Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 12
`Entered: July 24, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`Case IPR2014-00702
`Patent 5,978,791
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Unified’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 12
`Entered: July 24, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`Case IPR2014-00702
`Patent 5,978,791
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Unified’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2014-000702
`Patent 5,978,791
`
`
`I. INTRODUCTION
`
`Unified Patents, Inc. (“Unified”) filed a Petition (Paper 1, “Pet.”)
`
`requesting an inter partes review of claims 1–4, 29–33, 35, and 41 of U.S.
`
`Patent No. 5,978,791 (the “’791patent”) pursuant to 35 U.S.C. § 311 et seq.,
`
`as well as a Motion for Joinder with Rackspace US, Inc. v. PersonalWeb
`
`Techs. LLC, IPR2014-00057 (Paper 3, “Mot.”). Patent Owners,
`
`PersonalWeb Technologies, LLC and Level 3 Communications, LLC
`
`(collectively, “PersonalWeb”), filed a Patent Owner Preliminary Response
`
`(Paper 8, “Prelim. Resp.”), along with an opposition to Unified’s Motion for
`
`Joinder (Paper 9, “Opp.”). Shortly thereafter, Unified filed a reply to
`
`PersonalWeb’s opposition to its Motion for Joinder (Paper 10, “Reply”).
`
`For the reasons discussed below, Unified’s Motion for Joinder is denied.1
`
`
`
`II. ANALYSIS
`
`The 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 the
`
`joinder of like proceedings. Based on authority delegated to us by the
`
`Director, we have the discretion to join an inter partes review with another
`
`inter partes review. 35 U.S.C. § 315. Section 315(c) provides (emphasis
`
`added):
`
`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
`
`
`1 In a decision entered concurrently, Unified’s Petition is denied.
`2
`
`
`
`
`
`IPR2014-000702
`Patent 5,978,791
`
`
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`In the case of joinder, we have the discretion to adjust the time period for
`
`issuing a final determination in an 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. We will
`
`determine whether to grant joinder on a case-by-case basis, taking into
`
`account the particular facts of each case, substantive and procedural
`
`issues, and other considerations. 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” and claim construction issues). When
`
`exercising our discretion, we are 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 35 U.S.C. § 316(b);
`
`37 C.F.R. § 42.1(b).
`
`As the moving party, Unified has the burden of proof to establish that
`
`it is entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). When
`
`determining whether to grant a Motion for Joinder, we consider many
`
`factors, including: (1) time and cost considerations, including the impact
`
`joinder would have on the trial schedule; and (2) how briefing and discovery
`
`may be simplified. See Order Authorizing Motion for Joinder (Paper 15, 4),
`
`Kyocera Corp. v. SoftView, LLC, IPR2013-00004 (PTAB Apr. 24, 2013);
`
`Frequently Asked Question H5 on the Board’s website at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`
`
`3
`
`
`
`IPR2014-000702
`Patent 5,978,791
`
`
`1. Where two parties file nearly identical petitions in separate
`proceedings, joinder is not granted “as a matter of right”
`
`As an initial matter, we are not persuaded by Unified’s argument that,
`
`if there are two proceedings with nearly identical petitions, the legislative
`
`history provides that joinder should be granted “as a matter of right.”
`
`Mot. 6; Reply 1. As we explained above, Section 315(c) clearly states that
`
`we have discretion to join a party. Unified fails to recognize that joinder is
`
`not automatic, particularly given the need to complete proceedings in a just,
`
`speedy, and inexpensive manner. See 35 U.S.C. § 316(b); 37 C.F.R.
`
`§ 42.1(b); 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of
`
`Sen. Kyl) (“The Director is given discretion . . . over whether to allow
`
`joinder. This safety valve will allow the Office to avoid being overwhelmed
`
`if there happens to be a deluge of joinder petitions in a particular case.”).
`
`Therefore, contrary to Unified’s argument, we have discretion under
`
`Section 315(c) to join Unified as a party to IPR2014-00057. We turn now to
`
`the question of whether that discretion should be exercised based on the
`
`particular circumstances of this case.
`
`2. Substantive Issues
`
`
`
`Unified contends that joinder with IPR2014-00057 is appropriate
`
`because its Motion for Joinder is timely, the Petition filed in this proceeding
`
`raises no new issues because it is nearly identical to the Petition filed by
`
`Rackspace in IPR2014-00057, granting joinder would lead to efficiencies
`
`and consistent results, and neither Rackspace nor PersonalWeb would be
`
`prejudiced. Mot. 4-6. In response, PersonalWeb contends that joinder with
`
`IPR2014-00057 would complicate and delay that proceeding. Opp. 1-3. In
`
`particular, PersonalWeb alleges that Unified is an organization that was
`
`
`
`4
`
`
`
`IPR2014-000702
`Patent 5,978,791
`
`formed by Google Inc. and NetApp Inc., amongst others. Id. at 2.
`
`PersonalWeb then asserts that, because the Petition filed in this proceeding
`
`fails to identify all the real parties-in-interest pursuant to 35 U.S.C.
`
`§ 312(a)(2), it will seek additional discovery regarding whether there are
`
`other parties that fund and control Unified. Id. at 2–3. In reply, Unified
`
`contends that PersonalWeb’s argument regarding the real parties-in-interest
`
`lacks merit because Unified is an independent company that controls and
`
`finances each inter partes review that it files without coordinating with its
`
`members. Reply 1–2.
`
`
`
`Although the grounds of unpatentability, claim construction, and
`
`supporting evidence in this proceeding are nearly identical to the grounds of
`
`unpatentability, claim construction, and supporting evidence in IPR2014-
`
`00057 (compare Pet. 8, 21–58 with IPR2014-00057, Paper 9, 7–23, 26),
`
`Unified fails to appreciate that this proceeding includes at least one new
`
`substantive issue that is not before us in IPR2014-00057. In its Motion for
`
`Joinder, Unified states that its organization “was founded by intellectual
`
`property professionals over concerns with the increasing risk of non-
`
`practicing entities (NPEs) asserting poor quality patents against strategic
`
`technologies and industries.” Mot. 2 (emphasis added). According to
`
`Unified, “the founders [] created a first-of-its-kind company whose sole
`
`purpose is to deter NPE litigation by protecting technology sectors, like
`
`cloud storage.” Id. (emphasis added). Based on those statements, it is not
`
`unreasonable for PersonalWeb to seek authorization for additional discovery
`
`in order to determine what companies, if any, fund and control Unified.
`
`This potential for additional discovery presents a new substantive issue
`
`
`
`
`
`5
`
`
`
`IPR2014-000702
`Patent 5,978,791
`
`beyond what is already before us in IPR2014-00057 and, as a result, weighs
`
`in favor of denying Unified’s Motion for Joinder.
`
`3. Procedural Issues
`
`Unified contends that joinder with IPR2014-00057 will have a
`
`minimal impact on the trial schedule and allow the Board to complete its
`
`review within one year because the Petition filed in this proceeding contains
`
`the same grounds of unpatentability instituted in IPR2014-00057. Mot. 6–7.
`
`In addition, Unified requests that the Board impose a number of procedural
`
`safeguards that it alleges will simplify trial. Id. at 7–8. In response,
`
`PersonalWeb contends that, given the overlap with at least four other
`
`proceedings before the Office that involve the ’791 patent, joinder with
`
`IPR2014-00057 would waste both judicial and party resources, as well as
`
`prejudice PersonalWeb because it would be required to expend significant
`
`time and effort defending the ’791 patent yet again. Opp. 3–5.
`
`IPR2014-00057 is not just a single case with no other pending related
`
`inter partes reviews. Instead, IPR2014-00057 is one of five related inter
`
`partes reviews between Rackspace and PersonalWeb in which a trial has
`
`been instituted. The discovery process and trial schedule for IPR2014-
`
`00057 has been coordinated and synchronized with each of the related inter
`
`partes reviews. For instance, Rackspace and PersonalWeb have stipulated
`
`to a single deposition usable in all five trials for each of Rackspace’s
`
`declarants. IPR2014-00057, Paper 16, 3. As set forth in the Scheduling
`
`Orders, DUE DATES 1 through 7 for all five trials are the same, and oral
`
`hearings, if requested, will be conducted on the same day. See, e.g.,
`
`IPR2014-00057, Paper 10, 6. Unified does not explain what impact, if any,
`
`
`
`6
`
`
`
`IPR2014-000702
`Patent 5,978,791
`
`joinder will have on the synchronized trial schedules of the five related inter
`
`partes reviews.
`
`We recognize that the time set forth in 37 C.F.R. § 42.100(c) may be
`
`extended by up to six months for good cause by the Chief Administrative
`
`Patent Judge, or adjusted by us in the case of joinder. Unified, however,
`
`does not address adequately the impact of joinder on the other four related
`
`inter partes reviews, much less present a good cause showing why the
`
`pendency for those proceedings should be extended. As such, joining this
`
`proceeding with IPR2014-00057 most likely would affect our ability to
`
`complete all five proceedings in a timely manner and, as a result, weighs in
`
`favor of denying Unified’s Motion for Joinder.
`
`4. Other Considerations
`
`Claims 1–4, 29–33, and 41 of the ’791 patent were challenged and,
`
`subsequently, instituted in EMC Corp. v. PersonalWeb Techs., LLC,
`
`IPR2013-00082. IPR2013-00082, Paper 21, 26–33. In a final written
`
`decision, we concluded that EMC demonstrated by a preponderance of the
`
`evidence that claims 1–4, 29–33, and 41 of the ’791 patent were
`
`unpatentable as anticipated by or obvious over the same Woodhill reference
`
`being asserted in this proceeding. Compare IPR2013-00082, Paper 83, 66
`
`with Pet. 8, 29–58.
`
`PersonalWeb notes that, although claim 35 of the ’791 patent was not
`
`challenged in IPR2013-00082, it was challenged in IPR2014-00057 and at
`
`issue in a pending ex parte reexamination titled U.S. Patent Application
`
`No. 90/012,931. Opp. 4, n. 2. PersonalWeb further notes that it appealed
`
`our decision in IPR2013-00082 to the United States Court of Appeals for the
`
`Federal Circuit. IPR2013-00082, Paper 84. PersonalWeb then contends
`
`
`
`7
`
`
`
`IPR2014-000702
`Patent 5,978,791
`
`that, if the Federal Circuit affirms our decision in IPR2013-00082, it would
`
`have been a waste of time, effort, and resources to re-litigate the same issues
`
`in this proceeding. Opp. 4. We agree with PersonalWeb.
`
`With the exception of claim 35 of the ’791 patent, the pending
`
`outcome of IPR2013-00082 before the Federal Circuit may render moot the
`
`need to reach a final written decision regarding the patentability of claims 1–
`
`4, 29–33, and 41 of the ’791 patent in this proceeding. This reason also
`
`weighs in favoring of denying Unified’s Motion for Joinder.
`
`
`
`III. CONCLUSION
`
`In summary, Unified has not met its burden of demonstrating that
`
`joinder is warranted under the particular circumstances of this case.
`
`
`
`IV. ORDER
`
`Accordingly, it is ORDERED that Unified’s Motion for Joinder with
`
`IPR2014-00057 is DENIED.
`
`
`
`8
`
`
`
`IPR2014-000702
`Patent 5,978,791
`
`For PETITIONER:
`
`Michael L. Kiklis
`Scott McKeown
`Oblon Spivak
`cpdocketkiklis@oblon.com
`cpdocketmckeown@oblon.com
`
`For PATENT OWNERS:
`
`Joseph A. Rhoa
`Updeep S. Gill
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`
`
`
`
`9
`
`
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