Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 39
`Entered: March 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINTENDO OF AMERICA, INC. and NINTENDO CO., LTD.,
`Petitioner,
`
`v.
`
`BABBAGE HOLDINGS, LLC,
`Patent Owner.
`
`
`Case IPR2015-00568
`Patent 5,561,811
`
`
`
`Before MEREDITH C. PETRAVICK, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 39
`Entered: March 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINTENDO OF AMERICA, INC. and NINTENDO CO., LTD.,
`Petitioner,
`
`v.
`
`BABBAGE HOLDINGS, LLC,
`Patent Owner.
`
`
`Case IPR2015-00568
`Patent 5,561,811
`
`
`
`Before MEREDITH C. PETRAVICK, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2015-00568
`Patent 5,561,811
`
`
`I.
`
`INTRODUCTION
`
`Nintendo of America, Inc. and Nintendo Co., Ltd. (“Nintendo” or
`
`“Petitioner”) filed a Corrected Petition requesting inter partes review of U.S.
`
`Patent No. 5,561,811 (Ex. 1001, “the ’811 patent”). Paper 7 (“Pet.”).
`
`Concurrently with its Petition, Petitioner filed a Motion for Joinder. Paper 4
`
`(“Mot.”). The Motion for Joinder seeks to join this proceeding with 505
`
`Games Interactive, Inc. v. Babbage Holdings, LLC, IPR2014-00954
`
`(hereinafter “954 IPR”). Mot. 4. (“Mot.”). Babbage Holdings, LLC
`
`(“Patent Owner”) filed a Preliminary Response (Paper 11, “Prelim. Resp.”)
`
`and an Opposition to Petitioner’s Motion for Joinder (Paper 10, “Opp.”).
`
`Petitioner in the 954 IPR did not seek authorization to oppose Petitioner’s
`
`Motion for Joinder.
`
`For the reasons explained below, we institute an inter partes review of
`
`claim 7 of the ’811 patent and grant Petitioner’s Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition asserts the same ground as that on which we instituted
`
`review in the 954 IPR. Pet. 1; Mot. 1. On December 15, 2014, we instituted
`
`an inter partes review of claim 7 under 35 U.S.C. § 103 as obvious over the
`
`combination of Yoshino1 and Greanias.2 954 IPR, Paper 24, 12.
`
`In view of the challenges in the instant Petition and the petition in the
`
`954 IPR, we institute an inter partes review in this proceeding on the same
`
`ground on which we instituted in the 954 IPR.
`
`
`
`1 US Patent No. 5,548,304 (Ex. 1002, “Yoshino”)
`2 US Patent No. 5,157,384 (Ex. 1003, “Greanias”)
`
`2
`
`
`
`IPR2015-00568
`Patent 5,561,811
`
`
`III. GRANT OF MOTION FOR JOINDER
`
`The Petition in this proceeding has been accorded a filing date of
`
`January 14, 2015, and, thus, satisfies the requirement that joinder be
`
`requested no later than one month after the institution date of the 954 IPR.
`
`See 37 C.F.R. § 42.122(b); Paper 5 (Notice of Filing Date Accorded to
`
`Petition).
`
`The Petition in this proceeding sets forth the same ground and
`
`combination of prior art, the same expert declaration, and the same
`
`arguments considered by the board in instituting trial in the 954 IPR. Mot.
`
`1–2, 8–9. The Petitions differ only in that the Petition in this case applies
`
`claim constructions adopted by the Board in the Decision on Institution
`
`(“Dec. Inst.”) in the 954 IPR. The differences between the two Petitions do
`
`not introduce new issues.
`
`Petitioner represents in its Motion for Joinder that “[u]nless and until
`
`all ’954 petitioners settle with the patent owner, Nintendo would take an
`
`understudy role; it will not submit any separate filings to the PTO unless it
`
`disagrees with the positions of the current petitioners, and in the event of
`
`such disagreement it would submit a filing not exceeding seven pages.”
`
`Mot. 8. Petitioner represents that it will “adhere to all applicable deadlines
`
`set forth by the December 15, 2014 Scheduling Order” (id. at 1–2) and “will
`
`cooperate on all briefing and discovery” (id. at 8). Petitioner represents that
`
`Sony, one of the real parties-in-interest identified as Petitioner in the 954
`
`IPR, does not oppose Petitioner’s Motion for Joinder. Id.
`
`Patent Owner opposes Petitioner’s Motion for Joinder because “the
`
`‘954 IPR petitioners have now settled out of the underlying district court
`
`litigation, and the Patent Owner and those petitioners intend to file a motion
`
`3
`
`
`
`IPR2015-00568
`Patent 5,561,811
`
`to terminate the ‘954 IPR as soon as the litigation dismissals are finally
`
`entered by the district courts.” Opp. 4–5. According to Patent Owner,
`
`Petitioner’s “intent to offer (or at least reserve the right to offer) different
`
`‘positions’ from those of the ‘954 IPR petitioners . . . will have unintended
`
`consequences (or may well derail) the current trial schedule” because
`
`(1) Petitioner “may also need additional briefing (including ‘if the ‘954 IPR
`
`is terminated as to all other petitioners’ – which it will be!)”; and
`
`(2) Petitioner’s promise to cooperate on briefing and discovery is
`
`unpersuasive not accompanied by a reciprocal undertaking by the Petitioner
`
`in the 954 IPR. Id. at 5–6.
`
`Patent Owner also argues that “[Petitioner] could have joined the
`
`original petitioners in IPR2014-00954” and that Petitioner’s decision to wait
`
`eight months is “prejudicial to Patent Owner (and perhaps the other
`
`petitioners), at the very least because the Patent Owner settled the
`
`underlying litigation in part under the assumption that such settlements also
`
`would have the effect of disposing of the IPR.” Id. at 8. According to
`
`Patent Owner, joinder of this proceeding with the 954 IPR “will frustrate the
`
`‘just, speedy, and inexpensive resolution’ of the [954 IPR]” because “if a
`
`holdout (to the underlying IPR) litigant like [Petitioner] is permitted to join
`
`an IPR despite settlement by the underlying parties, a Patent Owner may
`
`never be assured that a given settlement will have its intended
`
`consequences.” Id. at 8–9.
`
`Upon consideration of the Motion and Opposition, we are persuaded
`
`that Petitioner has demonstrated that joinder will not complicate or delay the
`
`954 IPR unduly. We are not persuaded by Patent Owner’s arguments
`
`regarding its settlements with the real parties-in-interest identified
`
`4
`
`
`
`IPR2015-00568
`Patent 5,561,811
`
`constituting the Petitioner in the 954 IPR because, at the time the Petition
`
`and Motion for Joinder were filed in this proceeding, no Motion to
`
`Terminate had been filed in the 954 IPR. Moreover, we are not persuaded
`
`by Patent Owner’s argument that joinder of Petitioner with the 954 IPR will
`
`disrupt the schedule of the 954 IPR. The parties in the 954 IPR have now
`
`filed Joint Motions to Terminate (954 IPR, Papers 28–37). Because it is
`
`unlikely that Petitioner in the 954 IPR will remain involved in the
`
`proceeding, it is unlikely that Petitioner will need to coordinate with
`
`Petitioner in the 954 IPR and, therefore, unlikely that such coordination will
`
`disrupt the schedule set in the 954 IPR. We therefore grant Petitioner’s
`
`Motion for Joinder to join this proceeding with the 954 IPR.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that IPR2015-00568 is instituted and joined with
`
`IPR2014-00954;
`
`FURTHER ORDERED that the ground on which IPR2014-00954 was
`
`instituted is unchanged, and no other grounds are instituted in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`IPR2014-00954 (Paper 25) shall govern the joined proceedings;
`
`FURTHER ORDERED that, if Patent Owner requires a Supplemental
`
`Response to address the Petition filed in IPR2015-00568, Patent Owner
`
`must request a conference call with the Board within five days of this Order;
`
`FURTHER ORDERED that IPR2015-00568 is terminated under
`
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`
`made in IPR2014-00954;
`
`5
`
`
`
`IPR2015-00568
`Patent 5,561,811
`
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2014-00954; and
`
`FURTHER ORDERED that the case caption in IPR2014-00954 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`6
`
`
`
`IPR2015-00568
`Patent 5,561,811
`
`PETITIONER:
`Joseph S. Presta
`Robert W. Faris
`Nixon & Vanderhye, P.C.
`jsp@nixonvan.com
`rwf@nixonvan.com
`
`
`PATENT OWNER:
`David H. Judson
`LAW OFFICE OF DAVID H. JUDSON
`mail@davidjudson.com
`
`
`Anthony M. Garza
`CHARHON CALLAHAN ROBSON & GARZA
`agarza@ccrglaw.com
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`505 GAMES, INC., ACTIVISION BLIZZARD, INC., BLIZZARD
`ENTERTAINMENT, INC., CAPCOM U.S.A. INC., THE WALT DISNEY
`CO., DISNEY INTERACTIVE STUDIOS, INC., LUCASARTS,
`ELECTRONIC ARTS INC., BANDAI NAMCO GAMES AMERICA,
`INC., BANDAI NAMCO HOLDINGS USA INC., RIOT GAMES, INC.,
`SONY COMPUTER ENTERTAINMENT AMERICA LLC, SQUARE
`ENIX, INC., SQUARE ENIX OF AMERICA HOLDINGS, INC., TAKE-
`TOW INTERACTIVE SOFTWARE, INC., ROCKSTAR GAMES, INC.,
`2KSPORTS, INC., 2K GAMES, INC., UBISOFT, INC.,
`NINTENDO OF AMERICA, INC., and NINTENDO CO., LTD.,
`Petitioner,
`
`v.
`
`BABBAGE HOLDINGS, LLC,
`Patent Owner.
`
`
`Case IPR2014-009541
`Patent 5,561,811
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2015-00568 has been joined with this proceeding.
`
`
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