UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`CALLWAVE COMMUNICATIONS, LLC
`Patent Owner
`
`_____________________
`
`Case IPR2014-00920
`Patent 6,771,970
`_____________________
`
`Petitioner’s Motion to Join Pursuant to
`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b)
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`CALLWAVE COMMUNICATIONS, LLC
`Patent Owner
`
`_____________________
`
`Case IPR2014-00920
`Patent 6,771,970
`_____________________
`
`Petitioner’s Motion to Join Pursuant to
`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b)
`
`
`
`Case IPR2014-00920
`Patent 6,771,970
`Location Labs respectfully requests the Board to join the trial resulting from
`
`the second petition for inter partes review of the ’970 patent (filed with this
`
`motion) with IPR2014-00199 (“the ’199 trial”) because the second petition has
`
`overlapping prior art, relies on testimony from the same expert witness, involves
`
`the same patent with the same parties, and the petitioner expeditiously petitioned
`
`for review of the ’970 patent. Accordingly, there is good cause for granting this
`
`motion for joinder. In addition, joinder would enable a just, speedy, and efficient
`
`determination of the patentability of the claims of the ’970 patent.
`
`APPLICABLE STATUTE AND RULE
`I.
`35 U.S.C. § 315(c)
`
`the
`(c) JOINDER. —If the Director institutes an inter partes review,
`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.
`37 C.F.R. § 42.122(b)
`
`Request for joinder. Joinder may be requested by a patent owner or
`petitioner. Any request for joinder must be filed, as a motion under
`§ 42.22, no later than one month after the institution date of any inter
`partes review for which joinder is requested. The time period set forth
`in § 42.101(b) shall not apply when the petition is accompanied by a
`request for joinder.
`
`- 2 -
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`
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`Case IPR2014-00920
`Patent 6,771,970
`
`II.
`
`RELIEF REQUESTED
`In this motion, the petitioner requests that the second petition be joined with
`
`the ’199 trial.
`
`III.
`
`STATEMENT OF FACTS
`On November 27, 2013, the petitioner filed a petition for inter partes
`1.
`
`review of the ’970 patent ("first petition").
`
`2.
`
`The first petition asserted that Elliot1 and Fitch2, alone or in
`
`combination, anticipated or rendered obvious claims 1–19 of the ’970 patent.
`
`3.
`
`4.
`
`The patent owner filed a preliminary response on March 17, 2014.
`
`On May 9, 2014, the Board decided to institute review of claim 18 of
`
`the ’970 patent as anticipated by Elliot, but denied review of claims 1–17 and 19
`
`on any of the proposed grounds.
`
`5.
`
`6.
`
`The petitioner requested rehearing on May 23, 2014.
`
`The patent owner opposed the petitioner’s request for rehearing on
`
`June 6, 2014.
`
`1 U.S. Patent No. 6,243,039 to Elliott (Ex. 1110).
`
`2 U.S. Patent No. 6,321,092 to Fitch (Ex. 1105).
`
`- 3 -
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`
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`Case IPR2014-00920
`Patent 6,771,970
`The petitioner filed a second petition for inter partes review of claims
`
`7.
`
`1–17 and 19 of the '970 patent on June 9, 2014 ("second petition"), one month
`
`from the May 9, 2014 decision to institute.
`
`IV. ARGUMENT
`The ’199 trial includes review of claim 18 of the ’970 patent as anticipated
`
`by Elliott. The second petition, which the petitioner seeks to join with the ’199
`
`trial, relies on a limited number of grounds closely related to the grounds the Board
`
`is considering in the ’199 trial. The table below summarizes the relationship
`
`between the grounds already considered in the ’199 trial and those proposed in the
`
`second petition.
`
`- 4 -
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`Case IPR2014-00920
`Patent 6,771,970
`
`Grounds Proposed in First Petition3
`Fitch (§ 102): 1-3, 11-14, 16 and 19
`
`Fitch in view of Jones (§ 103): 4
`
`Fitch in view of Shah5 (§ 103): 5
`
`Fitch in view of Elliot (§ 103): 6-10, 15,
`17 and 18
`
`Grounds Proposed in Second Petition
`Fitch in view of Roel-Ng et al.4 (§ 103):
`1-3, 11-14, 16 and 19
`Fitch in view of Roel-Ng et al. and Jones
`(§ 103): 4
`Fitch in view of Roel-Ng et al. and Shah
`(§ 103): 5
`Fitch in view of Roel-Ng et al. and Elliot
`(§ 103): 6-10, 15 and 17
`
`The grounds proposed in the second petition rely on Roel-Ng et al., which
`
`was absent from the first petition. Roel-Ng et al. teaches the elements of the claims
`
`that the Board stated were absent in Fitch and Elliot. However, considering Roel-
`
`Ng et al. will not unduly burden the Board as petitioner relies on it for a single
`
`limitation in claims 1, 14, and 19, and Fitch and Elliot are overlapping prior art.
`
`In addition to relying on overlapping prior art, the ’199 trial and second
`
`petition involve the same parties, the same patent, and the same expert. Indeed, the
`
`claims not currently under review recite many of the same limitations as claim 18
`
`3 The first petition also proposed grounds based on Elliot. To minimize the
`
`number of issues and facilitate joinder, the second petition does not rely on Elliot
`
`as a primary reference.
`
`4 U.S. Patent No. 6,002,936 (Ex. 1107).
`
`5 U.S. Patent No. 5,758,313 (Ex. 1109).
`
`- 5 -
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`
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`Case IPR2014-00920
`Patent 6,771,970
`under review in the ’199 trial. Despite the fact that the second petition seeks
`
`review of new claims, the new claims are substantially similar to claim 18, the
`
`claim construction remains the same, and the second petition raises limited new
`
`issues. In addition, as the same declarant provides related testimony in both cases,
`
`cross-examination can be accomplished with a single deposition. Thus, joinder
`
`will have minimal impact on the ’199 trial.
`
`The petitioner expeditiously filed its second petition to ensure the just,
`
`speedy, and inexpensive resolution of a proceeding joined with the ’199 trial. The
`
`Board issued a scheduling order on May 9, 2014, only one month before the filing
`
`date of the second petition. The expeditious filing of the second petition enables
`
`the Board to promptly decide whether to institute and join a second trial with the
`
`’199 trial. As such, the petitioner believes that the scheduling order need not
`
`change. However, if the Board chooses to delay the ’199 proceeding, the
`
`petitioner consents to giving the patent owner a 1-month extension on due date 1,
`
`thereby shortening the petitioner’s period of reply (due date 2) by one month. This
`
`will give the patent owner sufficient time to prepare a response and allow the
`
`Board to meet its statutorily mandated, 1-year deadline.
`
`Petitioner respectfully requests that the Board join the trials to eliminate the
`
`burdens that parallel proceedings would impose on the petitioner, the patent owner,
`
`the Board, and the District Court. Parallel proceedings could happen in three
`
`- 6 -
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`
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`Case IPR2014-00920
`Patent 6,771,970
`ways. First, the accused infringers will offer a defense challenging the validity of
`
`claims 1–17 and 19 in District Court, and these claims are similar to claim 18;
`
`granting the second petition will decrease the likelihood of parallel proceedings in
`
`District Court, thus minimizing the opportunity of obtaining inconsistent results.
`
`Second, the Board could agree that the second petition presents a reasonable
`
`likelihood of prevailing on at least one claim, and deny this motion to join. Third,
`
`the petitioner plans to request ex parte reexamination of the same claims of the
`
`’199 patent. If the Board institutes a trial in response to the second petition to
`
`review claims 1-17 and 19 of the ’970 patent, the petitioner will request
`
`authorization to file a motion to stay the ex parte reexamination. Accordingly, the
`
`petitioner urges the Board to join the ’199 trial with the trial resulting from the
`
`second petition to avoid parallel proceedings that might reach inconsistent results.
`
`Congress enacted these new trial proceedings to allow for a just, speedy, and
`
`inexpensive resolution to questions of patentability. The Board cannot accomplish
`
`this objective without comprehensively reviewing the claims of the '970 patent.
`
`Quite the opposite is true; conducting a trial on a single claim of the '970 patent in
`
`the Patent Office, while litigating the validity of similar claims in District Court, is
`
`not in the best interest of the judicial system or the parties. Thus the petitioner
`
`urges the Board to grant this motion to join to conserve not only the Patent Office’s
`
`resources, but also those of the District Court.
`
`- 7 -
`
`
`
`Case IPR2014-00920
`Patent 6,771,970
`
`V.
`
`CONCLUSION
`There is good cause to grant this motion to join because of the similarity of
`
`issues between the second petition and the ’199 trial. Having parallel proceedings
`
`wastes the Office’s resources and those of the petitioner, patent owner, and the
`
`District Court. Separate proceedings also might result in inconsistent decisions
`
`either in the Central Reexamination Unit or the District Court. Granting this
`
`motion to join will ensure a just, speedy, and inexpensive resolution to whether the
`
`claims of the ’970 patent are unpatentable.
`
`Dated: June 9, 2014
`
`Respectfully submitted,
`Dentons US LLP
`
`By:
`
`/Scott W. Cummings/
`
`Mark L. Hogge, Reg. No. 31,622
`Email: mark.hogge@dentons.com
`
`Scott W. Cummings, Reg. No. 41, 567
`Email: scott.cummings@dentons.com
`
`Attorneys for Petitioner
`
`- 8 -
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(E))
`
`The undersigned hereby certifies that the foregoing Petitioner’s Motion to
`
`Join Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) was served via
`
`FedEx Priority Overnight via compact disk, in its entirety on Attorneys of record in
`
`U.S. Patent No. 6,771,970, as well as counsel of record for the patent owner in
`
`IPR2014-00199.
`
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`
`90 PARK AVENUE #21
`
`NEW YORK NY 10016
`
`AND
`
`Thomas Engellenner
`
`Pepper Hamilton LLP
`
`125 High Street
`
`19th Floor, High Street Tower
`
`Boston, MA 02110
`
`Dated: June 9, 2014
`
`By: /Nona Durham/
`
`Nona Durham
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