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`Patent Owner’s Opposition to
`Petitioner’s Motion for Joinder
`Under 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.122(b)
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`RELOADED GAMES, INC.
`(Petitioner)
`
`v.
`
`PARALLEL NETWORKS LLC
`(Patent Owner)
`
`Case No. IPR2014-00950
`
`Patent No. 7,188,145
`
`Inventors:
`Keith A. Lowery
`Bryan S. Chin
`David A. Consolver
`Gregg A. DeMasters
`
`Filed January 12, 2001
`
`For: Method and System for
`Dynamic Distributed Data Caching
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`Under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b)
`CASE No: IPR2014-00950
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`
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`58153921_5
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`IPR2014-00950
`U.S. Patent No. 7,188,145
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`I.
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`Introduction
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`Petitioner’s motion should be denied because the petition at issue is not
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`proper and because joinder is not supported by the factors that the Patent Trial and
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`Appeal Board (the “Board”) should consider in determining whether to allow
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`joinder. The petition filed in IPR2014-00950 (the petition and proceeding being
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`referred to herein as “the ‘950 Petition” and “the ’950 IPR”, respectively) sets forth
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`arguments that are made out of turn and in violation of rules and regulations that
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`govern inter partes review (IPR) proceedings. Moreover, there is no reason that
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`the contentions of the ‘950 Petition could not have been included in the original
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`petition submitted in IPR2014-00136 (such petition and proceeding being referred
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`to herein as “the ‘950 Petition” and “the ’950 IPR”, respectively), which addresses
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`the same parties, the same patent, the same prior art, and the same claims.
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`In the ‘950 Petition, Petitioner requests the institution of a new IPR based on
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`its petition filed more than a year after the institution of the related district court
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`case and more than eight months after requesting inter partes review of the ‘145
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`Patent in the ‘136 Petition. See IPR2014-00950, Paper No. 3. Concurrently,
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`Petitioner moves to join the ‘950 IPR with the already-instituted ‘136 IPR. The
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`‘950 Petition challenges only claims of U.S. Patent No. 7,188,145 (the ‘145 Patent)
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`IPR2014-00950
`U.S. Patent No. 7,188,145
`that were challenged in the ‘136 Petition and relies on art that is also cited in the
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`‘136 Petition.
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`35 U.S.C. Section 315(c) controls such motions, and provides that: “If the
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`Director institutes an inter partes review, the Director, in his or her discretion, may
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`join as a party to that inter partes review any person who properly files a petition
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`under section 311 that the Director, after receiving a preliminary response under
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`section 313 or the expiration of the time for filing such a response, determines
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`warrants the institution of an inter partes review under section 314.” In the instant
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`case, the Patent Owner submits that the ‘950 Petition is not permitted under the
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`rules, and that Petitioner’s motion for joinder must therefore be denied.
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`II.
`
`Facts
`
` On May 9, 2013, the Patent Owner asserted the ‘145 Patent against
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`Petitioner. See Complaint, Case No. 1:13-cv-00827-RGA, ECF No. 1
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`(Ex. 1009).
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` Petitioner was served on May 15, 2013. See Declaration of Mailing as to
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`Service, Case No. 1:13-cv-00827-RGA, ECF No. 5 (Ex. 2002).
`
` On November 11, 2013, Petitioner filed a sixty page Petition for Inter
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`Partes Review of the ‘145 Patent in IPR2014-00136. IPR2014-00136,
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`Paper No. 4.
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` The ‘136 Petition alleged that all of the claims of the ‘145 Patent were
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`either anticipated or obvious and specifically, that claims 2-4, 6-7, 10,
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`16-18, 20-21, 24, and 29-36 were obvious over U.S. Patent No.
`
`6,341,311 (“Smith”) in view of U.S. Patent No. 6,256,747 (“Inohara”).
`
`See IPR2014-00136, Paper No. 4 at 34-50.
`
` Patent Owner filed its Preliminary Response on February 19, 2014.
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`IPR2014-00136, Paper No. 9.
`
` On May 16, 2014, the Board instituted Inter Partes Review of claims 2-4,
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`6, 7, 10, 16-18, 20, 21, 24, and 29-36 of U.S. Patent No. 7,188,145 and
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`entered its initial scheduling order. IPR2014-00136, Paper Nos. 15 and
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`16.
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` The initial scheduling order gave the Patent Owner until August 12,
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`2014, to submit its response to the Petition together with any Motion to
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`Amend the ‘145 Patent. IPR2014-00136, Paper No. 16, at 6. Neither the
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`initial scheduling order nor the amended scheduling order referred to
`
`below provide for any filing by Petitioner prior to the Patent Owner’s
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`Response following the Board’s Decision.
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` Petitioner filed a thirty-four page petition in IPR2014-00950 on June 13,
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`2014, requesting institution of a second IPR. IPR2014-00950, Paper No.
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`3.
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` The ‘950 Petition alleges that all of the claims of the ‘145 Patent are
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`either anticipated or obvious and specifically, that claims 1, 4, 5, 8, 9, 11-
`
`15, 18, 19, 22, 23, and 25-28 are obvious over U.S. Patent No. 6,341,311
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`(“Smith”) in view of U.S. Patent No. 6,256,747 (“Inohara”). See
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`IPR2014-00950, Paper No. 3.
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` Together with the ‘950 Petition, Petitioner filed its Motion for Joinder,
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`requesting that the Board consider additional argument set forth in the
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`‘950 Petition in the proceedings of the ‘136 IPR. IPR2014-00950, Paper
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`No. 4 (motion for joinder).
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` On July 2nd, Petitioner requested a conference call with the board to
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`discuss the logistics of joinder in the event Petitioner’s motion was
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`granted.
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` On July 8, 2014, the Board, sua sponte, without setting a conference call,
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`and without first ruling on the motion for joinder, issued an amended
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`scheduling order in the ‘136 IPR requiring patent owner to file a
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`preliminary response to the ‘950 Petition by July 31, 2014.
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` Argument III.
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`A. The ‘950 Petition is not proper because it is a responsive pleading
`that is not provided for under the rules.
`Joinder should be denied in this case because the petition is not permitted.
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`Petitioner’s sixty page ‘136 Petition and thirty-four page ‘950 Petition amount to
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`94 pages of argument. The ‘950 Petition is therefore an impermissible attempt by
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`the same party to gain more than thirty-four pages of additional argument on the
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`same claims of the same patent that it challenged in the ‘136 Petition using the
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`same art that was cited in the ‘136 Petition. Thus, the ‘950 Petition is in blatant
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`conflict with 37 C.F.R. § 42.24, which sets the page limitation for a petition for
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`inter partes review at sixty pages.
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`Petitioner has no excuse for not filing the arguments set forth in its second
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`petition with its first petition, as Petitioner possessed all of the references asserted
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`in the ‘950 Petition before filing the ‘136 Petition. Petitioner made a tactical
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`choice to file the ‘136 Petition in November of 2013 and then wait more than eight
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`months to file the ‘950 Petition. The ‘950 Petition, under these circumstances, is
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`not permitted by the rules.
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`If Petitioner needed additional pages for its petition, Petitioner should have
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`followed the PTO’s procedures for suspending the page limits. Petitioner could
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`have contacted the Board and requested suspension of the Rule regarding page
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`limits. See 37 C.F.R. § 42.5. It did not. Petitioner could have filed a request for a
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`waiver of the page limits with the ‘136 Petition and appended the arguments
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`included in the ‘950 Petition at that time, as the Board’s rules contemplate. 37
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`C.F.R. § 42.24(a)(2). (“Petitions to institute a trial must comply with the stated
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`page limits but may be accompanied by a motion to waive the page limits.”). It did
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`not. Instead, Petitioner chose to ignore the Board’s procedures. Petitioner’s
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`solution was to file the ‘136 Petition as a place-holder and then to file more than
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`thirty additional pages of arguments after the Board reviewed the ‘136 Petition and
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`entered its Decision – more than eight months later.
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`If Petitioner’s motion for joinder is granted, the Board would set an unfair
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`and unfortunate precedent. A single petitioner would be invited, through abuse of
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`the joinder rule, to seek advantage and circumvent the rules by staging petitions
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`that attack the same claims through the filing of serial sixty page petitions. Such an
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`outcome was clearly not the intent of the joinder provision. In allowing for
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`joinder, Congress intended to secure the just, speedy, and inexpensive resolution of
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`every proceeding. See 35 U.S.C. § 316(b). Congress also intended to prevent the
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`serial harassment of patent holders by the filing of multiple petitions. See Markup
`
`of America Invents Act, (Ex. 2001), page 72:1438-39. Granting Petitioner’s
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`motion would run counter to these goals by encouraging gamesmanship, adding
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`burden to the Board, and leading to the serial harassment of patent holders by the
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`filing of multiple petitions by the same party on the same claims at any time.
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`Petitioner should not be permitted to circumvent the sixty page limit in 37 C.F.R. §
`
`42.24(a)(1)(i) and its motion should be denied.
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`Moreover, as discussed in more detail below, Petitioner has not provided any
`
`reason as to why it could not have asserted the allegations of the ‘950 Petition in
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`the ‘136 Petition. Both the Smith and Inohara references (the only references cited
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`in the ‘950 Petition) were cited in the ‘136 Petition, and Petitioner has provided no
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`justification for failing to have included the allegations of the ‘950 Petition when it
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`filed the ‘136 Petition. At worst, Petitioner’s filing of the ‘950 Petition is the
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`product of gamesmanship intended to increase the Patent Owner’s costs in
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`defending the IPR Petitions (and motions) and to extend the delay of currently
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`stayed district court litigation involving the ‘145 Patent. At best, Petitioner’s filing
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`of the ‘950 Petition, which challenges the same claims of the same patent based on
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`the same references that were relied upon in the ‘136 Petition is a procedural end-
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`around being used to make additional unauthorized arguments out of turn and to
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`increase the burden on the Patent Owner in defending the IPR.
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`Part 42 of Title 37 of the Code of Federal Regulations sets forth the
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`documents that may be filed or otherwise entered in an IPR prior to the Patent
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`Owner’s Response. Part 42 provides for a Petition, a Preliminary Response by the
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`Patent Owner, and a Board Decision. While 37 C.F.R. §42.71 provides for a
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`request for rehearing in response to a Board Decision, the regulations do not allow
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`a Petitioner a response to a Patent Owner’s Preliminary Response. The regulations
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`also do not allow the Petitioner to comment on or file a pleading that is responsive
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`to the Board’s Decision, as the next document prescribed by the regulations is the
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`Patent Owner’s Response. Most importantly, the regulations are not crafted to
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`enable a Petitioner to increase the burden on a Patent Owner during a proceeding
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`by inundating them with pleadings and motions. Petitioner’s additional arguments
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`after the Board Decision and before the Patent Owner’s amount to an end-run that
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`circumvents the rules that govern these proceedings in a manner that is unjust and
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`unfair to the Patent Owner.
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`The ‘950 Petition is based on the same art that was referenced in the ‘136
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`Petition, no facts have changed since the filing of the ‘136 Petition, and the ‘950
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`Petition does not include any arguments that Petitioner could not have made when
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`filing the ‘136 Petition. The Petition merely responds to the Board’s Decision and
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`Patent Owner’s Preliminary Response in the ‘136 IPR. Simply put, the ‘950
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`Petition is essentially a responsive pleading that is not provided for in the Federal
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`Regulations or in the rules that govern IPR proceedings. See Amended Scheduling
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`Order, IPR2014-00136, Paper 20, at 6 (which does invite any pleading or motion
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`from the Petitioner prior to the Patent Owner’s Response). It follows that the ‘950
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`Petition is not proper and that joinder in this case must be denied.
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`B.
`The ‘950 Petition does not include any arguments that could not
`have been made in the ‘136 Petition
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` In the district court, the bargain that Petitioner and the other defendants
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`struck was that if Petitioner’s ‘136 Petition was instituted as to all claims, the stay
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`would be maintained and, if not, by implication, the stay would be lifted. See C.A.
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`No. 1:13-1083-RGA D.I. 13 at 8. Granting the ‘950 Petition and motion for
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`joinder would encourage Petitioner and future litigants to game the system by
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`holding-back additional arguments (such as the additional arguments that
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`Petitioner now asserts in the ‘950 Petition) for invalidity in the event that the Board
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`declines to institute an IPR in whole or in part.
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`In the first IPR petition challenging the ‘145 Patent, Petitioner asserted that
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`claims 1-28 and 35 were anticipated by the Tiwana and/or Smith references, and
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`made other arguments as to other claims based on obviousness over Smith in view
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`of Inohara, and Tiwana in view of Inohara. See IPR2014-00136, Paper No. 4 at 2,
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`as shown below:
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`After reviewing the ‘136 Petition and the Patent Owner’s Response, the
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`Board declined to institute IPR as to claims 1, 4, 5, 8, 9, 11-15, 18, 19, 22, 23, and
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`25-28 of the ‘145 Patent. Now, in the ‘950 Petition, Petitioner asserts for the first
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`time that these claims are obvious under 35 U.S.C. § 103 over Smith in view of
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`Inohara. There is no doubt that this new argument could have been raised in the
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`‘136 Petition, in which Petitioner asserted that twenty claims of the ‘145 Patent
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`were obvious under § 103 over Smith in view of Inohara. IPR2014-00136, Paper 4
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`(petition) at 2.
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`The ‘136 Petition did not challenge claims 1, 5, 8-9, 11-15, 19, 22-23, and
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`25-28 as being obvious under 35 U.S.C. § 103 over Smith in view of Inohara.
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`Instead, Petitioner challenged each of these claims as being anticipated under 35
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`U.S.C. § 102(e) by Smith and/or Tiwana. Id. Now that the Board has declined to
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`IPR2014-00950
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`institute IPR proceedings on that basis, Petitioner seeks a “second bite of the
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`apple” and alleges for the first time that claims 1, 5, 8-9, 11-15, 19, 22-23, and 25-
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`28 are obvious under § 103 over Smith in view of Inohara. See IPR2014-00950,
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`Paper No. 3:
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`
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`Apparently not satisfied with the Board’s Decision, Petitioner now attempts
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`to complicate the proceedings of the ‘136 IPR by raising new arguments that could
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`and should have been raised in the ‘136 Petition. The ‘950 Petition should be
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`denied on that basis alone. See Sony Corporation of America, et al. v. Network-1
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`Security Solutions, Inc. IPR2013-00386, Paper No. 16, at 6 (declining to grant a
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`motion for joinder where petitioner provided no reason for, inter alia, not having
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`asserted arguments that were available to the petitioner when filing a prior petition
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`for IPR). Nothing prevented Petitioner from making these new arguments
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`regarding claims 1, 5, 8-9, 11-15, 19, 22-23, and 25-28 in its original IPR petition.
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`Accordingly, the Board should not look favorably on any attempt to force a
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`reconsideration of its prior decision that is not contemplated by the rules and
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`regulations that govern such proceedings.
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`Here, the result of granting Petitioner’s motion for joinder would be directly
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`counter to the express goals of an IPR proceeding. The Board has stated that the
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`rules relating to inter partes review, “including the rules for joinder, must be
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`construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” See Shaw Industries Group, Inc. v. Automated Creel Systems, Inc.,
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`IPR2013-00584, Paper 20 at 2, 3. Granting joinder in this instance would be
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`fundamentally inconsistent with this holding, and indeed, the PTAB recently
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`denied joinder in a case based on similar facts, denying a motion for joinder in a
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`case in which “joinder would have a significant impact on the schedule of the
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`[Inter Partes Review]” and new grounds of unpatentability were not identified.
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`See Microsoft Corp. v. Surfcast, Inc., IPR2014-00271, Paper 20 at 7, 8. See also
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`Sony Corporation of America, et al. v. Network-1 Security Solutions, Inc.
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`IPR2013-00386, Paper No. 16, at 6.
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`It would be counter to the rules that govern inter partes review proceedings
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`and procedurally unfair to grant the ‘950 Petition or joinder to the ‘136 IPR. The
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`rules do not account for responsive petitions or other filings by Petitioner at this
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`stage and such pleadings result in the Patent Owner having to go to the expense of
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`preparing additional oppositions and responses. The ‘950 Petition and motion for
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`joinder have already impacted the schedule in this case and prejudiced the Patent
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`holder by resulting in the Patent Owner having to respond to a superfluous petition
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`on an expedited basis and at considerable expense, before the Board has even
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`considered this opposition to the motion for joinder. Such prejudice would be
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`further exacerbated by granting Petitioner’s motion for joinder.
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`The Patent Owner therefore respectfully requests denial of the ‘950 Petition
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`and accompanying motion for joinder in the interests of avoiding further prejudice
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`to the Patent Owner.
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`IV.
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` Conclusion
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`The ‘950 petition is not proper and joinder must therefore be denied.
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`Moreover, granting the Petition in this matter would effectively sanction the filing
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`of serial IPR Petitions in cases where a Petitioner desires to interject a response to
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`a Board Decision or Patent Owner Preliminary Response – a procedural option that
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`is not consistent with the rules and that is unduly burdensome for the Patent Owner
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`and the Board.
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`Joinder should also be denied because Petitioner has not raised any grounds
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`of unpatentability that could not have been raised when filing the ‘136 Petition
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`more
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`than eight months ago, and because granting
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`joinder under such
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`circumstances would encourage litigants to withhold grounds for instituting an IPR
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`with an aim toward either delaying litigation or simply causing the Patent Owner to
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`incur additional costs. The Patent Owner therefore requests that the Board deny
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`Petitioner’s motion for joinder and dismiss the ‘950 Petition.
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`Dated: July 31, 2014
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`Respectfully submitted,
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`Electronic signature: /Darren W. Collins/
`Darren W. Collins
`Registration No.: 44,625
`Robert C. Hilton
`Registration No.: 47,649
`Aaron J. Pickell
`Registration No.: 60,614
`McGuireWoods LLP
`2000 McKinney Ave., Suite 1400
`Dallas, TX 75201
`(214) 932-6400
`(214) 932-6499 (Fax)
`Counsel for Patent Owner
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`A. Appendix of Exhibits
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`Exhibit 1009 Complaint, Case No. 1:13-cv-00827-RGA, ECF No. 1.
`Exhibit 2001 Markup of America Invents Act, page 72:1438-39
`Exhibit 2002 Declaration of Mailing as to Service, Case No. 1:13-cv-00827-
`RGA, ECF No. 5.
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`Certification of Service
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on July 31, 2014,
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`a copy of the foregoing document was served by email upon Petitioner’s counsel as
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`at the following addresses:
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`via email:
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`Eric Buresh (eric.buresh@eriseip.com)
`Mark Lang (mark.lang @eriseip.com)
`and via FedEx to:
`Erise IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
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`Dated: July 31, 2014
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`Respectfully submitted,
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`Electronic signature: /Darren W. Collins/
`Darren W. Collins
`Registration No.: 44,625
`Robert C. Hilton
`Registration No.: 47,649
`Aaron J. Pickell
`Registration No.: 60,614
`McGuireWoods LLP
`2000 McKinney Ave., Suite 1400
`Dallas, TX 75201
`(214) 932-6400
`(214) 932-6499 (Fax)
`Counsel for Patent Owner
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