitioner and Starbucks 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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`Starbucks will identify each such filing as a Consolidated Filing and will be
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`responsible for submitting all consolidated filings;
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`
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`So long as Starbucks remains a party to the joined CBM proceeding,
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`Petitioner will delegate to Starbucks to handle the cross examination of any
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`witness produced by Patent Owner and the redirect of any given witness produced
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`by Petitioner and Starbucks within the timeframe normally allotted by the rules for
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`one party. Petitioner will not receive any separate cross-examination or redirect
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`time; and
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`
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`Patent Owner will conduct any cross examination of any given
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`witness jointly produced by Petitioner and Starbucks and the redirect of any given
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`witness produced by Patent Owner within the timeframe normally allotted by the
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`rules for one cross- examination or redirect examination.
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`VI. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant joinder of the Apple Petition and the Starbucks CBM.
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`12
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`Respectfully Submitted,
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`
`
` /James M. Heintz/
`James M. Heintz
`Registration Number 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`(703) 773-4148
`
`Robert C. Williams
`DLA Piper LLP (US)
`401 B Street Suite 1700
`San Diego, CA 92101
`(619) 699-2820
`Attorneys for Petitioner
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`13
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`U.S. Patent No. 6,871,325
`Petitioner’s Motion for Joinder
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a copy of the foregoing Motion for
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`Joinder Under 35 U.S.C. § 325(c) and 37 C.F.R. §§ 42.22 and 42.222(b) was
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`served on Patent Owner Ameranth, Inc. on October 15, 2015, by emailing a copy
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`to counsel at the email addresses listed below:
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`John W. Osborne
`josborne@osborneipl.com
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`Michael D. Fabiano
`mdfabiano@fabianolawfirm.com
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` /James M. Heintz/
`James M. Heintz
`Reg. No. 41,828
`Counsel for Petitioner
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`By: