Paper 9
`Trials@uspto.gov
`571-272-7822 Entered: June 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`____________
`
`Case IPR2014-00738
`Patent 6,628,314 B1
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`____________
`
`Case IPR2014-00738
`Patent 6,628,314 B1
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`Case IPR2014-00738
`Patent 6,628,314 B1
`
`
`INTRODUCTION
`
`Petitioner Google Inc. filed a petition requesting an inter partes
`
`review of claims 11-22 of U.S. Patent No. 6,628,314 B1 (Ex. 1001, “the
`
`’314 patent”). Paper 1 (“Pet.”). With the petition, Petitioner filed a motion
`
`for joinder (Paper 3, “Mot.”), seeking to join this case with Microsoft
`
`Corporation v. B.E. Technology, L.L.C., Case IPR2014-00039 (PTAB Apr.
`
`9, 2014). In a separate decision, entered today, we institute an inter partes
`
`review as to the same claims and the same grounds of unpatentability for
`
`which we instituted trial in Microsoft Corporation v. B.E. Technology,
`
`L.L.C., Case IPR2014-00039. For the reasons that follow, Petitioner’s
`
`motion for joinder is granted.
`
`BACKGROUND
`
`Petitioner filed its petition and motion for joinder on May 9, 2014,
`
`within one month after the institution date of IPR2014-00039. On June 10,
`
`2014, the Board held a conference call with counsel for the respective parties
`
`and counsel for the Petitioner in IPR2014-00039 (“the -00039 Petitioner”).
`
`Paper 7 at 2. During the conference call, counsel for Patent Owner
`
`represented that Patent Owner does not oppose the motion for joinder, and
`
`counsel for the -00039 Petitioner indicated that the -00039 Petitioner does
`
`not oppose the motion for joinder with it in IPR2014-00039. Id.
`
`The petition in this case asserts that claims 11-14 and 16-19 of the
`
`’314 patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by
`
`2
`
`
`
`Case IPR2014-00738
`Patent 6,628,314 B1
`
`
`Guyot1, claim 15 of the ’314 patent is unpatentable under 35 U.S.C. § 103(a)
`
`as obvious over Guyot and Robinson2, and claims 20-22 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Guyot and RFC 16353. Pet. 10-
`
`25. These are the same claims and the same grounds for which we instituted
`
`trial in IPR2014-00039. Microsoft Corporation v. B.E. Technology, L.L.C.,
`
`Case IPR2014-00039, slip op. at 19 (PTAB Apr. 9, 2014) (Paper 13).
`
`ANALYSIS
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29 (2011),
`
`permits joinder of like review proceedings. Thus, an inter partes review
`
`may be joined with another inter partes review. The statutory provision
`
`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c),
`
`which provides:
`
`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.
`
`As the movant, Petitioner bears the burden to show that joinder is
`
`appropriate. 37 C.F.R. § 42.20(c). In its motion for joinder, Petitioner
`
`contends that joinder is appropriate because (1) “it will promote efficient
`
`
`
`1 U.S. Patent No. 6,119,098 (Ex. 1006) (“Guyot”).
`2 U.S. Patent No. 5,918,014 (Ex. 1007) (“Robinson”).
`3 Deutsch et al., How to Use Anonymous FTP, IAFA Working Group, 1-13
`(May 1994) (Ex. 1022) (“RFC 1635”).
`3
`
`
`
`Case IPR2014-00738
`Patent 6,628,314 B1
`
`
`determination of the validity of the ’314 Patent without prejudice” to Patent
`
`Owner or the -00039 Petitioner; (2) the petition raises only the same grounds
`
`of unpatentability for which the Board instituted review in IPR2014-00039;
`
`(3) joinder would not affect the pending schedule in IPR2014-00039 or
`
`increase the complexity of that proceeding; and (4) Petitioner is “willing to
`
`accept an understudy role to minimize burden and schedule impact.” Mot. 2.
`
`The Board, acting on behalf of the Director, has discretion to join
`
`proceedings. 35 U.S.C. § 315(c). In exercising its discretion, the Board
`
`considers the impact of both substantive issues and procedural matters on the
`
`proceedings.
`
`The substantive issues in IPR2014-00039 would not be affected by
`
`joinder because Petitioner asserts only the grounds of unpatentability for
`
`which trial was instituted in IPR2014-00039, and makes only the arguments
`
`made by the -00039 Petitioner in its petition in that proceeding. Compare
`
`Pet. 10-25, with Microsoft Corporation v. B.E. Technology, L.L.C., Case
`
`IPR2014-00039, Paper 1 at 17-42. Further, Petitioner submits the same
`
`declaration of Henry Houh that the -00039 Petitioner submitted in support of
`
`its petition. See Ex. 1003; Microsoft Corporation v. B.E. Technology,
`
`L.L.C., Case IPR2014-00039, Ex. 1003. Thus, the petition in this
`
`proceeding raises no new issues beyond those already before the Board in
`
`IPR2014-00039.
`
`Regarding procedural matters, Petitioner argues that joinder would not
`
`require any change to the trial schedule in IPR2014-00039 because
`
`Petitioner “agrees to an understudy role and do[es] not raise any issues that
`
`4
`
`
`
`Case IPR2014-00738
`Patent 6,628,314 B1
`
`
`are not already before the Board.” Mot. 4. Specifically, Petitioner “agrees
`
`to assume a limited ‘understudy’ role” “[a]s long as Microsoft [i.e., the
`
`-00039 Petitioner] remains in the joined IPR.” Id. at 5. Given that Petitioner
`
`will assume an understudy role, Petitioner states that its presence will not
`
`introduce any additional briefing or need for discovery. Id. at 4.
`
`CONCLUSION
`
`Under the circumstances, we conclude Petitioner has demonstrated
`
`that joinder will not unduly complicate or delay IPR2014-00039, and
`
`therefore joinder is appropriate.
`
`
`
`Accordingly, it is:
`
`ORDER
`
` ORDERED that Petitioner’s motion for joinder with IPR2014-00039
`
`is granted;
`
` FURTHER ORDERED that this proceeding is joined with IPR2014-
`
`00039;
`
` FURTHER ORDERED that the grounds on which a trial was
`
`instituted in IPR2014-00039 are unchanged;
`
` FURTHER ORDERED that the Scheduling Order and adjustments to
`
`the Scheduling Order in place for IPR2014-00039 (Papers 14, 25) shall
`
`govern the joined proceedings;
`
` FURTHER ORDERED that IPR2014-00738 is instituted, joined, and
`
`terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`
`proceeding shall be made in IPR2014-00039;
`
`5
`
`
`
`Case IPR2014-00738
`Patent 6,628,314 B1
`
`
` FURTHER ORDERED that unless given prior authorization by the
`
`Board, Petitioner is not permitted to file papers, engage in discovery, or
`
`participate in any deposition or oral hearing in IPR2014-00039. Petitioner,
`
`however, is permitted to appear in IPR2014-00039 so that it may receive
`
`notification of filings and may attend depositions and oral hearing. Should
`
`Petitioner believe it necessary to take any further action, Petitioner should
`
`request a conference call to obtain authorization from the Board;
`
` FURTHER ORDERED that the case caption in IPR2014-00039 shall
`
`be changed to reflect the joinder with this proceeding in accordance with the
`
`attached example; and
`
` FURTHER ORDERED that a copy of this decision be entered into the
`
`file of IPR2014-00039.
`
`
`
`FOR PETITIONER:
`
`Clinton H. Brannon
`Mayer Brown, LLP
`cbrannon@mayerbrown.com
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`Freitas Angell & Weinberg LLP
`jangell@fawlaw.com
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`MICROSOFT CORPORATION and GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`____________
`
`Case IPR2014-000391
`Patent 6,628,314 B1
`____________
`
`
`
`1 Case IPR2014-00738 has been joined with this proceeding.
`
`
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