Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 10
`Entered: October 30, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC. and YOUTUBE, LLC,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`Case IPR2014-00977
`Patent 6,415,280 B1
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Google’s Motion for Joinder and
`Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108 and 42.122
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 10
`Entered: October 30, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC. and YOUTUBE, LLC,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`Case IPR2014-00977
`Patent 6,415,280 B1
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Google’s Motion for Joinder and
`Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108 and 42.122
`
`
`
`
`
`
`
`IPR2014-000977
`Patent 6,415,280 B1
`
`
`I.
`
`INTRODUCTION
`
`Petitioners, Google Inc. and YouTube, LLC (collectively “Google”),
`
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims
`
`10, 15, 16, 18, 25, 31–33, 36, and 38 of U.S. Patent No. 6,415,280 B1 (“the
`
`’280 patent,” Ex. 1001). Paper 1. Google filed its Petition along with a
`
`Motion for Joinder requesting that we join Google as a party with Rackspace
`
`US, Inc. v. PersonalWeb Techs. LLC, IPR2014-00059. Paper 3, “Google
`
`Mot.” In IPR2014-00059, we instituted the same grounds of unpatentability
`
`over the same claims at issue in this proceeding. Compare IPR2014-00059,
`
`Paper 9, with Pet. 8, 19–49. Patent Owners, PersonalWeb Technologies,
`
`LLC and Level 3 Communications, LLC (collectively “PersonalWeb”),
`
`timely filed a combined Preliminary Response and Opposition to Google’s
`
`Motion for Joinder. Paper 7. We have jurisdiction under 35 U.S.C. § 314.
`
`For the reasons discussed below, we deny Google’s Motion for
`
`Joinder as untimely and, as a result, deny the Petition because it is barred
`
`under 35 U.S.C. § 315(b).
`
`
`
`II.
`
`BACKGROUND
`
`Based on authority delegated to us by the Director, we have discretion
`
`to join an inter partes review with another inter partes review under 35
`
`U.S.C. § 315(c), which provides:
`
`JOINDER. – If the Director institutes an inter partes review, the
`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.
`
`
`
`2
`
`
`
`IPR2014-000977
`Patent 6,415,280 B1
`
`Our patent trial regulations for inter partes reviews address the appropriate
`
`time frame for filing a motion for joinder. 37 C.F.R. § 42.122(b) provides,
`
`in relevant part (emphasis added), “[a]ny 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.”
`
`Normally, 35 U.S.C. § 315(b) bars institution of an inter partes
`
`review when the petition is filed more than one year after the petitioner (or
`
`petitioner’s real party in interest or privy) is served with a complaint alleging
`
`infringement of the patent. Our patent trial regulations for inter partes
`
`reviews include the same provision. 37 C.F.R. § 42.101(b). The one-year
`
`time bar, however, does not apply to a request for joinder. 35 U.S.C.
`
`§ 315(b) (final sentence); 37 C.F.R. § 42.122(b) (final sentence). This is an
`
`important consideration here because it is undisputed that Google filed the
`
`Petition on June 18, 2014, which is more than a year after Google was
`
`served with a complaint alleging infringement of the ʼ280 patent on
`
`December 12, 2011. Ex. 2001; see also Pet. 3 (Google confirms that
`
`PersonalWeb asserted the ’280 patent against it in a district court case filed
`
`on December 8, 2011); Google Mot. 8 (Google confirms that, in 2011,
`
`PersonalWeb sued thirteen different companies, including Google, for
`
`allegedly infringing the ’280 patent). Thus, absent joinder of Google as a
`
`party to IPR2014-000059, the Petition is barred.
`
`
`
`
`
`3
`
`
`
`IPR2014-000977
`Patent 6,415,280 B1
`
`
`III.
`
` ANALYSIS
`
`1. Google’s Motion for Joinder Was Untimely
`
`First, we note that Google did not file its Motion for Joinder within
`
`one month after we instituted an inter partes review in IPR2014-00059, as
`
`required by 37 C.F.R. § 42.122(b). Notwithstanding that Google did not file
`
`its Motion for Joinder within the one-month time limit imposed under
`
`§ 42.122(b), Google contends that we should exercise our discretion under
`
`§ 42.5(b) to waive this rule. Google Mot. 1–7. Section 42.5(b) provides that
`
`“[we] may waive or suspend a requirement of parts 1, 41, and 42 and may
`
`place conditions on the waiver or suspension.” Absent special
`
`circumstances, we are reluctant to exercise our discretion under § 42.5(b) to
`
`waive the one-month time limit for filing a motion for joinder under
`
`§ 42.122 (b).
`
`As we explained previously, we instituted an inter partes review in
`
`IPR2014-00059 on April 15, 2014. IPR2014-00059, Paper 9. Pursuant to
`
`§ 42.122(b), if Google desired to join IPR2014-00059 as a party, it was
`
`required to file a motion for joinder no later than May 15, 2014. Google,
`
`however, did not file its Motion for Joinder until June 18, 2014. Google
`
`attempts to justify this delay by arguing that the parties in IPR2014-00059
`
`stipulated to a thirty day extension for DUE DATES 1 and 2 (IPR2014-
`
`00059, Paper 14) and, at the time it filed its Motion for Joinder, only the
`
`initial conference call had occurred (IPR2014-00059, Paper 13). Google
`
`Mot. 2. Google asserts that given the revised schedule stipulated to by the
`
`parties in IPR2014-00059, its request for joinder was filed during a stage in
`
`IPR2014-00059 that is contemplated by § 42.122(b), i.e., shortly after the
`
`
`
`4
`
`
`
`IPR2014-000977
`Patent 6,415,280 B1
`
`date of institution, but prior to PersonalWeb filing its Patent Owner
`
`Response. Id.
`
`We are not persuaded by Google’s argument. Simply because the
`
`parties in IPR2014-00059 stipulated to new dates for DUE DATES 1 and
`
`2—a common practice in proceedings before us—does not constitute a
`
`special circumstance that would persuade us to waive the one-month time
`
`limit for Google to file its Motion for Joinder. In addition, merely because,
`
`at the time Google filed its Motion for Joinder, IPR2014-00059 was in the
`
`early stages of trial, e.g., only the initial conference call had occurred, does
`
`not constitute a special circumstance that would persuade us to waive the
`
`one-month time limit for Google to files its Motion for Joinder. Without
`
`more compelling reasons, we decline to exercise our discretion under
`
`§ 42.5(b) to waive the one-month time limit for Google to file its Motion for
`
`Joinder under § 42.122(b). As such, Google’s Motion for Joinder was
`
`untimely.
`
`2. The Termination of IPR2014-00059 Renders
`Google’s Motion for Joinder Moot
`
`Although we deny Google’s Motion to Joinder as untimely, there is at
`
`least one additional consideration that weighs in favor of dismissing
`
`Google’s Motion for Joinder as moot. On October 10, 2013, Rackspace US,
`
`Inc. and Rackspace Hosting, Inc. (collectively “Rackspace”) filed a Petition
`
`requesting an inter partes review of claims 10, 15, 16, 18, 25, 31–33, 36, and
`
`38 of the ’280 patent. IPR2014-00059, Paper 3. PersonalWeb timely filed a
`
`Preliminary Response. IPR2014-00059, Paper 8. As we discussed
`
`previously, on April 15, 2014, upon consideration of the information
`
`presented in Rackspace’s Petition, as well as the arguments presented in
`
`
`
`5
`
`
`
`IPR2014-000977
`Patent 6,415,280 B1
`
`PersonalWeb’s Preliminary Response, we authorized an inter partes review
`
`to be instituted as to the challenged claims of the ’280 patent. IPR2014-
`
`00059, Paper 9. On October 16, 2014, Rackspace and PersonalWeb
`
`requested that we terminate IPR2014-00059 as to all parties by filing a Joint
`
`Motion to Terminate, as well as a true copy of their written settlement
`
`agreement, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`
`IPR2014-00059, Paper 27; Ex. 1014. Upon consideration of this request, we
`
`terminated IPR2014-00059. IPR2014-00059, Paper 30. Given that
`
`IPR2014-00059 is no longer pending, it cannot serve as a proceeding to
`
`which another proceeding may be joined. As such, the termination of
`
`IPR2014-00059 renders Google’s Motion for Joinder moot.
`
`3. The Petition is Barred under 35 U.S.C. § 315(b)
`
`As we explained previously, absent joinder of Google as a party to
`
`IPR2014-00059, the Petition is barred under § 315(b). Given that we deny
`
`Google’s Motion for Joinder as untimely, along with the additional
`
`consideration that it is moot because the proceeding that it sought to join—
`
`IPR2014-00059—has been terminated, the Petition now stands alone. It is
`
`undisputed that the Petition was filed on June 18, 2014, which is more than
`
`one year after Google was served with a complaint alleging infringement of
`
`the ʼ280 patent on December 12, 2011. Ex. 2001. As a consequence,
`
`Google is barred from pursuing an inter partes review of the ’791 patent.
`
`
`
`IV. CONCLUSION
`
`In summary, we deny Google’s Motion for Joinder as untimely and,
`
`as a result, deny the Petition because it is barred under 35 U.S.C. § 315(b).
`
`
`
`
`
`6
`
`
`
`IPR2014-000977
`Patent 6,415,280 B1
`
`
`Accordingly, it is:
`
`V. ORDER
`
`ORDERED that Google’s Motion for Joinder is DENIED; and
`
`FURTHER ORDERED that the Petition is DENIED and no trial is
`
`instituted.
`
`
`
`7
`
`
`
`IPR2014-000977
`Patent 6,415,280 B1
`
`For PETITIONERS:
`
`Jennifer A. Sklenar
`Alissa H. Faris
`Emily C. Hostage
`ARNOLD & PORTER LLP
`Jennifer.Sklenar@aporter.com
`Alissa.Faris@aporter.com
`Emily.Hostage@aporter.com
`
`For PATENT OWNERS:
`
`Joseph A. Rhoa
`Updeep S. Gill
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`
`
`
`
`8
`
`
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