Trials@uspto.gov IPR2014-00812 Paper 12
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`571-272-7822
`IPR2014-00086 Paper 16
`Date Entered: June 25, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`TWITTER, INC. AND YELP INC.
`Petitioner
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`v.
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`EVOLUTIONARY INTELLIGENCE, LLC
`Patent Owner
`____________
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`Case IPR2014-00812
`Case IPR2014-00086
`Patent 7,101,536
`____________
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`
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`Before, KALYAN K. DESHPANDE, TREVOR M. JEFFERSON,
`BRIAN J. McNAMARA, NEIL T. POWELL, and
`GREGG I. ANDERSON, Administrative Patent Judges.
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`McNAMARA, Administrative Patent Judge.
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`DECISION GRANTING
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
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`

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`Case IPR2014-00812
`Patent 7,010,536
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`BACKGROUND
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`On May 23, 2014, Twitter, Inc. (“Twitter”) and Yelp Inc. (“Yelp”)
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`(collectively “Petitioner”) petitioned for inter partes review of claims 2-14 and 16
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`of U.S. Patent No. 7,101,536 (“the ’536 Patent”) pursuant to 35 U.S.C. § 311 et
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`seq. Papers 1, 8 (“Petition”). Petitioner also timely moved for joinder with Apple
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`Inc. v. Evolutionary Intelligence LLC, IPR2014-00086 (“the Apple IPR”). Paper 4
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`(“Motion For Joinder”). In a separate order entered today, we granted the Petition
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`on the same grounds as those on which we instituted trial in the Apple IPR.1 As
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`discussed below, joining Twitter and Yelp as petitioners in IPR2014-00086 will
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`not delay the schedule or unduly complicate that proceeding. Therefore, we grant
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`Petitioner’s Motion For Joinder.
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`On June 3, 2014, we conducted a teleconference with counsel for Petitioner
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`and Evolutionary Intelligence LLC. (“Patent Owner”). During that teleconference,
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`Petitioner’s counsel confirmed that its challenges to claims 2-12, 14 and 16 of the
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`’536 Patent in this proceeding are the same as those presented in the Apple IPR on
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`which we instituted a trial. Petitioner’s counsel also agreed to withdraw its
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`challenge to claim 13 on which we did not institute a trial in the Apple IPR. Thus,
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`the challenges asserted in IPR2014-00086 and IPR2014-00812 are identical.
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`During the teleconference, we also discussed procedural matters related to
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`Petitioner’s Motion For Joinder. Petitioner agreed that joinder required no changes
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`to Scheduling Order in IPR2014-00084, Paper 9.
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`Because the grounds of unpatentability in the Apple IPR and the present
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`proceeding are the same, during the call, the petitioners (Apple and collectively,
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`Twitter and Yelp) agreed that the case is amenable to consolidated filings. Apple
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`1 We instituted trial on challenges to claims 2-12, 14 and 16 as anticipated under 35
`U.S.C. § 102(e) by U.S. Patent 5,836,529 to Gibbs, et. al. We did not institute a
`trial in either proceeding based on challenges to claim 13.
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`2
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`

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`Case IPR2014-00812
`Patent 7,010,536
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`will be responsible for the consolidated filing. Any separate filing by the
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`petitioners in the joined proceeding is limited to a single paper, filed by Twitter
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`and Yelp, the collective Petitioner in this proceeding, of no more than seven pages
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`directed only to points of disagreement with Apple. As the collective Petitioner in
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`this proceeding, Twitter and Yelp are not permitted any individual filings and are
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`not permitted any argument in furtherance of those advanced by Apple. Patent
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`Owner is permitted a corresponding number of pages to respond separately to
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`filings made collectively by Twitter and Yelp.
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`In IPR2014-00086, Apple cites the testimony of Dr. Henry Houh. Twitter
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`and Yelp, the collective Petitioner in this proceeding, also cite the testimony of Dr.
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`Henry Houh. During the teleconference, it was agreed that Dr. Houh would be
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`subject to a single cross examination in the joined proceeding, and not separately
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`in each proceeding. Counsel representing Twitter and Yelp, collectively, and
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`counsel representing Apple stated that they would work together to manage
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`depositions of Patent Owner’s witnesses within ordinary time limits. At this time,
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`there are no proposals to extend the allotted deposition times for cross examination
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`or redirect.
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` In view of these circumstances, during the teleconference, Patent Owner
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`stated that it does not oppose the joinder and has filed no opposition to the Motion
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`For Joinder. Apple also does not oppose the joinder.
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`Accordingly, it is:
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`ORDER
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`ORDERED that IPR2014-00812 and IPR2014-00086 are joined;
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`FURTHER ORDERED that the grounds on which IPR2014-00086 was
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`instituted are unchanged;
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`3
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`Case IPR2014-00812
`Patent 7,010,536
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`FURTHER ORDERED the Scheduling Order in place for IPR2014-00086 is
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`unchanged;
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`FURTHER ORDERED that throughout this proceeding, Apple, and Twitter
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`and Yelp collectively, will file papers, except for motions which do not involve
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`another party, as consolidated filings. Apple will identify each such filing as a
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`consolidated filing and will be responsible for completing all consolidated filings.
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`Twitter and Yelp collectively, may file an additional paper, not to exceed seven
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`pages, which may address only points of disagreement with points asserted in
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`Apple’s consolidated filings. Any such filing by Twitter and Yelp collectively,
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`must specifically identify and explain each point of disagreement. Twitter and
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`Yelp may not file arguments in support of points made in Apple’s consolidated
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`filing;
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`FURTHER ORDERED that, in response to any consolidated filing, Patent
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`Owner may respond separately to any separate paper filed collectively by Twitter
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`and Yelp. Any such separate response may not exceed the number of pages in the
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`separate paper filed collectively by Twitter and Yelp and is limited to issues raised
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`in that paper;
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`FURTHER ORDERED that Patent Owner will conduct cross examination of
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`any witnesses, as well as the redirect of any witness Patent Owner produces, in the
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`joined proceeding within the timeframe normally allotted by the rules;
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`FURTHER ORDERED that Apple and Twitter and Yelp, collectively, will
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`designate attorneys to conduct the cross-examination of any witness produced by
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`Patent Owner and the redirect of any witness produced by Apple or Twitter and
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`Yelp, within the timeframe normally allotted by the rules for one party. Apple and
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`Twitter and Yelp, collectively, will not receive any separate cross-examination or
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`redirect time;
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`Case IPR2014-00812
`Patent 7,010,536
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`FURTHER ORDERED that any requests by any party for additional
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`deposition time must be brought before the Board;
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`FURTHER ORDERED that this proceeding (IPR2014-00821) is terminated
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`under 37 C.F.R. § 42.72 and all further filings in the joined proceeding shall be
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`made in IPR2014-00086; and
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`FURTHER ORDERED that the case caption in IPR2014-00086 shall be
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`changed to reflect joinder with this proceeding in accordance with the attached
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`example.
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`5
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`Case IPR2014-00812
`Patent 7,010,536
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`PETITIONER:
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`Jeffrey Kushan
`Sidley Austin LLP
`jkushan@sidley.com
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`Vaibhav P. Kadaba
`Kilpatrick Townsend & Stockton LLP
`wkadaba@kilpatricktownsend.com
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`PATENT OWNER
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`Anthony Patek
`Todd Kennedy
`Gutride Safier LLP
`pto@gutridesafier.com
`todd@gutridesafier.com
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`6
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`Case IPR2014-00812
`Patent 7,010,536
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`APPLE INC.
`TWITTER, INC. AND YELP INC.
`Petitioners
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`v.
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`EVOLUTIONARY INTELLIGENCE, LLC
`Patent Owner
`____________
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`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,101,536
`____________
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`7