`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`SAP AMERICA INC.
`Petitioner
`v.
`CLOUDING IP, LLC
`Patent Owner
`____________
`Case IPR 2014-00306
`Patent 6,738,799
`____________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER OF INTER PARTES
`REVIEWS 2014-00306 AND 2013-00586
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`Table of Contents
`Introduction .................................................................................................... 1
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`Related Case IPR2013-00586 .......................................................................... 1
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`Analysis ............................................................................................................ 3
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`Conclusion ...................................................................................................... 8
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`ii
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`
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`Table of Authorities
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`CASES
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`Kyocera Corp. v. SoftView LLC, IPR2013-00004 (P.T.A.B. Apr. 24, 2013) ...... 4
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`STATUTES
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`35 U.S.C. § 315(c) ....................................................................................... 3, 5
`35 U.S.C. § 315(e) .......................................................................................... 7
`35 U.S.C. § 316(b) .......................................................................................... 4
`
`
`REGULATIONS
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`37 C.F.R. § 42.1(b) ..................................................................................... 4, 8
`37 C.F.R. §§ 42.20(c) ...................................................................................... 4
`37 C.F.R. § 42.53(d)(2) ................................................................................... 3
`37 C.F.R. § 42.122 .................................................................................. 3, 5, 8
`37 C.F.R. § 42.122(b) ..................................................................................... 4
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`
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`OTHER AUTHORITIES
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`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) .......................................... 4
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`iii
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`
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`Pursuant to the Board’s Order of April 24, 2014, Paper 9, Patent
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`Owner, Clouding IP, LLC, submits the following opposition to Petitioner’s
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`Motion for Joinder to join this proceeding with that in Unified Patents Inc. v.
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`Clouding IP, LLC, IPR2013-00586.
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`Introduction
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`Petitioner SAP AMERICA INC. filed a Petition to institute an inter
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`partes review of claims 1, 5-10, 12, 16-21, 23, 24, 30, 31, 37 and 42 of U.S.
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`Patent 6,738,799 (Ex. 1001) (the “’799 Patent”) pursuant to 35 U.S.C. §§
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`311-319 on December 27, 2013. SAP America Inc. v. Clouding IP, LLC,
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`IPR2014-00306, Paper 1 (Dec. 27, 2013). Subsequently, on April 21, 2014,
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`Petitioner filed a motion for joinder with IPR2013-00586. SAP America Inc.,
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`IPR2014-00306, Paper 8 (Apr. 21, 2014) (hereinafter “Mot.”). For the reasons
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`that follow, Petitioner’s motion should be denied.
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`Related Case IPR2013-00586
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`Pursuant to an Order dated March 21, 2014, trial has been instituted on
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`multiple grounds in Unified Patents Inc. v. Clouding IP, LLC, IPR2013-00586.
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`Unified Patents Inc. v. Clouding IP, LLC, IPR2013-00586, Paper 9 at 29-30
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`(Mar. 21, 2014). Specifically,
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`1
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`
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`inter partes review of claims 1, 5-10, 12, 16-21, 23, 24, 30,
`37, and 42 [was] instituted on the following claims and
`challenged grounds:
`(a) that claims 1, 12, 23, 24, 30, 31, 37, and 42 are
`unpatentable as anticipated by Williams under 35 U.S.C. §
`102(e);
`(b) that claims 5-10 and 16-21 are unpatentable as
`obvious over Williams and Miller under 35 U.S.C. §
`103(a);
`(c) that claims 37 and 42 are unpatentable as anticipated
`by Balcha under 35 U.S.C. § 102(e);
`(d) that claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30,
`and 31 are unpatentable as obvious over Balcha and Miller
`under 35 U.S.C. § 103(a);
`(e) that claims 6-8 and 17-19 are unpatentable as
`obvious over Balcha, Miller, and Freivald under 35 U.S.C.
`§ 103(a); and
`(f) that claims 37 and 42 are unpatentable as obvious
`over Balcha and Freivald under 35 U.S.C. § 103(a).
`
`Id.
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`Pursuant to the Scheduling Order in IPR2013-00586, Patent Owner’s
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`Response and optional Motion to Amend are due May 21, 2014. IPR2013-
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`00586, Paper 10 at 5 (Mar. 21, 2014). Consequently, Patent Owner’s
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`2
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`discovery cut-off in the ‘586 proceeding is May 14, 2014. 37 C.F.R. §
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`42.53(d)(2).
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`Analysis
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`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
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`284 (2011) (AIA), created new administrative trial proceedings, including inter
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`partes review, as an efficient, streamlined, and cost-effective alternative to district
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`court litigation. The AIA permits the joinder of like proceedings and the Board,
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`acting on behalf of the Director, has the discretion to join an inter partes review
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`with another inter partes review.
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`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.
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`35 U.S.C. § 315(c) (emphasis added).
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`Joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The
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`3
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`
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`Board has indicated it will determine whether to grant joinder on a case-by-case
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`basis, taking into account the particular facts of each case, substantive and
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`procedural issues, and other considerations. See 157 CONG. REC. S1376
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`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether
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`and when to allow joinder, the Office may consider factors including ―the
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`breadth or unusualness of the claim scopeǁ‖ and claim construction issues). In
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`the exercise of this discretion, the Board should consider that patent trial
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`regulations, including the rules for joinder, must be construed to secure the just,
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`speedy, and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
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`37 C.F.R. § 42.1(b).
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`As the moving party, Petitioner has the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
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`motion for joinder should: (1) set forth the reasons why joinder is appropriate;
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`(2) identify any new grounds of unpatentability asserted in the petition; (3)
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`explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified. See Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4
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`(Apr. 24, 2013); Frequently Asked Question H5 on the Board’s website at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`4
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`In its motion, Petitioner fails to identify any compelling reasons why
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`joinder is appropriate. Instead, Petitioner appears to assert that its request for
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`Joinder is “a matter of right.” Mot. at 5 (emphasis in original). This is clearly
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`not the case as joinder is a matter committed to the discretion of the Board. See
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`35 U.S.C. § 315(c); 37 C.F.R. § 42.122.
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`Petitioner’s motion for joinder further admits, “The grounds proposed in
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`the present IPR are [ ] the same grounds for invalidity offered in the Unified
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`Petition.” Id. at 3. In other words, there are no new grounds of unpatentability
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`asserted in the petition.
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`Petitioner’s principal argument in favor of joinder appears to be that
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`combining this proceeding with the ‘586 proceeding “will not impact the
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`Board’s ability to complete its review in a timely manner.” Id. at 5. However,
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`Petitioner offers no proposed revision to the briefing schedule already instituted
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`in the ‘586 proceeding to support such a contention; indicating only that, “the
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`Board may adopt procedures similar to those adopted in Cases IPR2013-00385
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`and IPR2013-00256.” Id. at 6. Such a proposal falls short of the requirement to
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`“address specifically how briefing and discovery may be simplified.” To this
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`end, although Petitioner states that, “SAP will work with Unified to coordinate
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`on expert testimony and agrees not to offer expert testimony that is redundant
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`5
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`
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`to that offered by Unified,” SAP proposes no dates for coordinated depositions
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`and, in fact, has already offered expert testimony in the form of a declaration by
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`Dr. Grimshaw, Ex. 1009, that is entirely redundant to that provided by
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`Unified’s expert, Dr. Hutchinson. See Ex. 1007 in Unified, IPR2013-00586. It
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`is also important to note that in the ‘586 proceeding, Dr. Hutchinson’s
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`deposition is scheduled for May 2, 2014, Unified, IPR2013-00586, Paper 11
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`(Mar. 28, 2014), and SAP has yet to propose any deposition dates for Dr.
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`Grimshaw (indeed, the ‘306 proceeding has yet to be instituted).
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`Under the circumstances, joinder would have a significant adverse
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`impact on the Board’s ability to complete the ‘586 proceeding in a timely
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`manner. At a minimum, joining these proceedings would require extending due
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`dates 1-3 (likely resulting in ripple effect on the remaining due dates) in order
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`to permit time for Patent Owner to complete discovery. Although Petitioner
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`suggests that it will not offer redundant testimony, there is no indication that
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`petitioner is willing to forego reliance on Dr. Gimshaw’s testimony (e.g., in
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`favor of that of Dr. Hutchinson) in order to conform to the exiting briefing
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`schedule in the ‘586 proceeding. In fact, there is no indication in Petitioner’s
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`motion of how Petitioner would determine that testimony by one expert vs.
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`another is redundant and somehow withdraw any overlapping portions thereof.
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`6
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`
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`Petitioner also complains that determining the “same validity questions
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`concerning the ‘799 Patent in separate concurrent proceedings would duplicate
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`efforts, and create a risk of inconsistent results and piecemeal review.” Mot. at
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`6. If anything, this perceived risk (which, in fact, does not exist) suggests that a
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`decision not to institute the ‘306 proceeding, rather than joinder, is the
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`appropriate remedy. Petitioner has already admitted that all of the very same
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`issues involving all of the very same references were presented for the Board’s
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`consideration in Unified’s petition in the ‘586 proceeding. Id. at 3. The Board
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`has, therefore, already considered all of the issues raised by the present petition
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`and has instituted trial on those issues in the ‘586 proceeding. In short, there is
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`nothing to be gained by instituting a second proceeding, joined with the first or
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`otherwise, as all of the issues on which Petitioner seeks review will be so
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`reviewed in the ‘586 proceeding. Petitioner suggests that not permitting joinder
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`will somehow prejudice it in an underlying litigation, but how such prejudice
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`could result is left entirely unspecified and in fact petitioner would even benefit
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`from being relieved of the estoppel provisions of AIA if the present proceedings
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`are not instituted. 35 U.S.C. § 315(e) (indicating that estoppel attaches only
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`upon a final written decision of the Board).
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`7
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`The Board is charged with securing the just, speedy, and inexpensive
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`resolution of every proceeding, and has the discretion to join or not join
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`proceedings to ensure that objective is met. 37 C.F.R. §§ 42.1(b), 42.122. Case
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`IPR2013-00586 was filed more than seven months ago and is already well
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`underway, with Patent Owner facing a deadline for filing its response on May
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`21, 2014. IPR2013-00586, Paper 10 at 5. Joinder at this stage would require
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`rescheduling of that due date (and, presumably all those that follow) in order to
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`permit Patent Owner to take discovery of Petitioner’s declarant, Dr. Grimshaw,
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`putting in jeopardy the Board’s ability to timely complete the ongoing review.
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`Notably, Petitioner proposes no modified schedule for Case IPR2013-00586 if
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`joinder is permitted, and as such has failed to carry its burden of proof in
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`showing entitlement to the requested relief.
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`Conclusion
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`For at least the foregoing reasons, the Board should not order the joinder
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`of inter partes reviews 2014-00306 and 2013-00586.
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`Dated: May 1, 2014
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`ASCENDA LAW GROUP, PC
`84 W. Santa Clara St., Suite 550
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`Respectfully submitted,
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi
`Reg. No. 41,402
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`8
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`San Jose, CA 95113
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`Tel: 866-877-4883
`Fax: 408-773-6177
`Email: patents@ascendalaw.com
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`9
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER OF INTER PARTES
`REVIEWS 2014-00306 AND 2013-00586
`
`
`was served on May 1, 2014, by filing this document though the Patent Review
`Processing System as well as delivering a copy via overnight courier directed to
`the attorneys of record for the Petitioner at the following address:
`Frank C. Cimino, Jr.
`Megan S. Woodworth
`S. Gregory Herrman
`DICKSTEIN SHAPIRO LLP
`1825 Eye Street, NW
`Washington, DC 20006-5403
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`Respectfully submitted,
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`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
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`Dated: May 1, 2014
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`ASCENDA LAW GROUP, PC
`84 W. Santa Clara St., Suite 550
`San Jose, CA 95113
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`Tel: 866-877-4883
`Fax: 408-773-6177
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