`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAP America Inc.,
`
`Petitioner,
`
`v.
`
`Clouding IP, LLC
`
`Patent Owner.
`
`IPR2014-00306
`
`Patent 6,738,799
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c) and 37 C.F.R.
`§ 42.122(b)
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED............................... 1
`
`Page
`
`II.
`
`STATEMENT OF MATERIAL FACTS ......................................................... 1
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ......................... 3
`
`Joinder will not impact the Board’s ability to complete the review in a
`A.
`timely manner ...................................................................................................... 5
`
`Joinder will promote efficiency by consolidating issues, avoiding
`B.
`duplicate efforts, and preventing inconsistencies ................................................ 6
`
`C. Without joinder, SAP may be prejudiced .................................................. 7
`
`D.
`
`Joinder will not prejudice Clouding or Unified ......................................... 7
`
`IV. CONCLUSION ................................................................................................ 8
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page
`
`Mortorola Mobility LLC v. Softview LLC, Case IPR2013-00256 ......................... 6, 8
`
`Dell, Inc. v. Network-1 Security Solutions, Inc., Case IPR2013-00385 ............ 4, 6, 8
`
`STATUTES
`
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`
`35 U.S.C. § 316(a) ................................................................................................. 5, 7
`
`REGULATIONS
`
`37 C.F.R. § 42.22 ....................................................................................................... 1
`
`37 C.F.R. § 42.100(c) ............................................................................................. 5, 7
`
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`77 Fed. Reg. 48,680 (Aug. 14, 2012) ........................................................................ 5
`
`OTHER AUTHORITIES
`
`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) .................................................... 5
`
`ii
`
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Petitioner SAP America Inc., (“SAP” or “Petitioner”) respectfully requests
`
`joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the above-
`
`captioned inter partes review (hereinafter “IPR”) with the pending inter partes
`
`review concerning the same patent in Unified Patents, Inc. v. Clouding IP, LLC,
`
`Case IPR2013-00586 (“Unified IPR”), which was instituted on March 21, 2014.
`
`Joinder is appropriate because it will promote efficient and consistent resolution of
`
`the validity of a single patent and will not prejudice the parties to the Unified IPR.
`
`Absent joinder, SAP may be prejudiced because their interests will not be
`
`adequately represented in the Unified IPR.
`
`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`as is submitted within one month of March 21, 2014, the date that the Unified IPR
`
`was instituted.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1. On August 17, 2013, Clouding IP, LLC (“Clouding” or “Patent
`
`Owner”), which purports to be the owner of U.S. Patent No. 6,738,799 (the “’799
`
`Patent”), filed a complaint accusing SAP of infringing several patents, including
`
`the ‘799 patent. Clouding IP, LLC v. SAP AG, et al., D. Del., Case No. 1:13-cv-
`
`01456 (hereinafter, “the Underlying Litigation”).
`
`1
`
`
`
`
`
`2. Unified Patents, Inc. (“Unified”) filed its petition for inter partes
`
`review of the ’799 Patent on September 16, 2013 (“The Unified Petition”).
`
`IPR2013-00586, Paper 1.
`
`3. Clouding has not asserted the ‘799 Patent against Unified. IPR2013-
`
`00586, Paper 1 at 4.
`
`4. The Unified Petition included the following six grounds for
`
`invalidity:
`
`a) Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30 and 31 Are
`Rendered Obvious by Balcha in view of Miller under 35 U.S.C.
`§ 103
`
`b) Claims 37 and 42 Are Anticipated by Balcha under 35 U.S.C. §
`102(e)
`
`c) Claims 6-8 and 17-19 Are Rendered Obvious by Balcha, Miller
`and Freivald under 35 U.S.C. § 103
`
`d) Claims 1, 12, 23, 24, 30, 31, 37, and 42 Are Anticipated by
`Williams under 35 U.S.C. § 102(e)
`
`e) Claims 5-10 and 16-21 Are Rendered Obvious by Williams in
`View of Miller under 35 U.S.C. § 103
`
`f) Claims 1, 12, 23, 30, 37, and 42 are Rendered Obvious by
`Balcha in view of Freivald under 35 U.S.C. § 103
`
`IPR2013-00586, Paper 1.
`
`5. The Board instituted the Unified IPR on March 21, 2014 for each of
`
`the above-listed grounds (a) – (e), and for ground (f) as to claims 37 and 42. The
`
`2
`
`
`
`
`
`Board found ground (f) above as to claims 1, 12, 23 and 30 to be redundant.
`
`IPR2013-00586, Paper 9 at 29.
`
`6. The Petition filed in the present IPR includes the following six
`
`grounds for invalidity:
`
`a) Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30 and 31 Are
`Rendered Obvious by Balcha in view of Miller under 35 U.S.C.
`§ 103
`
`b) Claims 37 and 42 Are Anticipated by Balcha under 35 U.S.C. §
`102(e)
`
`c) Claims 6-8 and 17-19 Are Rendered Obvious by Balcha, Miller
`and Freivald under 35 U.S.C. § 103
`
`d) Claims 1, 12, 23, 24, 30, 31, 37, and 42 Are Anticipated by
`Williams under 35 U.S.C. § 102(e)
`
`e) Claims 5-10 and 16-21 Are Rendered Obvious by Williams in
`View of Miller under 35 U.S.C. § 103
`
`f) Claims 1, 12, 23, 30, 37, and 42 are Rendered Obvious by
`Balcha in view of Freivald under 35 U.S.C. § 103
`
`7. The grounds proposed in the present IPR are, therefore, the same
`
`grounds for invalidity offered in the Unified Petition.
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
`
`review (IPR) proceedings. The statutory provision governing joinder of inter
`
`partes review proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(c) JOINDER.--If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as
`
`3
`
`
`
`
`
`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.
`
`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
`
`resolution of every proceeding.” See Dell, Inc. v. Network-1 Security Solutions,
`
`Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. The Board should
`
`consider “the policy preference for joining a party that does not present new issues
`
`that might complicate or delay an existing proceeding.” Id. at 10. Under this
`
`framework, joinder of the present IPR with the Unified IPR is appropriate.
`
`“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) address specifically how briefing and discovery
`
`may be simplified.” Id. at 4. Each of these issues is addressed fully below.
`
`4
`
`
`
`
`
`A.
`
`Joinder will not impact the Board’s ability to complete the review
`in a timely manner
`
`Joinder in this case will not impact the Board’s ability to complete its review
`
`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R.
`
`§ 42.100(c) provide that inter partes review proceedings should be completed and
`
`the Board’s final decision issued within one year of institution of the review. In
`
`this case, joinder should not affect the Board’s ability to issue the decision within
`
`this required one-year timeframe because the Petition filed in the present IPR
`
`contains the identical grounds sought in the Unified Petition.1 Indeed, in
`
`circumstances such as these, the PTO anticipated that joinder would be granted as
`
`a matter of right. 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, and thus allowed to file
`
`its own briefs and make its own arguments.”) (emphasis added).
`
`In addition, SAP respectfully proposes procedures to simplify any further
`
`briefing and discovery on these grounds, which will minimize any potential impact
`
`1
`If the Board finds that joinder would require some extension of the schedule,
`the statute governing inter partes review provides the Board with flexibility to
`extend the one-year period by up to six months in the case of joinder. Id. (§
`316(a)(11)). See also Changes to Implement Inter Partes Review Proceedings, 77
`Fed. Reg. 48,680, 48, 707 (Aug. 14, 2012) (“In the case of joinder, the Director
`may adjust the time periods allowing the Office to manage the more complex
`case.”).
`
`5
`
`
`
`
`
`on the schedule or the volume of materials to be submitted to the Board. Given that
`
`Unified and SAP will be addressing identical grounds for rejection of the claims at
`
`issue, the Board may adopt procedures similar to those adopted in Cases IPR2013-
`
`00385 and IPR2013-00256. In those cases, the Board ordered the petitioners to file
`
`consolidated filings, for which the first petitioner was responsible, and allowed the
`
`new petitioner to file seven additional pages with corresponding additional
`
`responsive pages allowed to the Patent Owner. IPR2013-00385, Paper 17 at 8;
`
`IPR2013-00256, Paper 10 at 8-9. This procedure would minimize any
`
`complication or delay caused by joinder, as the Board recognized in those cases.
`
`As in Cases IPR2013-00385 and IPR2013-00256, Unified and SAP can work
`
`together to manage the questioning at depositions and presentations at the hearing
`
`to avoid redundancy. IPR2013-00385, Paper 17 at 9; IPR2013-00256, Paper 10 at
`
`9-10. Additionally, while Unified and SAP relied upon testimony from different
`
`experts in their respective petitions, SAP will work with Unified to coordinate on
`
`expert testimony and agrees not to offer expert testimony that is redundant to that
`
`offered by Unified.
`
`B.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies
`
`Determining the same validity questions concerning the ’799 Patent in
`
`separate concurrent proceedings would duplicate efforts, and create a risk of
`
`inconsistent results and piecemeal review. Proceeding with a consolidated inter
`
`6
`
`
`
`
`
`partes review would avoid inefficiency and potential inconsistency and would
`
`result in a final written decision without any delay. For these reasons, joinder is
`
`appropriate.
`
`C. Without joinder, SAP may be prejudiced
`
`SAP would be prejudiced if they are not permitted to join and to participate
`
`in the Unified IPR, which will affect not only SAP’s pending inter partes review
`
`Petition, but also the Underlying Litigation. Unlike SAP, Unified is not involved
`
`in any litigation with the Patent Owner. The decision in the Unified IPR will likely
`
`simplify, or even resolve, the issues in the Underlying Litigation. Joinder is
`
`warranted to permit SAP —a party to the Underlying Litigation—to protect its
`
`interests in the overlapping matters at issue in the inter partes reexamination and
`
`Underlying Litigation.
`
`D.
`
`Joinder will not prejudice Clouding or Unified
`
`Permitting joinder will not prejudice Clouding or Unified. SAP’s proposed
`
`grounds for instituting an IPR are identical to those proposed by Unified in its
`
`petition. Joinder will not affect the timing of the Unified IPR, and any extension to
`
`the schedule that may be required is permitted by law and the applicable rules. 35
`
`U.S.C. § 316(a)(1); 37 C.F.R. § 42.100(c). In fact, joinder is likely more
`
`convenient and efficient for Clouding by providing a single trial on the ’799 patent.
`
`7
`
`
`
`
`
`By allowing all grounds of invalidity to be addressed in a single proceeding, the
`
`interests of all parties and the Board will be well served.2
`
`IV. CONCLUSION
`
`For the foregoing reasons, SAP respectfully requests that its Petition for
`
`Inter Partes Review of U.S. Patent No. 6,738,799 be instituted and that the
`
`proceeding be joined with Unified Patents, Inc. v. Clouding IP, LLC, Case
`
`IPR2013-00586.
`
`Although SAP believes that no fee is required for this Motion, the
`
`Commissioner is hereby authorized to charge any additional fees which may be
`
`required for this Motion to Deposit Account No. 04-1073.
`
`
`
`
`2
`Clouding argued in its Preliminary Response (Paper 7) that the present IPR
`should not be instituted because the grounds in the present IPR are redundant to
`those in the Unified IPR, and counsel for Clouding suggested in recent
`communications with counsel for SAP that this argument may also be used in
`opposition to joinder. This argument, however, is without merit and should not be
`used to deny institution or joinder. The quotations cited by Clouding from other
`IPRs are taken out of context and institution/joinder in those IPRs was denied for
`reasons completely unrelated to the present IPR. For example, in Case IPR2013-
`00454, the Board denied institution, and a motion to join another IPR initiated by
`the same petitioner, because the IPR which it sought to join had already terminated
`and the Board did not want to give the same petitioner a second bite at the apple
`after the one-year bar period. In addition, Case IPR2013-00581 involved the same
`petitioner filing a second petition with different grounds, and the Board denied
`institution because it did not find a reasonable likelihood of success on the new
`grounds. Indeed, the Board regularly institutes trial and grants joinders in cases
`like the present case where a new petitioner submits a petition with the same
`grounds as the pending IPR. See, e.g., Cases IPR2013-00385 and IPR2013-00256.
`
`8
`
`
`
`April 21, 2014
`
`Respectfully Submitted,
`
` /
`
` Frank C. Cimino, Jr. /
`Frank C. Cimino, Jr. (Reg. No. 39,945)
`Megan S. Woodworth (Reg. No. 53,655)
`S. Gregory Herrman (Reg. No. 66,271)
`DICKSTEIN SHAPIRO LLP
`1825 Eye Street, NW
`Washington, DC 20006-5403
`Tel: (202) 420-3601
`Fax: (202) 420-2201
`Email: CiminoF@dicksteinshapiro.com
` WoodworthM@dicksteinshapiro.com
` HerrmanG@dicksteinshapiro.com
`
`Attorneys for Petitioner
`SAP America, Inc.
`
`
`
`Dated:
`
`
`
`
`
`9
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies pursuant to 37 C.F.R. §§ 42.6(e) that MOTION
`
`FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`was served on the Patent Owner on April 21, 2014, by filing this document though
`
`the Patent Review Processing System as well as by delivering a copy via Federal
`
`Express at the following address:
`
`Tarek N. Fahmi, APC
`Ascenda Law Group, PC
`84 W. Santa Clara St.
`Suite 550
`San Jose, CA 95113
`
`Dated: ___April 21, 2014____
`
`
`
`
`
`
`
`By: __/S. Gregory Herrman/___________
` S. Gregory Herrman (Reg. No. 66,271)
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
