`
`571-272-7822
`IPR2014-00086 Paper 16
`Date Entered: June 25, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`TWITTER, INC. AND YELP INC.
`Petitioner
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC
`Patent Owner
`____________
`
`Case IPR2014-00812
`Case IPR2014-00086
`Patent 7,101,536
`____________
`
`
`
`Before, KALYAN K. DESHPANDE, TREVOR M. JEFFERSON,
`BRIAN J. McNAMARA, NEIL T. POWELL, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION GRANTING
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`Case IPR2014-00812
`Patent 7,010,536
`
`
`
`
`BACKGROUND
`
`On May 23, 2014, Twitter, Inc. (“Twitter”) and Yelp Inc. (“Yelp”)
`
`(collectively “Petitioner”) petitioned for inter partes review of claims 2-14 and 16
`
`of U.S. Patent No. 7,101,536 (“the ’536 Patent”) pursuant to 35 U.S.C. § 311 et
`
`seq. Papers 1, 8 (“Petition”). Petitioner also timely moved for joinder with Apple
`
`Inc. v. Evolutionary Intelligence LLC, IPR2014-00086 (“the Apple IPR”). Paper 4
`
`(“Motion For Joinder”). In a separate order entered today, we granted the Petition
`
`on the same grounds as those on which we instituted trial in the Apple IPR.1 As
`
`discussed below, joining Twitter and Yelp as petitioners in IPR2014-00086 will
`
`not delay the schedule or unduly complicate that proceeding. Therefore, we grant
`
`Petitioner’s Motion For Joinder.
`
`On June 3, 2014, we conducted a teleconference with counsel for Petitioner
`
`and Evolutionary Intelligence LLC. (“Patent Owner”). During that teleconference,
`
`Petitioner’s counsel confirmed that its challenges to claims 2-12, 14 and 16 of the
`
`’536 Patent in this proceeding are the same as those presented in the Apple IPR on
`
`which we instituted a trial. Petitioner’s counsel also agreed to withdraw its
`
`challenge to claim 13 on which we did not institute a trial in the Apple IPR. Thus,
`
`the challenges asserted in IPR2014-00086 and IPR2014-00812 are identical.
`
`During the teleconference, we also discussed procedural matters related to
`
`Petitioner’s Motion For Joinder. Petitioner agreed that joinder required no changes
`
`to Scheduling Order in IPR2014-00084, Paper 9.
`
`Because the grounds of unpatentability in the Apple IPR and the present
`
`proceeding are the same, during the call, the petitioners (Apple and collectively,
`
`Twitter and Yelp) agreed that the case is amenable to consolidated filings. Apple
`
`
`1 We instituted trial on challenges to claims 2-12, 14 and 16 as anticipated under 35
`U.S.C. § 102(e) by U.S. Patent 5,836,529 to Gibbs, et. al. We did not institute a
`trial in either proceeding based on challenges to claim 13.
`
`
`
`2
`
`
`
`Case IPR2014-00812
`Patent 7,010,536
`
`
`will be responsible for the consolidated filing. Any separate filing by the
`
`petitioners in the joined proceeding is limited to a single paper, filed by Twitter
`
`and Yelp, the collective Petitioner in this proceeding, of no more than seven pages
`
`directed only to points of disagreement with Apple. As the collective Petitioner in
`
`this proceeding, Twitter and Yelp are not permitted any individual filings and are
`
`not permitted any argument in furtherance of those advanced by Apple. Patent
`
`Owner is permitted a corresponding number of pages to respond separately to
`
`filings made collectively by Twitter and Yelp.
`
`In IPR2014-00086, Apple cites the testimony of Dr. Henry Houh. Twitter
`
`and Yelp, the collective Petitioner in this proceeding, also cite the testimony of Dr.
`
`Henry Houh. During the teleconference, it was agreed that Dr. Houh would be
`
`subject to a single cross examination in the joined proceeding, and not separately
`
`in each proceeding. Counsel representing Twitter and Yelp, collectively, and
`
`counsel representing Apple stated that they would work together to manage
`
`depositions of Patent Owner’s witnesses within ordinary time limits. At this time,
`
`there are no proposals to extend the allotted deposition times for cross examination
`
`or redirect.
`
` In view of these circumstances, during the teleconference, Patent Owner
`
`stated that it does not oppose the joinder and has filed no opposition to the Motion
`
`For Joinder. Apple also does not oppose the joinder.
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that IPR2014-00812 and IPR2014-00086 are joined;
`
`FURTHER ORDERED that the grounds on which IPR2014-00086 was
`
`instituted are unchanged;
`
`
`
`3
`
`
`
`Case IPR2014-00812
`Patent 7,010,536
`
`
`
`FURTHER ORDERED the Scheduling Order in place for IPR2014-00086 is
`
`unchanged;
`
`FURTHER ORDERED that throughout this proceeding, Apple, and Twitter
`
`and Yelp collectively, will file papers, except for motions which do not involve
`
`another party, as consolidated filings. Apple will identify each such filing as a
`
`consolidated filing and will be responsible for completing all consolidated filings.
`
`Twitter and Yelp collectively, may file an additional paper, not to exceed seven
`
`pages, which may address only points of disagreement with points asserted in
`
`Apple’s consolidated filings. Any such filing by Twitter and Yelp collectively,
`
`must specifically identify and explain each point of disagreement. Twitter and
`
`Yelp may not file arguments in support of points made in Apple’s consolidated
`
`filing;
`
`FURTHER ORDERED that, in response to any consolidated filing, Patent
`
`Owner may respond separately to any separate paper filed collectively by Twitter
`
`and Yelp. Any such separate response may not exceed the number of pages in the
`
`separate paper filed collectively by Twitter and Yelp and is limited to issues raised
`
`in that paper;
`
`FURTHER ORDERED that Patent Owner will conduct cross examination of
`
`any witnesses, as well as the redirect of any witness Patent Owner produces, in the
`
`joined proceeding within the timeframe normally allotted by the rules;
`
`FURTHER ORDERED that Apple and Twitter and Yelp, collectively, will
`
`designate attorneys to conduct the cross-examination of any witness produced by
`
`Patent Owner and the redirect of any witness produced by Apple or Twitter and
`
`Yelp, within the timeframe normally allotted by the rules for one party. Apple and
`
`Twitter and Yelp, collectively, will not receive any separate cross-examination or
`
`redirect time;
`
`
`
`4
`
`
`
`Case IPR2014-00812
`Patent 7,010,536
`
`
`
`FURTHER ORDERED that any requests by any party for additional
`
`deposition time must be brought before the Board;
`
`FURTHER ORDERED that this proceeding (IPR2014-00821) is terminated
`
`under 37 C.F.R. § 42.72 and all further filings in the joined proceeding shall be
`
`made in IPR2014-00086; and
`
`FURTHER ORDERED that the case caption in IPR2014-00086 shall be
`
`changed to reflect joinder with this proceeding in accordance with the attached
`
`example.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2014-00812
`Patent 7,010,536
`
`
`
`
`
`PETITIONER:
`
`Jeffrey Kushan
`Sidley Austin LLP
`jkushan@sidley.com
`
`Vaibhav P. Kadaba
`Kilpatrick Townsend & Stockton LLP
`wkadaba@kilpatricktownsend.com
`
`PATENT OWNER
`
`Anthony Patek
`Todd Kennedy
`Gutride Safier LLP
`pto@gutridesafier.com
`todd@gutridesafier.com
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`Case IPR2014-00812
`Patent 7,010,536
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`
`APPLE INC.
`TWITTER, INC. AND YELP INC.
`Petitioners
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC
`Patent Owner
`____________
`
`Case IPR2014-00086
`Case IPR2014-00812
`Patent 7,101,536
`____________
`
`
`
`
`7