`571-272-7822
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`Paper 11
`Entered: October 30, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC. and YOUTUBE, LLC,
`Petitioners,
`
`v.
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`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`Case IPR2014-00978
`Patent 7,802,310 B2
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`TURNER, 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
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`IPR2014-000978
`Patent 7,802,310 B2
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`I.
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`INTRODUCTION
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`Google Inc. and YouTube, LLC (collectively “Google”) filed a
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`Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1, 2, 5-
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`8, 10-12, 14, 16-19, 24, 29, 32, 70, 81, 82, and 86 of U.S. Patent No.
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`7,802,310 B2 (“the ’310 Patent,” Ex. 1001). Paper 1. Google filed its
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`Petition along with a Motion for Joinder requesting that we join Google as a
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`party with Rackspace US, Inc. v. PersonalWeb Techs. LLC, IPR2014-00062.
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`Paper 3, “Google Mot.” In IPR2014-00062, we instituted the same grounds
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`of unpatentability over the same claims at issue in this proceeding. Compare
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`IPR2014-00062, Paper 9, with Pet. 7–8, 23–54. PersonalWeb Technologies,
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`LLC and Level 3 Communications, LLC (collectively “PersonalWeb”)
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`timely filed a combined Preliminary Response and Opposition to Google’s
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`Motion for Joinder. Paper 8. We have jurisdiction under 35 U.S.C. § 314.
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`For the reasons discussed below, we deny Google’s Motion for
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`Joinder as untimely and, as a result, deny the Petition because it is barred
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`under 35 U.S.C. § 315(b).
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`
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`II.
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`BACKGROUND
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`Based on authority delegated to us by the Director, we have discretion
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`to join an inter partes review with another inter partes review under 35
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`U.S.C. § 315(c), which provides:
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`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.
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`2
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`IPR2014-000978
`Patent 7,802,310 B2
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`Our patent trial regulations for inter partes reviews address the appropriate
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`time frame for filing a motion for joinder. 37 C.F.R. § 42.122(b) provides,
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`in relevant part (emphasis added), “[a]ny request for joinder must be filed, as
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`a motion under § 42.22, no later than one month after the institution date of
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`any inter partes review for which joinder is requested.”
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`Normally, 35 U.S.C. § 315(b) bars institution of an inter partes
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`review when the petition is filed more than one year after the petitioner (or
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`petitioner’s real party in interest or privy) is served with a complaint alleging
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`infringement of the patent. Our patent trial regulations for inter partes
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`reviews include the same provision. 37 C.F.R. § 42.101(b). The one-year
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`time bar, however, does not apply to a request for joinder. 35 U.S.C.
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`§ 315(b) (final sentence); 37 C.F.R. § 42.122(b) (final sentence). This is an
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`important consideration here because it is undisputed that Google filed the
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`Petition on June 18, 2014, which is more than a year after Google was
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`served with a complaint alleging infringement of the ʼ310 Patent on
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`December 12, 2011. Ex. 2001; see also Pet. 3 (Google confirms that
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`PersonalWeb asserted the ’310 Patent against it in a district court case filed
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`on December 8, 2011); Google Mot. 8 (Google confirms that, in 2011,
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`PersonalWeb sued thirteen different companies, including Google, for
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`allegedly infringing the ’310 Patent). Thus, absent joinder of Google as a
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`party to IPR2014-000062, the Petition is barred.
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`3
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`IPR2014-000978
`Patent 7,802,310 B2
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`III.
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` ANALYSIS
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`1. Google’s Motion for Joinder Was Untimely
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`First, we note that Google did not file its Motion for Joinder within
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`one month after we instituted an inter partes review in IPR2014-00062, as
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`required by 37 C.F.R. § 42.122(b). Notwithstanding that Google did not
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`file its Motion for Joinder within the one-month time limit imposed under §
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`42.122(b), Google contends that we should exercise our discretion under §
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`42.5(b) to waive this rule. Google Mot. 1–7. Section 42.5(b) provides that
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`“[we] may waive or suspend a requirement of parts 1, 41, and 42 and may
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`place conditions on the waiver or suspension.” Absent special
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`circumstances, we are reluctant to exercise our discretion under § 42.5(b) to
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`waive the one-month time limit for filing a motion for joinder under
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`§ 42.122 (b).
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`We instituted an inter partes review in IPR2014-00062 on April 15,
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`2014. IPR2014-00062, Paper 9. Pursuant to § 42.122(b), if Google desired
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`to join IPR2014-00062 as a party, it was required to file a motion for joinder
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`no later than May 15, 2014. Google, however, did not file its Motion for
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`Joinder until June 18, 2014. Google attempts to justify this delay by arguing
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`that the parties in IPR2014-00062 stipulated to a thirty day extension for
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`DUE DATES 1 and 2 (IPR2014-00062, Paper 14) and, at the time it filed its
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`Motion for Joinder, only the initial conference call had occurred (IPR2014-
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`00062, Paper 15). Google Mot. 2. Google asserts that given the revised
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`schedule stipulated to by the parties in IPR2014-00062, its request for
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`joinder was filed during a stage in IPR2014-00062 that is contemplated by
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`§ 42.122(b), i.e., shortly after the date of institution, but prior to
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`PersonalWeb filing its Patent Owner Response. Id.
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`4
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`IPR2014-000978
`Patent 7,802,310 B2
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`We are not persuaded by Google’s argument. Simply because the
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`parties in IPR2014-00062 stipulated to new dates for DUE DATES 1 and
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`2—a common practice in proceedings before us—does not constitute an
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`extraordinary circumstance that would persuade us to waive the one-month
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`time limit for Google to file its Motion for Joinder. In addition, merely
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`because, at the time Google filed its Motion for Joinder, IPR2014-00062 was
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`in the early stages of trial, e.g., only the initial conference call had occurred,
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`does not constitute a special circumstance that would persuade us to waive
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`the one-month time limit for Google to files its Motion for Joinder. Without
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`more compelling reasons, we decline to exercise our discretion under
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`§ 42.5(b) to waive the one-month time limit for Google to file its Motion for
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`Joinder under § 42.122(b). As such, Google’s Motion for Joinder was
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`untimely.
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`
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`2. The Termination of IPR2014-00062 Renders
`Google’s Motion for Joinder Moot
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`Although we deny Google’s Motion to Joinder as untimely, there is at
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`least one additional consideration that weighs in favor of dismissing
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`Google’s Motion for Joinder as moot. On October 10, 2013, Rackspace US,
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`Inc. and Rackspace Hosting, Inc. (collectively “Rackspace”) filed a Petition
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`requesting an inter partes review of claims 1, 2, 5-8, 10-12, 14, 16-19, 24,
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`29, 32, 70, 81, 82, and 86 of the ’310 Patent. IPR2014-00062, Paper 1.
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`PersonalWeb timely filed a Preliminary Response. IPR2014-00062, Paper
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`8. As we discussed previously, on April 15, 2014, upon consideration of the
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`information presented in Rackspace’s Petition, as well as the arguments
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`presented in PersonalWeb’s Preliminary Response, we authorized an inter
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`5
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`IPR2014-000978
`Patent 7,802,310 B2
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`partes review to be instituted as to the challenged claims of the ’310 Patent.
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`IPR2014-00062, Paper 9. On October 16, 2014, Rackspace and
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`PersonalWeb requested that we terminate IPR2014-00062 as to all parties by
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`filing a Joint Motion to Terminate, as well as a true copy of their written
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`settlement agreement, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(b). IPR2014-00062, Paper 30; Ex. 1026. Upon consideration of
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`this request, we terminated IPR2014-00062. IPR2014-00062, Paper 33.
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`Given that IPR2014-00062 is no longer pending, it cannot serve as a
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`proceeding to which another proceeding may be joined. As such, the
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`termination of IPR2014-00062 renders Google’s Motion for Joinder moot.
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`3. The Petition is Barred under 35 U.S.C. § 315(b)
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`As we explained previously, absent joinder of Google as a party to
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`IPR2014-00062, the Petition is barred under § 315(b). Given that we deny
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`Google’s Motion for Joinder as untimely, along with the additional
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`consideration that it is moot because the proceeding that it sought to join—
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`IPR2014-00062—has been terminated, the Petition now stands alone. It is
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`undisputed that the Petition was filed on June 18, 2014, which is more than
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`one year after Google was served with a complaint alleging infringement of
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`the ʼ310 Patent on December 12, 2011. Ex. 2001. As a consequence,
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`Google is barred from pursuing an inter partes review of the ’310 Patent.
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`IV. CONCLUSION
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`In summary, we deny Google’s Motion for Joinder as untimely and,
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`as a result, deny the Petition because it is barred under 35 U.S.C. § 315(b).
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`6
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`IPR2014-000978
`Patent 7,802,310 B2
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`Accordingly, it is:
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`V. ORDER
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`ORDERED that Google’s Motion for Joinder is DENIED; and
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`FURTHER ORDERED that the Petition is DENIED and no trial is
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`instituted.
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`7
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`IPR2014-000978
`Patent 7,802,310 B2
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`For PETITIONERS:
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`Jennifer A. Sklenar
`Alissa H. Faris
`Emily C. Hostage
`ARNOLD & PORTER LLP
`Jennifer.Sklenar@aporter.com
`Alissa.Faris@aporter.com
`Emily.Hostage@aporter.com
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`For PATENT OWNERS:
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`Joseph A. Rhoa
`Updeep S. Gill
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
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