BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Trial No.:
`
`IPR 2014-00977
`
`In re:
`
`U.S. Patent No. 6,415,280
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`Inventors:
`
`
`
`
`
`
`
`
`Google Inc. and YouTube, LLC
`
`David A. Farber and Ronald D. Lachman
`
`* * * * * * * * * * *
`
`August 25, 2014
`
`PATENT OWNER’S COMBINED OPPOSITION TO PETITIONER’S
`MOTION FOR JOINDER AND PRELIMINARY RESPONSE
`
`2356217
`
`
`STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Trial No.:
`
`IPR 2014-00977
`
`In re:
`
`U.S. Patent No. 6,415,280
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`Inventors:
`
`
`
`
`
`
`
`
`Google Inc. and YouTube, LLC
`
`David A. Farber and Ronald D. Lachman
`
`* * * * * * * * * * *
`
`August 25, 2014
`
`PATENT OWNER’S COMBINED OPPOSITION TO PETITIONER’S
`MOTION FOR JOINDER AND PRELIMINARY RESPONSE
`
`2356217
`
`
`
`Patent Owner’s Opposition to Joinder & Preliminary Response (U.S. Pat. No. 6,415,280)
`
`IPR 2014-00977
`
`Petitioner (Google Inc. and YouTube, LLC) filed a motion for joinder along
`
`with its petition on June 18, 2014. This opposition to the motion for joinder was
`
`authorized by the Order dated June 25, 2014 in this proceeding. Patent Owner
`
`PersonalWeb (PO) has, in this brief, combined its (i) opposition to the motion for
`
`joinder, and (ii) preliminary response to the petition.
`
`I. PETITIONER’S MOTION FOR JOINDER DIRECTLY CONFLICTS
`WITH RULE 41.122
`Rule 41.122(b) expressly requires that “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.” (emphasis added.) Here, the
`
`Rackspace IPR with which Petitioner seeks joinder (IPR2014-00059) was
`
`instituted on April 15, 2014. Petitioner file its joinder motion very late, contrary to
`
`the rule. Indeed, Petitioner filed its motion for joinder on June 18, 2014, which is
`
`more than two months after the April 15, 2014 institution date. Thus, the motion
`
`for joinder is not authorized by Rule 41.122, and instead is directly contrary to that
`
`applicable rule. Moreover, because Petitioner filed its motion for joinder and
`
`petition well beyond the required one month period, the Rackspace IPR with which
`
`joinder is requested is now in its advanced stages and not reasonably subject to
`
`joinder with this matter.
`
`Moreover, Petitioner provides no credible explanation or reason regarding
`
`why it did not comply with Rule 41.122(b). Petitioner has provided absolutely no
`
`reason as to why it could not have filed its petitioner and motion for joinder within
`
`1
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`2356217
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`
`
`Patent Owner’s Opposition to Joinder & Preliminary Response (U.S. Pat. No. 6,415,280)
`
`IPR 2014-00977
`
`one month of the institution decision in the IPR with which it seeks joinder.
`
`Petitioner’s delay is particularly inexcusable given that Petitioner has been aware
`
`of the patent at issue for a very long time, and at least since it was served with a
`
`complaint alleging infringement of that patent in December 2011. (Ex. 2001.)
`
`Petitioner’s delay of over two years in filing its petition, and its motion for joinder,
`
`have not been adequately explained in any respect.
`
`Moreover, the petition is barred by 35 U.S.C. § 315(b) because it was filed
`
`more than one year after petitioner was served with a complaint alleging
`
`infringement of the patent at issue. (Ex. 2001.) Petitioner readily admits in its
`
`motion for joinder that it was sued for infringement of the patent at issue in
`
`December, 2011 – well more than one year prior to the June 18, 2014 filing date of
`
`the petition. The petition and motion for joinder should be denied for this reason
`
`as well. And, again, the 2+ year delay in filing a petition and motion for joinder
`
`have not been adequately explained. Furthermore, Petitioner’s alleged grounds for
`
`standing in the petition indicate that the petition must be denied if the motion for
`
`joinder is denied, due to the service of the complaint on petitioner over two years
`
`before the petition was filed.
`
`II. JOINDER WOULD COMPLICATE AND DELAY THE RACKSPACE
`IPR, WASTE JUDICIAL RESOURCES, AND BE PREJUDICIAL TO
`PATENT OWNER
`The Rackspace IPR with which joinder is sought is in its advanced stages.
`
`PO has already filed its main response and has already taken depositions. And
`
`2
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`2356217
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`
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`Patent Owner’s Opposition to Joinder & Preliminary Response (U.S. Pat. No. 6,415,280)
`
`IPR 2014-00977
`
`Rackspace will be deposing Dr. Dewar next week. Introduction of additional
`
`parties and additional attorneys at this late stage may well further complicate and
`
`delay that proceeding. Google and YouTube did not participate in the depositions
`
`in the Rackspace IPR, and were not served with any evidentiary objections or
`
`briefs in that IPR. Moreover, Google and YouTube have expressly stated that
`
`there are circumstances where they would take an "active" role in the Rackspace
`
`IPR, i.e., additional attorney arguments are contemplated by Petitioner. It would
`
`be highly prejudicial to PO if Google and/or YouTube were ever permitted to take
`
`an active role in the late-stage Rackspace IPR for any reason, where they never
`
`participated in any depositions, were never served with any briefs or evidence,
`
`never made any evidentiary objections, and may not be subject to evidentiary
`
`objections. It is entirely unclear how the IPR rules would apply to a party that was
`
`never served with any briefs, evidence, or evidentiary objections in an IPR, and
`
`which never participated in any of the depositions of an IPR. Moreover, if Google
`
`and YouTube were to be joined in the Rackspace IPR, PO may well want to take
`
`additional depositions which would still further delay that IPR – which again
`
`would be prejudicial to PO.
`
`Additionally, the Google/YouTube IPR is wasteful and its institution or
`
`joinder with another proceeding would be a waste of both judicial resources and
`
`PO’s resources given its significant overlap with numerous other proceedings. The
`
`patent at issue (the ‘280 patent) is the subject of two (2) other administrative
`
`3
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`2356217
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`
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`Patent Owner’s Opposition to Joinder & Preliminary Response (U.S. Pat. No. 6,415,280)
`
`IPR 2014-00977
`
`proceedings, each of which involves the same ‘280 patent and the same art to
`
`Woodhill: (a) the Rackspace IPR (IPR 2014-00059); and (b) IPR2013-00083 the
`
`final decision in which has been appealed to the Federal Circuit. This IPR would
`
`be prejudicial to PO and an inefficient use of judicial resources, and represents
`
`further reasons why the requested joinder and the petition should be denied. The
`
`Board should exercise its authority/discretion and terminate this proceeding.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756-48757 (Aug. 14, 2012)
`
`(“Where there are multiple matters in the Office involving the same patent, the
`
`Board may determine how the proceedings will proceed, including providing for a
`
`stay, transfer, consolidation, or termination of any such matter.”) (emphasis
`
`added).
`
`III. LACK OF DILIGENCE BY GOOGLE/YOUTUBE
`Whether or not Petitioner was diligent in filing its request for joinder should
`
`also be considered. Microsoft Corp. v. ProxyConn, Inc., IPR 2013-00109 (Paper
`
`No. 15) (PTAB Feb. 25, 2013). As explained above, Petitioner was served with
`
`the complaint for patent infringement in 2011. Petitioner did nothing until June,
`
`2014. Moreover, Petitioner ignored the one month time period called for in Rule
`
`42.122(b). Both of these significant delays demonstrate a substantial lack of
`
`diligence on the part of Petitioner in this matter. Petitioner offers no plausible
`
`explanation for the delays.
`
`4
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`2356217
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`
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`Patent Owner’s Opposition to Joinder & Preliminary Response (U.S. Pat. No. 6,415,280)
`
`IPR 2014-00977
`
`IV. CONCLUSION
`For at least the foregoing reasons, it is respectfully submitted that the motion
`
`for joinder and petition should be denied.
`
`Respectfully submitted,
`
`NIXON & VANDERHYE P.C.
`
`
`
`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`Updeep (Mickey) S. Gill
`Reg. No. 37,334
`Counsel for Patent Owner PersonalWeb
`
`
`
`
`
`JAR:caj
`Nixon & Vanderhye, PC
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`Telephone: (703) 816-4000
`Facsimile: (703) 816-4100
`
`5
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`2356217
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`
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`PATENT OWNER’S EXHIBIT LIST
`Exhibit No. Brief Description
`
`2001
`
`Documents demonstrating service of complaint on Google and
`YouTube in December 2011
`
`CERTIFICATE OF SERVICE
`
`I hereby certify service of the foregoing Patent Owner’s Combined
`
`Opposition to Petitioner's Motion for Joinder and Preliminary Response to the
`
`following lead counsel for petitioner on August 25, 2014 via overnight delivery by
`
`Jennifer Sklenar
`ARNOLD & PORTER LLP
`777 South Figueroa Street, 44th Floor
`Los Angeles, CA 90017
`
`
`
`
`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`
`
`
`Federal Express:
`
`
`
`
`
`2356217
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