UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC., EVENTBRITE, INC. and STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.
`
`Petitioner
`v.
`
`AMERANTH, INC.,
`
`Patent Owner
`
`
`
`CASE CBM Unassigned
`
`Patent No. 6,384,850
`
`
`
`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
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC., EVENTBRITE, INC. and STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.
`
`Petitioner
`v.
`
`AMERANTH, INC.,
`
`Patent Owner
`
`
`
`CASE CBM Unassigned
`
`Patent No. 6,384,850
`
`
`
`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
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`STATEMENT OF RELIEF REQUESTED ................................................... 1
`I.
`BACKGROUND ............................................................................................ 2
`II.
`III. LEGAL STANDARD .................................................................................... 5
`IV. ANALYSIS ..................................................................................................... 6
`A.
`This Joinder Motion is Timely ............................................................. 6
`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.
`
`
`
`i
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. §§ 42.22 and 42.222(b), Apple
`
`Inc., Eventbrite, Inc. and Starwood Hotels & Resorts Worldwide, Inc. (collectively
`
`“Petitioner”) respectfully requests joinder of the concurrently filed Petition for
`
`Covered Business Method (“CBM”) review of U.S. Patent No. 6,384,850 (“the
`
`’850 patent) (“Apple Petition”) with the instituted and on-going CBM Trial under
`
`Case No. CBM2015-00091 (“Starbucks CBM”), which was instituted on
`
`September 14, 2015. CBM2015-00091, Paper 9. The Apple Petition seeks review
`
`of the same claims (claims 12-16) of the same patent (the ’850 patent) on the same
`
`grounds under 35 U.S.C. § 103 as the Starbucks CBM. Further, the Apple Petition
`
`and Starbucks CBM rely on the same the same expert declarant, the same prior art
`
`and the same invalidity analysis. Indeed, in order to minimize any additional
`
`burden that would result from the joinder requested in this Motion, the substantive
`
`portions of the Apple Petition are intentionally identical to the petition submitted
`
`by Starbucks in CBM2015-00091 (“Starbucks Petition”), except that the Apple
`
`Petition excludes grounds that were not instituted by the Board.
`
`Joinder is appropriate because it will promote efficient resolution of the
`
`validity of the ’850 patent as the timely-filed Apple Petition involves the same
`
`patent, the same claims, the same prior art, and the same instituted grounds set
`
`forth in the Starbucks CBM. No new or additional grounds of unpatentability are
`
`
`
`1
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`set forth in the Apple Petition, and there will be no impact, or minimal impact if
`
`any, on the trial schedule for the existing review. Further, Petitioner lists
`
`procedures the Board may adopt to simplify briefing and discovery. This includes
`
`consolidated filings and discovery and eliminating the duplicate hearings and
`
`briefing that would surely accompany separate proceedings. Joinder should also
`
`provide for case management efficiencies for the Board.
`
`In light of the similarities of the Apple Petition and Starbucks CBM and the
`
`efficiencies that can be realized via joinder, Petitioner respectfully requests that the
`
`Board join the Apple Petition and the Starbucks CBM.
`
`II. BACKGROUND
`On March 2, 2015, Starbucks filed a petition requesting CBM review of
`
`claims 12-16 of the ’850 patent on eleven grounds of unpatentability under 35
`
`U.S.C. §§ 101, 102, 103 and 112. CBM2015-00091, Paper 1. Ameranth Inc.
`
`(“Patent Owner” or “Ameranth”) submitted a Preliminary Response on June 15,
`
`2015. CBM2015-00091, Paper 7.
`
`On September 14, 2015, the Board entered a decision instituting CBM
`
`review on two of the eleven requested grounds. Specifically, the Board instituted
`
`review as to Ground 9 of the Starbucks Petition, i.e. claims 12-16 of the ’850
`
`patent as being unpatentable under 35 U.S.C. § 103(a) over the combination of
`
`Japanese Unexamined Application No. H10-247183 to Brandt et al. (“Brandt”) and
`
`
`
`2
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`NetHopper Version 3.2 User’s Manual (“Nethopper”), and as to Ground 10 of the
`
`Starbucks Petition, i.e. claims 12-16 of the ’850 patent as being unpatentable under
`
`35 U.S.C. § 103(a) over the combination of Brandt, Alan Demers et al., “The
`
`Bayou Architecture: Support for Data Sharing Among Mobile Users” (“Demers”)
`
`and Gustavo Alonso, et al., “Exotica/FMDC: A Workflow Management System for
`
`Mobile and Disconnected Clients”) (“Alonso”). CBM2015-00091, Paper 9 at 42.
`
`The Board declined to institute trial on Grounds 1-8 and 11 of the Starbucks
`
`Petition.
`
`Both Petitioner and Starbucks are among numerous defendants in
`
`infringement lawsuits asserting the ’850 patent as well as several other Ameranth
`
`patents (collectively, the “Ameranth patents”) in the U.S. District Court for the
`
`Southern District of California. See Apple Petition at § II.A.2 (listing related
`
`matters). The other three Ameranth Patents asserted in litigation are U.S. Patent
`
`No. 6,982,733 (“the ’733 patent”), U.S. Patent No. 8,146,077 (the “’077 patent”)
`
`and U.S. Patent No. 6,871,325 (“the ’325 patent”), for which there are multiple
`
`other pending CBM proceedings. A summary of the CBM proceedings related to
`
`the Ameranth Patents is provide below in Tables 1 and 2.
`
`Table 1: Related Proceedings
`
`Case
`
`Petition
`Filed
`CBM2014-00013 Oct. 15, 2013 Apple et al.
`
`Petitioner
`
`Patent
`
`Challenged
`Claims
`’733 patent 1-16
`
`
`
`3
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`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
`
`’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
`
`Table 2: Status of Related Proceedings
`
`Case
`CBM2014-00013
`
`CBM2014-00014
`CBM2014-00015
`
`CBM2014-00016
`
`CBM2015-00080
`CBM2015-00081
`CBM2015-00082
`
`CBM2015-00091
`CBM2015-00095
`CBM2015-00096
`CBM2015-00097
`
`CBM2015-00099
`
`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
`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
`
`
`
`4
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`In addition to the present motion, Petitioner will be concurrently filing a
`
`petition for Covered Business Method review of the ’325 patent (“the Apple ’325
`
`Petition”), and a motion for joinder of the Apple ’325 Petition with CBM2015-
`
`00099 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. Specifically, the Leahy-Smith America Invents
`
`Act (“AIA”) provides for joinder of CBM proceedings. The statutory provision
`
`governing joinder of CBM proceedings is 35 U.S.C. § 325(c) that reads as follows:
`
`(c) JOINDER.-- If more than 1 petition for a post-grant [or covered
`
`business method] review under this chapter is properly filed against
`
`the same patent and the Director determines that more than 1 of these
`
`petitions warrants the institution of a post-grant review under section
`
`324, the Director may consolidate such reviews into a single postgrant
`
`review.
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`of substantive and procedural issues on the proceedings, as well as other
`
`considerations, while being “mindful that patent trial regulations, including the
`
`rules for joinder, must be construed to secure the just, speedy, and inexpensive
`
`
`
`5
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`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`resolution of every proceeding.” See Trulia, Inc. v. Zillow, Inc., Case CBM2014-
`
`00115, Paper No. 8, May 1, 2014 at 18-19 (“Trulia”).
`
`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); Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-
`
`00781 and IPR2014-782, Paper 5 at 3 (May 29, 2014).
`
`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
`
`of unpatentability being raised in [the] concurrently-filed petition”, (3) “explain
`
`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
`
`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.
`
`IV. ANALYSIS
`A. This Joinder Motion is Timely
`This Motion for Joinder is timely filed. Under 37 CFR § 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 Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and IPR2014-782,
`
`
`
`6
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`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`Paper 5 at 3 (May 29, 2014). Because this Motion for Joinder is being filed no
`
`later than one month after the Board instituted review of the Starbucks CBM on
`
`September 14, 2015, it meets the requirements of 37 CFR § 42.222(b).
`
`Joinder is Appropriate
`
`B.
`Joinder of the Apple Petition with the Starbucks 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 Apple Petition is intentionally
`
`substantially identical to the Starbucks CBM in all substantive respects, except that
`
`the Apple Petition omits grounds which were not instituted by the Board.
`
`In particular, the Apple Petition challenges the same claims (claims 12-16)
`
`of the same patent (the ’850 patent) based on the same prior art on the same
`
`grounds instituted by the Board. Moreover, the invalidity analysis in the Apple
`
`Petition is virtually identical to the Starbucks CBM petition. Compare Apple
`
`Petition at § V.B with Starbucks Petition at § V.B. The Apple Petition relies on a
`
`declaration from the same expert declarant, and the expert’s declaration is
`
`substantially identical to the declaration submitted in connection with the
`
`Starbucks CBM with regard to substantive matters. Further, the Apple Petition has
`
`substantially maintained the same exhibit numbering (particularly with respect to
`
`
`
`7
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`prior art) with the Starbucks CBM.1 Thus, the Apple Petition presents no new
`
`issues that would complicate or delay the proceeding.
`
`Accordingly, joining the Apple Petition with the Starbucks CBM presents an
`
`opportunity to streamline review of the Challenged Claims of the ’850 patent and
`
`eliminate unnecessary duplication of filings, papers and efforts of the Petitioner,
`
`Patent Owner and the Board.
`
`C. No New Grounds of Unpatentability Are Asserted in the Petition
`The Apple Petition does not raise any new grounds of unpatentability. The
`
`Apple Petition involves the same patent, same claims, same prior art and same
`
`grounds of unpatentability already instituted by the Board in the Starbucks CBM.
`
`Specifically, the Apple Petition includes only Grounds 9 and 10 set forth in the
`
`Starbucks Petition, which have already been instituted by the Board.
`
`
`1 Exhibits 1045 (Ameranth’s complaints against Petitioner) necessarily differs due
`
`to different real parties-in-interest in the Apple Petition and the Starbucks Petition.
`
`Likewise, the Apple Petition includes a different Exhibit 1003 (Helal Declaration),
`
`although this declaration in substantially identical in substance to Exhibit 1003 in
`
`the Starbucks CBM. The Apple Petition also includes additional Exhibits 1052-
`
`1056. Otherwise, all exhibits are the same.
`
`
`
`8
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`D. Consolidated Filings and Discovery
`To further ensure a streamlined process, and because the grounds of
`
`unpatentability in the Apple Petition and Starbucks CBM are the same, Petitioner
`
`agrees to refrain from taking positions inconsistent with Starbucks’ positions so
`
`long as Starbucks remains a party to the joined CBM proceeding. In addition,
`
`Petitioner agrees to allow Starbucks to lead the joined CBM proceeding on behalf
`
`of all named petitioners so long as Starbucks remains a party to the joined CBM
`
`proceeding.
`
`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,
`
`and Reply). Specifically, so as to avoid lengthy and duplicative briefing, Petitioner
`
`will agree to the following, so long as Starbucks remains a party to the CBM
`
`proceeding:
`
` incorporate its filings with those of Starbucks in a consolidated filing,
`
`subject to the ordinary rules for one party on page limits;
`
` not be permitted to submit evidence separately from those in the
`
`consolidated filings; and
`
`
`
`9
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
` not be permitted to make arguments separately from those advanced
`
`in the consolidated filings.
`
`Petitioner will also agree to consolidated discovery. This is appropriate
`
`given that Petitioner and Starbucks are using the same expert declarant who has
`
`submitted a substantially similar declaration in the two proceedings. Additionally,
`
`so long as Starbucks remains a party to the joined CBM proceeding, Petitioner will
`
`agree to delegate to Starbucks the cross-examination of any witness produced by
`
`Patent Owner and the deposition defense and redirect of any witness produced by
`
`Starbucks and Petitioner, and to limit such cross-examinations and redirect to the
`
`time normally allotted for one party. Petitioner will not receive any separate cross-
`
`examination or redirect time.
`
`E. No Impact on the CBM Trial Schedule
`The Apple Petition should have no impact, or a minimal impact if any, on
`
`the Trial schedule, because it does not raise any issues that are not already before
`
`the Board. As discussed above, the Apple Petition includes only those grounds
`
`that were instituted, and in order to facilitate joinder with the Starbucks CBM, the
`
`Apple Petition intentionally presents duplicates of the grounds set forth in the
`
`Starbucks petition for which trial was instituted. Furthermore, because the Apple
`
`Petition and Starbucks CBM both rely upon the same expert, it will be possible to
`
`
`
`10
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`hold a single deposition for this witness covering all instituted grounds in both
`
`proceedings.
`
`F.
`Joinder will Streamline the Proceedings and Result in No
`Prejudice to the Patent Owner
`
`Joinder will streamline the proceedings and reduce the costs and burden on
`
`Petitioner, Patent Owner, 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 Starbucks
`
`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 Patent Owner.
`
`V.
`
`PROPOSED ORDER
`
`In light of the benefits of joinder described above, Petitioner proposes an
`
`order joining the Apple Petition with the Starbucks CBM consistent with the
`
`following, which Starbucks does not oppose:
`
`
`
`The scheduling order entered for the Starbucks CBM will apply to the
`
`joined proceedings;
`
`
`
`11
`
`
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`
`
`Throughout the joined proceedings, Petitioner and Starbucks 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
`
`Starbucks will identify each such filing as a Consolidated Filing and will be
`
`responsible for submitting all consolidated filings;
`
`
`
`So long as Starbucks remains a party to the joined CBM proceeding,
`
`Petitioner will delegate to Starbucks to handle the cross examination of any
`
`witness produced by Patent Owner and the redirect of any given witness produced
`
`by Petitioner and Starbucks within the timeframe normally allotted by the rules for
`
`one party. Petitioner will not receive any separate cross-examination or redirect
`
`time; and
`
`
`
`Patent Owner will conduct any cross examination of any given
`
`witness jointly produced by Petitioner and Starbucks and the redirect of any given
`
`witness produced by Patent Owner within the timeframe normally allotted by the
`
`rules for one cross- examination or redirect examination.
`
`VI. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`grant joinder of the Apple Petition and the Starbucks CBM.
`
`
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`12
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`
`
`Respectfully Submitted,
`
`U.S. Patent No. 6,384,850
`Petitioner’s Motion for Joinder
`
`
`
` /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. 6,384,850
`Petitioner’s Motion for Joinder
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the foregoing Motion for
`
`Joinder Under 35 U.S.C. § 325(c) and 37 C.F.R. §§ 42.22 and 42.222(b) was
`
`served on Patent Owner Ameranth, Inc. on October 15, 2015, by emailing a copy
`
`to counsel at the email addresses listed below:
`
`John W. Osborne
`josborne@osborneipl.com
`
`Michael D. Fabiano
`mdfabiano@fabianolawfirm.com
`
`
`
`
`
`
`
` /James M. Heintz/
`James M. Heintz
`Reg. No. 41,828
`Counsel for Petitioner
`
`By:
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