UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MATCH.COM LLC and PEOPLE MEDIA, INC.
`Petitioners
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`
`
`IPR Case No.: To be Assigned
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C §§ 315(c),
`37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MATCH.COM LLC and PEOPLE MEDIA, INC.
`Petitioners
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`
`
`
`IPR Case No.: To be Assigned
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C §§ 315(c),
`37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
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`Match.com LLC and People Media, Inc. (“Petitioners”) submit concurrently
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`herewith a Petition for Inter Partes Review of U.S. Patent No. 6,628,314 (“the
`
`’314 Patent”) (“Petition”) based on identical grounds that form the basis for
`
`pending IPR proceeding, Case No. IPR2014-00053 (“the Facebook IPR”).
`
`Pursuant to 35 US.C. § 315(c), Petitioners respectfully move that this
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`Petition be instituted and joined with the Facebook IPR. Petitioners merely request
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`an opportunity to join with the Facebook IPR as an “understudy” to Facebook,
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`only assuming an active role in the event Facebook settles with B.E. Technology.
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`Thus, Petitioners do not seek to alter the grounds upon which the Board has
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`already instituted the IPR, and joinder will have no impact on the existing schedule
`
`in the IPR. Under rule 42.122, this Motion is timely as it was filed within one
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`month of the granting of IPR2014-00053.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`B.E Technology (“B.E. Tech”) is the owner of the ’314 Patent. In 2012,
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`B.E. Tech sued ten different companies for alleged infringement of the ‘314 Patent
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`“Underlying Litigation”). In October of 2013, three of the defendants, Facebook,
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`Microsoft, and Google, filed petitions for inter partes review of the ’314 Patent.
`
`Facebook filed two separate petitions as well as a request to consolidate both of its
`
`petitions which the Board said it would discuss at the initial conference call. All
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`
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`1
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`
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`four petitions were granted on April 9, 2014. See Facebook v. B.E. Technology,
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`L.L.C. (Case No. IPR2014-00053); Microsoft Corporation v. B.E. Technology,
`
`L.L.C. (Case No. IPR2014-00039); Facebook v. B.E. Technology, L.L.C. (Case No.
`
`IPR2014-00052); and Google Inc. v. B.E. Technology, L.L.C. (Case No. IPR2014-
`
`00038).
`
`III. REQUIREMENTS FOR MOTION FOR JOINDER ARE MET
`Petitioners respectfully submit that joinder is appropriate because: (1) it will
`
`promote efficient determination of the validity of the ’314 Patent without prejudice
`
`to Facebook or B.E. Tech; (2) this petition raises only the same grounds of
`
`unpatentability as Facebook and for which the Board instituted review; (3) it
`
`would not affect the pending schedule in the Facebook IPR in any way nor
`
`increase the complexity of that proceeding in any way; and (4) Petitioners are
`
`willing to accept an understudy role to minimize burden and schedule impact.
`
`Absent joinder, Petitioners could be prejudiced if the Facebook IPR is terminated
`
`before a final written decision is issued as they would have to litigate the same
`
`positions at the District Court under a higher burden of proof. Accordingly,
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`joinder should be granted.
`
`a.
`
`Joinder Will Promote the Efficient Determination of Validity
`Without Prejudice to Facebook or B.E. Tech.
`
`Granting joinder and permitting Petitioners to assume the understudy role
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`will not prejudice Facebook or B.E. Tech. Petitioners raise no issues that are not
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`
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`2
`
`
`
`
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`already before the Board, such that joinder would not affect the timing of the IPR
`
`or the content of B.E. Tech’s responses. Petitioners’ limited role ensures that
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`Facebook and B.E. Tech will not suffer any additional costs. Facebook will not be
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`obligated to cooperate with Petitioners. Likewise, B.E. Tech will not have to
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`coordinate with or respond to arguments by more parties than they already do.
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`Moreover, a final written decision on the validity of the ’314 patent will
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`minimize issues in the Underlying Litigation and potentially resolve the Litigation
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`altogether thereby promoting the efficient determination of validity. If the Board
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`permits Petitioners to join the Facebook IPR, and the ’314 patent is upheld in a
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`final decision, Petitioners will be estopped from further challenging the validity of
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`the patent on these grounds, avoiding duplication of B.E. Tech’s efforts at least as
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`to Petitioners. See 35 U.S.C. § 315(e)(1). Accordingly, to avoid duplicate efforts
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`and promote efficiency, joinder is appropriate.
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`No New Arguments Are Presented.
`
`b.
`The petition asserts, verbatim, only the arguments that the Board has already
`
`instituted in the Facebook IPR. Thus, there are no new arguments to consider.
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`Further, the Petition relies on the expert witness, Stephen Gray, who is already
`
`involved in Facebook’s IPR. Thus, no new expert depositions are required.
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`
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`
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`3
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`
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`
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`No Schedule Adjustments Are Necessary.
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`c.
`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. Section 316(a)(11) provides that IPR proceedings should be
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`completed and the Board’s final decision issued within one year of institution of
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`the review. See also 37 C.F.R. § 42.100(c). Here, joinder will not affect the
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`Board’s ability to issue its final determination within one year because Petitioners
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`agree to an understudy role and do not raise any issues that are not already before
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`the Board. Indeed, the Petition includes only those grounds on which the IPR was
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`instituted, and the invalidity grounds were copied verbatim from Facebook’s
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`petition. Given that Petitioners will assume an understudy role, their presence will
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`not introduce any additional arguments, briefing, or need for discovery.
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`Petitioners submit that B.E. Tech does not need to file a Patent Owner’s
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`Preliminary Response, and request that the Board proceed without it. This is
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`consistent with the Board’s Order IPR2013-00256 (Paper No. 8), which allowed
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`the Patent Owner to file a preliminary response addressing only those points raised
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`in the new petition that were different from those in the granted petition. Here,
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`because the invalidity grounds are word-for-word identical to those allowed
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`grounds in Facebook’s Petition, there is nothing new for B.E. Tech to address.
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`Moreover, B.E. Tech did not file a Preliminary Response to Facebook’s petition or
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`any of the other four petitions filed against the ’314 Patent. Alternatively, the
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`
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`4
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`
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`Board can add an additional deadline for B.E. Tech to respond to this Petition, but
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`this deadline will not impact other deadlines in the schedule.
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`In view of the above, Petitioners submit that the current schedule in the
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`Facebook IPR can stay unchanged.
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`Petitioners Agree To Assume A Limited Role
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`d.
`As long as Facebook remains in the joined IPR, Petitioners agree to assume
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`a limited “understudy” role. As discussed above, Petitioners offer no new grounds
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`for invalidity and their presence will not introduce any additional arguments,
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`briefing or need for discovery.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that their Petition
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`for Inter Partes Review of the ’314 Patent be granted and that the proceedings be
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`joined with IPR2014-00053.
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`Although Petitioners believe no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
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`required for this Motion to Deposit Account No. 02-1818.
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`
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`Dated: April 25, 2014
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`
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`5
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`Respectfully submitted,
`
`By: /Sanjay Murthy /
`Sanjay Murthy
`Reg. No. 45,976
`Counsel for Petitioner
`
`
`
`
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`
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`CERTIFICATE OF SERVICE
`I hereby certify that on this day, April 25, 2014, a copy of the foregoing
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`MOTION FOR JOINDER UNDER 35 U.S.C §§ 315(c), 37 C.F.R. §§ 42.22
`
`AND 42.122(b) were served upon Patent Owner, by placing into Express Mail
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`directed to the attorney of record for the patent at the following address:
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`Dated: April 25, 2014
`
`James D. Stevens
`Reising Ethington P.C.
`P.O. Box 4390
`Troy MI 48099
`
`Respectfully submitted,
`
`By: /Sanjay Murthy /
`Sanjay Murthy
`Reg. No. 45,976
`Counsel for Petitioner
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