IPR2014-00950
`Petitioner’s Motion for Joinder
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RELOADED GAMES, INC.
`Petitioner
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`v.
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`PARALLEL NETWORKS LLC
`Patent Owner
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`____________
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`Case No. IPR2014-00950
`Patent 7,188,145
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) and 37 C.F.R. § 42.122(b)
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`Petitioner’s Motion for Joinder
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RELOADED GAMES, INC.
`Petitioner
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`v.
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`PARALLEL NETWORKS LLC
`Patent Owner
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`____________
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`Case No. IPR2014-00950
`Patent 7,188,145
` ____________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) and 37 C.F.R. § 42.122(b)
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`IPR2014-00950
`Petitioner’s Motion for Joinder
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`RELIEF REQUESTED
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`Petitioner Reloaded Games, Inc. (“Reloaded”) hereby moves for joinder of
`the petition for inter partes review of claims 1, 4, 5, 8, 9, 11-15, 18, 19, 22, 23 and
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`25-28 (“Challenged Claims”) of U.S. Patent No. 7,188,145 (“the ‘145 Patent”)
`filed today (“Second Petition”) with the instituted inter partes review styled
`Reloaded Games, Inc. v. Parallel Networks LLC, Case No. IPR2014-00136 (KLD),
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`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b). In this Motion,
`Petitioner requests that the Second Petition be joined with IPR2014-00136.
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`STATEMENT OF MATERIAL FACTS
`1.
`On November 11, 2013, Reloaded filed a Petition for Inter Partes
`Review requesting review of claims 1-36 of the ‘145 Patent.
`2.
`On May 16, 2014 the Board issued a decision instituting trial on
`claims 2-4, 6, 7, 10, 16-18, 20, 21, 24 and 29-36 in IPR2014-00136.
`3.
`Today, Petitioner filed a petition for inter partes review that
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`challenges additional claims that either: (1) are merely the independent claims
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`(claims 1 and 15) from which instituted dependent claims in IPR2014-00136
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`depend therefrom (and which would be unpatentable if the instituted dependent
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`claims are found to be unpatentable), or (2) depend directly or indirectly from
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`independent claims 1 and 15 and add insubstantial additional limitations as
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`compared to these independent claims. The grounds of invalidity presented in the
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`IPR2014-00950
`Petitioner’s Motion for Joinder
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`Second Petition are premised upon the same grounds already adopted in the
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`Decision (§103 in view of Smith and Inohara) and only apply citations from those
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`references necessary to the recitations of claims 1, 4, 5, 8, 9, 11-15, 18, 19, 22, 23
`and 25-28.
`4. More particularly, the Second Petition argues that claim 1 is obvious
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`based on the combination of Smith (Ex. 1006) and Inohara (Ex. 1007). The Board
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`previously found that claim 2, which depends from claim 1 and therefore includes
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`the limitations of claim 1, is likely obvious on the same grounds. Claims 4, 5, 8, 9
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`and 11-14 depend directly or indirectly from claim 1.1 Similarly, the Board
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`instituted an IPR on claim 16, which is dependent on claim 15 and therefore
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`includes the limitations of claim 15, on the same grounds of Smith in view of
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`Inohara. Again, the remaining Challenged Claims depend either directly or
`indirectly from claim 15.
`5.
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`On May 30, 2014, Patent Owner, in the related litigation, sought to lift
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`a pending stay in the case on the grounds that it wanted to proceed with an
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`infringement claim against Petitioner, and other parties, on the claims of the ‘145
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`Patent that were not instituted in IPR2014-00136. See Exhibit 1014, Parallel
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`1 Claim 5 depends from claim 4, which was also previously instituted in IPR2014-
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`00136.
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`IPR2014-00950
`Petitioner’s Motion for Joinder
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`Networks LLC v. Reloaded Games, Inc., Case No. 1:13-cv-827-RGA (D. Del.),
`Motion to Lift Stay, at 2.
`6.
`For these reasons, Petitioner considered the filing of the second
`petition necessary and appropriate.
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`GOVERNING RULES
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`37 C.F.R. § 42.122 Multiple proceedings and Joinder.
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`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.
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`DISCUSSION
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`The Board has authority under 35 U.S.C. § 315(c) to join a properly-filed
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`second inter partes review petition to an instituted inter partes review proceeding.
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`A motion for joinder should: (1) set forth the reasons why joinder is appropriate;
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`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the already instituted action; and (4)
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`address specifically how briefing and discovery may be simplified. See IPR2013-
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`00004, Paper 15 at 4; Frequently Asked Question (“FAQ”) H5 on the Board’s
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`website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`IPR2014-00950
`Petitioner’s Motion for Joinder
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`First, this request for joinder is timely as the time periods set forth in 37
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`C.F.R. §42.101(b) do not apply to the Second Petition because it is accompanied
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`by this request for joinder. 37 C.F.R. § 42.122(b). Trial was instituted on May 16,
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`2014 and the instant motion and the Second Petition have been filed on or before
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`June 16, 2013. Therefore, this motion is made within one month of the date the
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`trial was instituted in IPR2014-00136 as required by Rule 42.122(b).
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`Not only is joinder procedurally proper, but it is also substantively
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`appropriate under the circumstances. First, the Second Petition involves the same
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`parties – Reloaded Games and Parallel Networks – and the same patent. Second,
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`the Second Petition raises a limited number of additional issues. In particular, the
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`grounds of invalidity presented in the Second Petition are premised upon the same
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`references (Smith and Inohara) already relied upon in the Institution Decision. The
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`Second Petition merely adds citations to those references necessary to meet the
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`additional recitations of claims 1, 5, 8, 9, 11-15, 19, 22, 23 and 25-28. While these
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`claims were included in the First Petition (IPR2014-00136), they were challenged
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`only on anticipation grounds. In the Second Petition, Reloaded has included these
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`claims, arguing grounds of obviousness for these claims, in part based on the
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`Board’s claim interpretation of the term “allowing” in its IPR2014-00136
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`Institution Decision. Thus, the prior art and grounds in the Second Petition will
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`not complicate the proceeding in IPR2014-00136.
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`IPR2014-00950
`Petitioner’s Motion for Joinder
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`Moreover, IPR2014-00136 was instituted on dependent claim 2, but not
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`independent claim 1, over the same references relied on by Petitioner in the Second
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`Petition. The Second Petition, therefore, is directed to issues that will already be
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`resolved in IPR2014-00136. For example, in order to find claim 2 obvious, it will
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`also need to be determined that the limitations of claim 1, included in dependent
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`claim 2, are also taught by the prior art. See 37 C.F.R. §1.75 (“Claims in
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`dependent form shall be construed to include all the limitations of the claim
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`incorporated by reference into the dependent claim.”). For this additional reason,
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`joinder is appropriate.
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`Third, in an effort to accommodate the difference in scheduling, Petitioner is
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`willing to forfeit a reasonable portion of its response period in the Second Petition
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`to the extent that is deemed necessary to provide Patent Owner sufficient time to
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`address the additional issues raised in the second petition. Petitioner will also
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`accommodate any reasonable logistical or scheduling request of Patent Owner in
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`order to accommodate joinder of the proceedings. Thus, the schedule in IPR2014-
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`00136 need not be adjusted much, if at all, but even if it needs to be adjusted such
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`an extension is permitted by law and is no reason for denying joinder in this
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`particular case. 37 C.F.R. § 42.100(c).
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`Finally, Petitioner will agree to one set of briefing for all of its papers,
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`IPR2014-00950
`Petitioner’s Motion for Joinder
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`including the associated page limits in IPR2014-00136. Also, discovery will be
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`simplified because Petitioner relies on the same expert declaration in both
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`proceedings, so only one deposition will need to occur. Presumably, Patent Owner
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`will also be using the same expert in both proceedings.
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`In view of the foregoing joinder of the Second Petition to IPR2014-00136
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`would not cause any undue prejudice or hardship to Patent Owner. The Second
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`Petition accordingly should be joined to IPR2014-00136 under 35 U.S.C. §315(c)
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`and Rule 42.122(b).
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`Respectfully submitted,
`ERISE IP, P.A.
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`BY: /s/ Eric A. Buresh
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`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
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`ATTORNEYS FOR PETITIONERS
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`IPR2014-00950
`Petitioner’s Motion for Joinder
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105(a)
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
`that on June 13, 2014, a complete and entire copy of this Petition for Inter Partes
`Review was provided via Federal Express to the Patent Owner by serving the
`correspondence address of record for the ’145 Patent and Patent Owner’s litigation
`counsel and by e-mail to Patent Owner’s counsel in IPR2014-00136:
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`BAKER BOTTS L.L.P.
`Darren W. Collins
`2001 ROSS AVENUE
`McGuireWoods LLP
`SUITE 600
`1717 McKinney Avenue
`DALLAS TX 75201-2980
` Dallas, TX 75202
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`214.593.7143 (Direct Line)
` dwcollins@mcguirewoods.com
`Brian A. Carpenter
`Buether Joe & Carpenter LLC
`1700 Pacific Avenue, Suite 4750
`Dallas, TX 75201
`Brian.Carpenter@BJCIP.com
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`BY:
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`ERISE IP, P.A.
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` /s/Eric A. Buresh
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`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
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`ATTORNEYS FOR PETITIONER
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