UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, LLC
`Patent Owner
`____________
`
`Case No.: IPR2014-00743
`Patent 6,628,314
`____________
`
`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
`____________
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, LLC
`Patent Owner
`____________
`
`Case No.: IPR2014-00743
`Patent 6,628,314
`____________
`
`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
`Google, Inc. (“Petitioner”) submits concurrently 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.
`
`IPR2014-00052 (“the Facebook IPR”).
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 37 C.F.R. §
`
`42.122(b), Petitioner respectfully moves that this Petition be instituted and joined
`
`with the Facebook IPR. Petitioner merely requests an opportunity to join with the
`
`Facebook IPR as an “understudy” to Facebook, only assuming an active role in the
`
`event Facebook settles with B.E. Technology. Thus, Petitioner does not seek to
`
`alter the grounds upon which the Board has already instituted the IPR, and joinder
`
`will have no impact on the existing schedule in the IPR. Under Rule 42.122(b),
`
`this Motion is timely as it was filed within one month of the granting of IPR2014-
`
`00052.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`B.E Technology (“B.E. Tech”) is the owner of the ’314 Patent. In 2012,
`
`B.E. Tech sued ten different companies for alleged infringement of the ’314 Patent
`
`(“Underlying Litigation”). In October of 2013, three of the defendants, Facebook,
`
`Microsoft, and Petitioner Google, filed four petitions for inter partes review of the
`
`’314 Patent. The Board instituted trial in all four petitions on April 9, 2014. See
`
`1
`
`
`
`Facebook v. B.E. Technology, L.L.C. (Case Nos. IPR2014-00052 and IPR2014-
`
`00053); Microsoft Corporation v. B.E. Technology, L.L.C. (Case No. IPR2014-
`
`00039); and Google Inc. v. B.E. Technology, L.L.C. (Case No. IPR2014- 00038).
`
`III. REQUIREMENTS FOR MOTION FOR JOINDER ARE MET
`
`Petitioner respectfully submits 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) Petitioner is willing to accept an
`
`understudy role to minimize burden and schedule impact. Absent joinder,
`
`Petitioner could be prejudiced if the Facebook IPR is terminated (e.g., via
`
`settlement) before a final written decision is issued. For example, Petitioner would
`
`lost its opportunity to challenge the claims of the ’314 Patent before the Board on
`
`the grounds in the Petition. Petitioner might also have to start over before the
`
`District Court with the same arguments presented by Facebook before the Board,
`
`thereby wasting resources and losing efficiency. Accordingly, joinder should be
`
`granted.
`
`a. Joinder Will Promote the Efficient Determination of Validity
`Without Prejudice to Facebook or B.E. Tech.
`
`2
`
`
`
`Granting joinder and permitting Petitioner to assume the understudy role
`
`will not prejudice Facebook or B.E. Tech. The Petition does not raise any issues
`
`that are not already before the Board, such that joinder would not affect the timing
`
`of the IPR or the content of B.E. Tech’s responses. See Decision on Joinder,
`
`IPR2013-00385 (Paper No. 17). Petitioner’s limited role ensures that Facebook
`
`and B.E. Tech will not suffer any additional costs. Petitioner has already notified
`
`counsel for Facebook its intent to assume only an understudy role. Likewise,
`
`B.E. Tech will not have to coordinate with or respond to arguments by more
`
`parties than they already do.
`
`Moreover, a final written decision on the validity of the ’314 patent will
`
`minimize issues in the Underlying Litigation and potentially resolve the Litigation
`
`altogether thereby promoting the efficient determination of validity. If the Board
`
`permits Petitioner to join the Facebook IPR, and the ’314 patent is upheld in a final
`
`decision, Petitioner will be estopped from further challenging the validity of the
`
`patent on these grounds, avoiding duplication of B.E. Tech’s efforts at least as to
`
`Petitioner. See 35 U.S.C. § 315(e)(1). Accordingly, to avoid duplicate efforts and
`
`promote judicial efficiency, joinder is appropriate.
`
`b. No New Arguments Are Presented.
`The petition asserts only the arguments that the Board has already instituted
`
`in the Facebook IPR. Thus, there are no new arguments to consider. Further, the
`
`3
`
`
`
`Petition relies on the expert witness, Robert J. Sherwood, who is already involved
`
`in Facebook’s IPR. Thus, no new expert depositions are required.
`
`c. No Schedule Adjustments Are Necessary.
`Joinder in this case will not impact the Board’s ability to complete its review
`
`in a timely manner. Section 316(a)(11) provides that IPR proceedings should be
`
`completed and the Board’s final decision issued within one year of institution of
`
`the review. See also 37 C.F.R. § 42.100(c). Here, joinder will not affect the
`
`Board’s ability to issue its final determination within one year because Petitioner
`
`agrees to an understudy role and do not raise any issues that are not already before
`
`the Board. Indeed, the Petition includes only those grounds on which the IPR was
`
`instituted, and the invalidity grounds were copied from Facebook’s petition. Given
`
`that Petitioner will assume an understudy role, their presence will not introduce
`
`any additional arguments, briefing, or need for discovery. See Decision on Joinder,
`
`IPR2013-00495 (Paper No. 13).
`
`Petitioner submits that B.E. Tech does not need to file a Patent Owner’s
`
`Preliminary Response, and request that the Board proceed without it. This is
`
`consistent with the Board’s Order in IPR2013-00256 (Paper No. 8), which allowed
`
`the Patent Owner to file a preliminary response addressing only those points raised
`
`in the new petition that were different from those in the granted petition. Here,
`
`because the invalidity grounds are exactly the same as the instituted grounds in
`
`4
`
`
`
`Facebook’s Petition, there is nothing new for B.E. Tech to address. Moreover,
`
`B.E. Tech did not file a Preliminary Response to Facebook’s petition or any of the
`
`other four petitions filed against the ’314 Patent. Alternatively, the Board can add
`
`an additional deadline for B.E. Tech to respond to this Petition, but this deadline
`
`will not impact other deadlines in the schedule.
`
`In view of the above, Petitioner submits that the current schedule in the
`
`Facebook IPR can stay unchanged.
`
`d. Petitioner Agrees To Assume A Limited Role
`As long as Facebook remains in the joined IPR, Petitioner agrees to assume
`
`a limited “understudy” role. As discussed above, Petitioner offers no new grounds
`
`for invalidity and their presence will not introduce any additional arguments,
`
`briefing or need for discovery.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that their Petition
`
`for Inter Partes Review of the ’314 Patent be granted and that the proceedings be
`
`joined with IPR2014-00052.
`
`
`
`
`
`5
`
`
`
`Although Petitioner believes 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. 130019.
`
`Dated: May 9, 2013
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Clinton H. Brannon/
`
`Clinton H. Brannon
`
`Reg. No. 57,887
`
`Counsel for Petitioner
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Clinton Brannon, hereby certify that a copy of the foregoing MOTION
`
`FOR JOINDER UNDER 35 U.S.C § 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`was served on Patent Owner, by placing into Express Mail directed to the attorney
`
`of record for U.S. Patent No. 6,628, 314 at the following address:
`
`James D. Stevens
`Reising Ethington P.C.
`P.O. Box 4390
`Troy MI 48099
`
`
`A courtesy copy of the foregoing motion was also served via electronic mail
`
`
`
`
`transmission on the Attorney of Record for related inter partes review petitions of
`
`U.S. Patent No. 6,628,314 (Nos. IPR2014-00038, IPR2014-00039, IPR2014-
`
`00052, and IPR2014-00053) at the following address:
`
`Jason S. Angell
`FREITAS ANGELL & WEINBERG LLP
`350 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`jangell@fawlaw.com
`
`
`
`
`
`Dated: May 9, 2013
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`By: /Clinton H. Brannon/
`
`Clinton H. Brannon
`
`Reg. No. 57,887
`
`Counsel for Petitioner
`
`
`
`
`
`
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
