Trial@uspto.gov
`571-272-7822
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` Paper 18
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`Entered: July 22, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETAPP, INC.
`Petitioner,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2013-00319 (JYC)
`Patent 5,978,791
`____________
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
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`571-272-7822
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` Paper 18
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`
`Entered: July 22, 2013
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETAPP, INC.
`Petitioner,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2013-00319 (JYC)
`Patent 5,978,791
`____________
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`Case IPR2013-00319
`Patent 5,978,791
`
`INTRODUCTION
`
`NetApp, Inc. (“NetApp”) filed a petition requesting an inter partes review of
`claims 1-3, 29, and 35 of U.S. Patent 5,978,791 (“the ’791 patent”) (Paper 2,
`“Pet.”), and a motion for joinder with IPR2013-00082 (Paper 5, “Mot.”). In
`IPR2013-00082, the Board instituted an inter partes review based on the petition
`filed by EMC Corporation and VMware, Inc. (collectively “EMC”) on all of those
`claims except claim 35. (IPR2013-00082, Paper 21, Dec. 33.)
`Patent Owner, PersonalWeb Technologies, LLC (“PersonalWeb”) opposes
`the motion for joinder, and argues that joinder would be prejudicial to
`PersonalWeb because NetApp’s petition introduces an additional challenged claim,
`independent claim 35, as well as new substantive issues, arguments, and
`declarations. (Paper 16, “Opp.”)
`For the reasons set forth below, NetApp’s motion for joinder is denied.1
`
`DISCUSSION
`
`The Leahy-Smith America Invents Act (AIA) created new administrative
`trial proceedings, including inter partes review, as an efficient, streamlined, and
`cost-effective alternative to district court litigation. The AIA permits joinders of
`like proceedings. The Board, acting on the behalf of the Director, has the
`discretion to join an inter partes review with another inter partes review.
`Specifically, 35 U.S.C. § 315(c) provides the following (emphasis added):
`
`
`1 NetApp’s petition will be decided in a separate, forthcoming, decision.
`2
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`Case IPR2013-00319
`Patent 5,978,791
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`(c) JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary response
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes review
`under section 314.
`
`The AIA also makes clear that the one-year bar set forth in 35 U.S.C.
`§ 315(b) does not apply to a request for joinder under 35 U.S.C. § 315(c). In
`particular, 35 U.S.C. § 315(b) reads as follows (emphasis added):
`“(b) PATENT OWNER’S ACTION.—An inter partes review may not
`be instituted if the petition requesting the proceeding is filed more
`than 1 year after the date on which the petitioner, real party in interest,
`or privy of the petitioner is served with a complaint alleging
`infringement of the patent. The time limitation set forth in the
`preceding sentence shall not apply to a request for joinder under
`subsection (c).
`
`Further, in the case of joinder, the Board has the discretion to adjust the time
`period for issuing a final determination in the inter partes review. 35 U.S.C.
`§ 316(a)(11); 37 C.F.R. § 42.100(c).
`Joinder may be authorized when warranted, but the decision to grant joinder
`is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When exercising that
`discretion, the Board is mindful that patent trial regulations, including the rules for
`joinder, must be construed to secure the just, speedy, and inexpensive resolution of
`every proceeding. 37 C.F.R. § 42.1(b).2
`
`
`2 35 U.S.C. § 316(b) (“In prescribing regulations under this section, the Director
`shall consider the effect of any such regulation on the economy, the integrity of the
`3
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`Case IPR2013-00319
`Patent 5,978,791
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`As a moving party, NetApp has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c) and 42.122(b). A motion
`for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify
`any new grounds of unpatentability asserted in the petition; (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing review;
`and (4) specifically address how briefing and discovery may be simplified.
`See e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper No. 15 at 4
`(PTAB, Apr. 24, 2013); FAQ H5 on the Board’s website at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`Furthermore, as indicated in the legislative history, the Board will determine
`whether to grant joinder on a case-by-case basis taking account the particular facts
`of each case. (See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of
`Sen. Kyl)(When determining whether and when to allow joinder, the Office may
`consider factors including the breadth or unusualness of the claim scope, claim
`construction issues, and consent of the patent owner.) More specifically, the Board
`considers the impact of both substantive issues and procedural matters on the
`proceedings, as well as other considerations.
`
`1. Substantive Issues
`
`In its motion, NetApp asserts that joinder with IPR2013-00082 would not
`prejudice the patent owner or other petitioners, and would not cause any undue
`complication or delay. (Mot. 6-8.) In support of those assertions, NetApp
`
`
`patent system, the efficient administration of the Office, and the ability of the
`Office to timely complete proceedings instituted under this chapter.”)
`4
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`Case IPR2013-00319
`Patent 5,978,791
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`contends that “the inclusion of claim 35 does not raise substantial issues that are
`not already before the Board” and “will not materially add to the analysis that must
`be performed by the parties or the Board in a joined proceeding.” (Mot. 7.)
`According to NetApp, “the same features of the same prior art apply to claim 35 as
`are currently applied in the EMC IPR to claim 4 and its base independent claim 1,”
`and its petition presents “the same technical analysis for claim 35 as that already
`presented in the EMC IPR for claim 4.” (Mot. 6-8.)
`PersonalWeb counters that joinder “would be prejudicial to Patent Owner
`because it would: (a) introduce a new claim (claim 35) not previously challenged,
`as well as new claim language and construction issues regarding that claim, (b) add
`a new party (NetApp) not previously named, and (c) add new declarations and
`arguments that are different than those in [IPR]2013-00082.” (Opp. 6.) In
`particular, PersonalWeb argues that Dr. Douglas Clark’s declaration submitted by
`NetApp contains new testimony and arguments not previously presented in
`IPR2013-00082. (Id.) It is PersonalWeb’s view that NetApp’s petition “will
`require significant additional analysis and expense on behalf of patent owner.”
`(Id.) We agree.
`NetApp’s arguments for joinder are unavailing, as the inclusion of claim 35
`would raise substantive issues that are not before the Board in IPR2013-00082.
`For instance, claim 35 contains claim terms (e.g., “determining whether the
`particular identifier is in the set of data items”) that are not recited in claims 1
`and 4. (Pet. 15-16.) Through its claim construction analysis, NetApp raises
`substantive issues that are related to lack of enablement and written description
`under 35 U.S.C. 112, ¶ 1, and indefiniteness under 35 U.S.C. 112, ¶ 2. (Id.)
`
`5
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`Case IPR2013-00319
`Patent 5,978,791
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`Notably, NetApp directs the Board’s attention to a claim drafting error that
`raises questions of unpatentability under 35 U.S.C. § 112, and urges the Board to
`adopt a claim construction that would ignore “the literal wording of the claim
`term.” (Id.) Particularly, NetApp, in its petition, asserts that claim 35 “contains a
`limitation that appears to be a drafting error and should be interpreted in a way that
`conforms to the context of the claim and that allows the claim to be arguably
`enabled and described.” (Id.) Yet, NetApp indicates that it “does not concede that
`claim 35 is enabled or described.” (Id.) NetApp also states the following in its
`petition (id., emphasis added):
`Claim 35 refers to “a set of identifiers” at 43:53-54 but does not refer to
`“a set of data items” preceding the claim term. Thus, the proffered
`construction makes the claim term consistent with the passage at lines
`53-54, whereas the claim term in its literal form is inconsistent. The
`proffered construction also maintains antecedent basis, since the second
`and subsequent times a claim term is used, it should be referred to as
`“the” item and rather than “a” item. Additionally, a different construction
`that would seek to preserve the literal wording of the claim term would not
`find enablement or description in the specification, and furthermore, would
`not even make sense, since a “set of data items” does not include
`“identifiers.”
`
`Contrary to NetApp’s contentions, NetApp’s petition clearly presents new
`unpatentability analysis and substantive issues beyond those in IPR2013-00082.
`More importantly, NetApp fails to explain adequately the impact of those new
`substantive issues on the patent owner, other petitioners, and the trial schedule of
`IPR2013-00082.
`
`6
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`Case IPR2013-00319
`Patent 5,978,791
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`2. Procedural Matters
`
`While NetApp recognizes that joinder could extend the trial schedule of
`IPR2013-00082, NetApp merely characterizes the impact as minimal and argues
`that such an extension is permitted under the statute. (Mot. 7.) PersonalWeb
`counters that the additional information, arguments, analysis, and declarations
`would cause the schedule of IPR2013-00082 to be extended, possibly for six
`months. (Opp. 7.) We agree with PersonalWeb that the impact is not minimal in
`light of the new substantive issues discussed above.
`NetApp’s contention, at best, may justify a short extension of time in a
`simple case where there are no other pending related inter partes reviews. Here, in
`contrast, EMC and PersonalWeb maintain five other related inter partes reviews—
`namely IPR2013-00083, IPR2013-00084, IPR2013-00085, IPR2013-00086, and
`IPR2013-00087—for patents that share a common disclosure with the ’791 patent.
`NetApp fails to recognize that the discovery process and trial schedule for
`IPR2013-00082 have been coordinated and synchronized with those five related
`inter partes reviews. (IPR2013-00082, Paper 32.) For instance, the parties have
`stipulated to a single deposition useable in all six trials for each of EMC’s
`declarant. (Paper 44.) As set forth in the Schedule Orders, DUE DATES 1
`through 7 for all six trials are the same (e.g., the due dates for filing a patent owner
`response, motion to amend, reply, and opposition), and oral hearings, if requested,
`will be conducted on the same day.
`NetApp does not provide adequate explanations as to how its new
`declarations and additional substantive issues would not substantially affect the
`
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`Case IPR2013-00319
`Patent 5,978,791
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`coordinated discovery and increase costs. Moreover, NetApp fails to address
`sufficiently the impact joinder would have on the synchronized trial schedule.
`The time set forth in 37 C.F.R. § 42.100(c) can be extended by up to six
`months for good cause or adjusted by the Board in the case of joinder. However, a
`good cause showing has not been provided for the five related inter partes reviews.
`Thus, joinder most likely would affect the Board’s ability to complete all six
`reviews timely.
`
`3. Other Considerations
`
`NetApp was served with a complaint alleging infringement of the ’791
`patent, on December 16, 2011. (Ex. 2001.) NetApp could have filed a petition for
`inter partes review of the ’791 patent, prior to the expiration of the one-year time
`under 35 U.S.C. § 315(b), but did not do so. Rather, NetApp filed its petition on
`May 30, 2013.
`NetApp argues that its request for joinder is timely and the time period set
`forth in 37 C.F.R. § 42.101(b) does not apply to its petition because the petition
`was filed with a request for joinder under 37 C.F.R. § 42.122(b). (Mot. 5-6.) In
`response, PersonalWeb contends that NetApp’s motion for joinder should be
`denied because, in PersonalWeb’s view, “an IPR petition filed more than one year
`after the petitioner was served with a complaint alleging infringement of the patent
`is barred” and “not properly filed as required by § 315(c).” (Opp. 1-5.)
`As an initial matter, we decline to adopt PersonalWeb’s statutory
`interpretation, as it would render the last sentence of 35 U.S.C. § 315(b)
`meaningless. Indeed, PersonalWeb’s statutory construction erroneously
`incorporates the one-year bar set forth in the first sentence of 35 U.S.C. § 315(b)
`8
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`Case IPR2013-00319
`Patent 5,978,791
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`into the statutory language of 35 U.S.C. § 315(c)—“any person who properly files
`a petition under section 311” (emphasis added). Under PersonalWeb’s
`interpretation, no party served with a complaint more than one year beforehand,
`even one who files an identical petition as the first petition, accompanied by a
`request for joinder, could ever join with an instituted review. Such an
`interpretation ignores the last sentence of 35 U.S.C. § 315(b) and the legislative
`history. See 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 . . .”).
`In any event, we determine that NetApp has not demonstrated that its need
`for a cost-effective alternative to district court litigation outweighs the impact of
`joinder, including the burden and prejudice to the parties as we discussed above.
`Moreover, NetApp fails to establish that joinder would promote efficient resolution
`of the unpatentability issues without substantially affecting the schedule for
`IPR2013-00082 and the five other related inter partes reviews. NetApp, thus, has
`not satisfied its burden of proof in showing entitlement to the requested relief—
`namely joinder with IPR2013-00082. Accordingly, exercising our discretion under
`35 U.S.C. § 315(c), we decline to authorize joinder and deny NetApp’s motion for
`joinder.
`
`ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that NetApp’s motion for joinder is denied.
`
`9
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`Case IPR2013-00319
`Patent 5,978,791
`
`PETITIONER:
`David McCombs, Esq.
`Thomas W. Kelton, Esq.
`Haynes and Boone, LLP
`David.mccombs@haynesboone.com
`Thomas.kelton@haynesboone.com
`
`
`
`PATENT OWNER:
`Joseph A. Rhoa, Esq.
`Updeep. S. Gill, Esq.
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`
`10
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