UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`TWITTER, INC. AND YELP INC.
`Petitioners
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC
`
`Patent Owner
`
`Patent No. 7,010,536
`Filing Date: January 28, 1999
`Issue Date: March 7, 2006
`Title: SYSTEM AND METHOD FOR CREATING AND MANIPULATING
`INFORMATION CONTAINERS WITH DYNAMIC REGISTERS
`
`
`
`
`Inter Partes Review No. Unassigned
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`
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`MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TWITTER, INC. AND YELP INC.
`Petitioners
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC
`
`Patent Owner
`
`Patent No. 7,010,536
`Filing Date: January 28, 1999
`Issue Date: March 7, 2006
`Title: SYSTEM AND METHOD FOR CREATING AND MANIPULATING
`INFORMATION CONTAINERS WITH DYNAMIC REGISTERS
`
`
`
`
`Inter Partes Review No. Unassigned
`
`
`
`MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
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`
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`Twitter, Inc. and Yelp Inc. (“Petitioners”) submit concurrently herewith a
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`Petition for Inter Partes Review of U.S. Patent No. 7,010,536 (“Petition”) based on
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`grounds identical to those that formed the basis for pending IPR proceeding Apple
`
`Inc. v. Evolutionary Intelligence, LLC, IPR2014-00086 (“the Apple IPR”).
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`Pursuant to 35 U.S.C. § 315(c), Petitioners respectfully move that their Petition be
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`instituted and joined with the Apple IPR.1 Petitioners do not seek to alter the
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`grounds upon which the Board has already found support in instituting the Apple
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`IPR, and joinder will have no impact on the existing schedule in the joined IPRs.
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`Petitioners submit that joinder is appropriate because it will promote
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`efficient resolution of the issues without affecting scheduling for the pending
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`proceeding and will not prejudice the parties to the Apple IPR. Absent joinder,
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`Petitioners may be prejudiced as they have a significant interest in the underlying
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`validity determination at issue in this proceeding, given the potential impact on
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`litigation proceedings between Evolutionary Intelligence and Petitioners involving
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`the same patent. Joinder would protect Petitioners’ interests and avoid the
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`potential prejudice to Petitioners that could result from a settlement between
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`Evolutionary Intelligence and Apple.
`
`
`1 As stated in the Frequently Asked Questions section of the Patent Trial and
`Appeal Board’s website (http://www.uspto.gov/ip/boards/bpai/prps.jsp), “No prior
`authorization is required for filing the motion for joinder with the petition.”
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`Petitioners’ motion for joinder and accompanying Petition are timely under
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`37 C.F.R. §§ 42.22 and 42.122(b), as they are submitted within one month of April
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`25, 2014, the date that the Apple IPR was instituted.
`
`I.
`
`Background and Related Proceedings
`
`Evolutionary Intelligence LLC (“Evolutionary Intelligence”) is the owner of
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`U.S. Patent No. 7,010,536 (“the ‘536 patent”) and related U.S. Patent No.
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`7,702,682 (“the ‘682 patent”). In October 2012, in nine separate lawsuits2,
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`Evolutionary Intelligence sued Petitioners, Apple, and several other entities for
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`infringement of the ‘536 patent and ‘682 patent (the “Underlying Litigations”).
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`On October 22 and 23, 2013, Apple Inc. (“Apple”), Facebook, Inc., and
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`Petitioners filed eight petitions for inter partes review which collectively covered
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`all claims of the ‘536 patent and ‘682 patent. In December 2013 and January 2014,
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`all nine suits in the Underlying Litigations were stayed pending the outcome of the
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`eight petitions for inter partes review. On April 25, 2014, the Board instituted trial
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`2 Evolutionary Intelligence LLC v. Yelp Inc., Civil Action No. 4:13-cv-03587
`(DMR) (N.D. Cal.); Evolutionary Intelligence LLC v. Twitter, Inc., Case No. 5:13-
`cv-04207-JSW(N.D. Cal.); Evolutionary Intelligence LLC v. Apple Inc., Case No.
`3:13-cv-04201-JD (N.D. Cal.); Evolutionary Intelligence LLC v. Facebook, Inc.,
`Case No. 3:13-cv-04202-JSC (N.D. Cal.); Evolutionary Intelligence LLC v.
`FourSquare Labs, Inc., Case No. 3:13-cv-04203-EDL (N.D. Cal.); Evolutionary
`Intelligence LLC v. Groupon, Inc., Case No. 3:13-cv-04204-LB (N.D. Cal.);
`Evolutionary Intelligence LLC v. LivingSocial, Inc., Case No. 3:13-cv-04205-EDL
`(N.D. Cal.); Evolutionary Intelligence LLC v. Millennial Media, Inc., Case No.
`5:13-cv-04206-HRL (N.D. Cal.); Evolutionary Intelligence LLC v. Sprint Nextel
`Corporation et al, Case No. 5:13-cv-04513-RMW (N.D. Cal.)
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`on claims 2-12, 14 and 16 of the ‘536 patent in the Apple IPR, and, on April 25
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`and 28, 2014, the Board declined to institute the remainder of Apple’s, Facebook’s
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`and Petitioners’ inter partes review petitions.
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`II. This Joinder Motion and the Petition are Timely
`
`The Petition and the instant motion for joinder are timely under 35 U.S.C. §
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`315(c), 37 C.F.R. §§ 42.22, and 42.122(b), as they are being submitted within one
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`month of the date that the Apple IPR was instituted. Rule 42.122 states that a
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`motion for joinder shall be filed no later than one month after the granting of the
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`petition that is sought to be joined. Apple’s petition was granted on April 25, 2014.
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`See IPR2014-00086, Paper 8. The Petition, filed on May 23, 2014, was filed less
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`than one month from the granting of Apple’s IPR.
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`Further, the Petition is not subject to the one-year time bar of Section 315(b)
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`and Rule 42.101(b). Pursuant to Section 315(b), the one-year bar “shall not apply
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`to a request for joinder under subsection (c).” See 35 U.S.C. §§ 315(b), 315(c); see
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`also Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 4-
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`5. Similarly, Rule 42.101(b), which provides that a petition for inter partes review
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`may not be “filed more than one year after the date on which the petitioner…is
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`served with a complaint alleging infringement of the patent,” “shall not apply,”
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`pursuant to Rule 42.122(b), “when the petition is accompanied by a request for
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`Joinder.” See 37 C.F.R. §§ 42.101(b), 42.122(b); see also Microsoft Corp. v.
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`Proxyconn, Inc., IPR2013-00109, Paper 15 (granting joinder beyond the one-year
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`window).
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`III.
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`
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`Joinder will not impact the Board’s ability to complete the review
`within the one-year period
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`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c) provide that
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`inter partes review proceedings should be completed and the Board’s final
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`decision issued within one year of institution of the review. The same provisions
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`provide the Board with flexibility to extend the one-year period by up to six
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`months for good cause, or in the case of joinder. Id. In this case, joinder should
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`not affect the Board’s ability to issue its final determination within one year
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`because Petitioners do not raise any issues that are not already before the Board.
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`As long as Apple remains in the Apple IPR, Petitioners will coordinate their
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`approach and filings with Apple. In the event that Apple settles, Petitioners will be
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`well positioned to continue participating in this proceeding without any delay.
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`Furthermore, the Petition is based only on the grounds on which the Board
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`granted the Apple IPR, for which joinder is requested. Petitioners submit that
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`Evolutionary Intelligence does not need to file a new Patent Owner’s Preliminary
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`Response in this instance because the invalidity grounds are identical to those
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`grounds raised in the petition for the Apple IPR. Evolutionary Intelligence already
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`submitted a Patent Owner’s Preliminary Response, which the Panel has already
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`considered. See IPR2014-00086, Paper No. 6; cf. Motorola Mobility LLC v.
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`Softview LLC, IPR2013-00256, Paper No. 8 (allowing a preliminary response
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`limited to the points in the new petition which are different from the granted
`
`petition). Moreover, Petitioners have retained the same expert witness that
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`submitted a declaration in the Apple IPR covering the same subject matter. There
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`is nothing new for Evolutionary Intelligence to address in response to the Petition.
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`The first deadline in the Apple IPR is for Evolutionary Intelligence’s
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`response to Apple’s petition (37 C.F.R. § 42.120) and any motion to amend the
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`patent (37 C.F.R. § 42.121). Pursuant to the Scheduling Order in the Apple IPR,
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`this deadline is currently set for July 11, 2014 – seven weeks from the date of this
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`motion. IPR2014-00086, Paper 9. Should the Board determine to grant
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`Petitioners’ request for joinder, Evolutionary Intelligence will have ample time to
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`complete its submissions by its deadline. Because Petitioners’ petition for inter
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`partes review does not raise any new issues, Evolutionary Intelligence’s response
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`would not require any analysis beyond what Evolutionary Intelligence is already
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`required to undertake to respond to Apple’s petition.
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`In view of the above, Petitioners submit that the current schedule in the
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`Apple IPR can remain unchanged. At most, the Board could add a deadline for
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`Evolutionary Intelligence to respond to this Petition if it felt a separate response
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`- 5 -
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`was necessary, but this deadline should not impact any other deadline in the
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`schedule.
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`IV.
`
`Joinder would enhance efficiency by consolidating issues, avoiding
`duplicate efforts, preventing inconsistencies and would avoid prejudice
`to Petitioners
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`As discussed above, the validity of the ‘536 patent is squarely at issue in the
`
`Underlying Litigations and the Apple IPR. A final written decision on the validity
`
`of claims 2-12, 14 and 16 of the ‘536 patent will simplify, minimize, or even
`
`entirely resolve, issues in the Underlying Litigations.
`
`In addition, the possibility of settlement between Evolutionary Intelligence
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`and Apple, and the resulting impact on Petitioners if the Apple IPR is terminated,
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`further supports the conclusion that joinder is appropriate. 35 U.S.C. § 317(a)
`
`provides that an inter partes review “shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner” unless the
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`Board has already reached its decision on the merits, and if no petitioner remains
`
`after settlement, “the Office may terminate the review.” Thus, if Evolutionary
`
`Intelligence were to reach a settlement with Apple, the Apple IPR may be
`
`terminated without proceeding to a final written decision. If this were to occur,
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`Petitioners would have to reargue, in the Underlying Litigations, the exact same
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`arguments on which the Board has already determined that Apple is reasonably
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`likely to prevail. Petitioner would then have to raise arguments related to both
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`- 6 -
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`claim construction and validity, increasing the work for both Petitioners and
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`Evolutionary Intelligence.
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`Denial of joinder will prejudice Petitioners because the Petition would
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`otherwise be barred under the one-year time bar of 35 U.S.C. § 315(b) and unable
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`to participate in an inter partes review proceeding relating to the ‘536 patent. If
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`the Board permits Petitioners to join the Apple IPR, and the ’536 patent is upheld
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`in a final decision, Petitioners will be estopped from further challenging the
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`validity of the patent on these grounds, avoiding duplication of Evolutionary
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`Intelligence’s efforts in the Underlying Litigation against Petitioners. See 35
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`U.S.C. § 315(e)(1). Accordingly, to simplify the issues and to avoid duplicate
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`efforts, the possibility of inconsistencies, and prejudice to Petitioners, joinder is
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`appropriate.
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`V.
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`Joinder will not Prejudice Evolutionary Intelligence or Apple
`
`Permitting joinder will not prejudice Evolutionary Intelligence or Apple.
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`Petitioners raise no issues that are not already before the Board, such that joinder
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`would not affect the timing of the Apple IPR or the content of Evolutionary
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`Intelligence’s response due on July 11, 2014. Further, even if the Board were to
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`determine that joinder would require an extension to the schedule, such an
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`extension is permitted by law and is not itself a reason for denying joinder. 35
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`U.S.C. § 316(a)(1); 37 C.F.R. § 42.100(c). Moreover, Petitioners agree to
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`coordinate with Apple and, as such, Apple will not suffer any additional costs or
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`burdens in preparing motions and arguments.3
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`Petitioners submit that any minor impact on potential settlement negotiations
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`between Apple and Evolutionary Intelligence is outweighed here as Petitioners
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`have timely sought joinder to the Apple IPR, with a petition that raises no new
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`grounds, promptly after Petitioners’ previous attempt to institute an inter partes
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`review of the ‘536 patent was denied. See IPR2013-00495, Paper 13 at 7-9.
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`Moreover, Evolutionary Intelligence will suffer no prejudice from by joinder
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`because the IPR proceedings will provide a relatively inexpensive full and fair
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`opportunity to respond to the challenged claims in a venue that should proceed
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`much more quickly than the Underlying Litigations. See Sony Corp. v. Yissum
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`Research Development Company of the Hebrew University of Jerusalem,
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`IPR2013-00326, Paper 15 at 4.
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`
`
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`3 Petitioners propose an arrangement similar to Motorola Mobility LLC v. Softview
`LLC, IPR2013-00257, Paper No. 10 at 8-10 whereby Petitioners incorporate their
`filings with those of Apple in a consolidated filing. Any separate filing by
`Petitioners would be limited to no more than seven pages directed only to points of
`disagreement with Apple. Petitioners would not be permitted any arguments in
`furtherance of those advanced in Apple’s consolidated filing. Evolutionary
`Intelligence would be allowed a corresponding number of pages to respond
`separately to Petitioners’ filings. Petitioners also agree to work with Apple to
`manage any depositions within ordinary time limits.
`- 8 -
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`VI. Conclusion
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`For the foregoing reasons, Petitioners respectfully request that their Petition
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`for Inter Partes Review of U.S. Patent No. 7,010,536 be granted and that the
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`proceedings be joined with pending IPR proceeding Apple Inc. v. Evolutionary
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`Intelligence, LLC, IPR2014-00086.
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`
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`Respectfully submitted,
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`
`
`Back-Up Counsel
`Robert D. Tadlock (pro hac vice)
`Registration No.
`rtadlock@kilpatricktownsend.com
`
`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`Two Embarcadero Center, 8th Floor
`Telephone: (415) 576-0200
`Fax: (415) 576-0300
`
`
`
`By:
`
`Vaibhav P. Kadaba
`Registration No. 45,865
`Lead Counsel for Petitioners
`
`
`Lead Counsel
`Vaibhav P. Kadaba
`Registration No. 45,865
`wkadaba@kilpatricktownsend.com
`
`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta , GA 30309-4528 USA
`Telephone: (404) 532-6959
`Fax: (404) 541-3258
`
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`- 9 -
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of this Motion for Joinder, has
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`been served via Express Mail on May 23, 2014, upon the following:
`
`GUTRIDE SAFIER LLP
`Adam J. Gutride, Esq.
`Seth A. Safier, Esq.
`Todd Kennedy, Esq.
`Anthony J. Patek, Esq.
`Marie McCrary, Esq.
`835 Douglass Street
`San Francisco, CA 94114
`
`
`
`
`Vaibhav P. Kadaba
`Registration No. 45,865
`Counsel for Petitioners
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`
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`By:
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`
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`Dated: May 23, 2014
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`
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`66300912V.2
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`
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`- 10 -
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