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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SkyHawke Technologies, LLC,
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`Petitioner,
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`v.
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`L&H Concepts, LLC,
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`Patent Owner.
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`____________
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`Case No. IPR2014-_____
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`Patent 5,779,566
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`____________
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`MOTION FOR JOINDER TO RELATED
`INTER PARTES REVIEW IPR2014-00438
`UNDER 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b)
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`I.
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`RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner
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`SkyHawke Technologies, LLC (“SkyHawke” or “Petitioner”) hereby moves for
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`joinder of the concurrently filed petition for inter partes review of claims 6, 15,
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`and 16 of U.S. Patent No. 5,779,566 (“the ‘566 patent”) with the instituted inter
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`partes review styled SkyHawke Technologies, LLC v. L&H Concepts, LLC, Case
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`No. IPR2014-00438 concerning the same patent (“the ‘438 IPR”).
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1. On March 6, 2013, L&H Concepts, LLC (“L&H”) filed a complaint
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`against SkyHawke in the United States District Court for the Eastern District of
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`Texas alleging that SkyHawke infringed the ‘566 patent.
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`2. On May 23, 2013, SkyHawke moved to transfer the case from the
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`Eastern District of Texas to the Southern District of Mississippi. SkyHawke’s
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`motion was granted on February 19, 2014. The litigation between L&H and
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`SkyHawke is currently styled L&H Concepts, LLC v. SkyHawke Technologies,
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`LLC, C.A. No. 3:14-cv-00224-HTW-LRA (S.D. Miss.).
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`3. On August 1, 2013—before the litigation was transferred to the
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`Southern District of Mississippi—L&H filed infringement contentions under the
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`Eastern District of Texas’s Local Patent Rules. L&H’s infringement contentions
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`asserted that SkyHawke infringed claims 1-5, 8-11, 13-14, and 17-18, of the ‘566
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`patent.
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`4. On February 14, 2014, SkyHawke filed two petitions for inter partes
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`review collectively targeting all asserted claims of the ‘566 patent. The first
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`petition, Case No. IPR2014-00437 (“the ‘437 IPR”), challenged method claims 8-
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`11, 14, and 18. The second petition, the ‘438 IPR, challenged apparatus claims 1-
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`5, 13, and 17.
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`5. On May 13, 2014, before an initial status conference was held in the
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`Southern District of Mississippi, SkyHawke moved to stay the litigation pending
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`the outcome of the ‘437 and ‘438 IPRs.
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`6. On May 23, 2014, L&H supplemented its interrogatory responses to
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`contend that SkyHawke was infringing claims 6 and 16 of the ‘566 patent. L&H
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`had not asserted these claims in its infringement contentions filed in the Eastern
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`District of Texas.
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`7. On June 20, 2014, a telephonic hearing was held on SkyHawke’s
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`motion to stay before Magistrate Judge Anderson. During that hearing (and in
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`SkyHawke’s corresponding briefing on the issue), SkyHawke notified counsel for
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`L&H that it intended to file a supplemental petition for inter partes review against
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`claims 6 and 16 of the ‘566 patent, and to accompany the petition with a request
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`for joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b).
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`2
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`8. During the telephonic motion hearing, Magistrate Judge Anderson
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`determined to grant SkyHawke’s request for a stay, temporarily staying the case
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`until further order of the Court. Based upon that Order, the parties are to inform
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`the Court of the status of SkyHawke’s IPR proceedings by September 30, 2014.
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`The stay shall remain in place until further Order of the Court.
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`9. On August 21, 2014, the Board instituted trial on claims 1-5, 8-11, 13-
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`14, and 17-18 of the ‘566 patent. See Case IPR2014-00437, Paper 7 and Case
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`IPR2014-00438, Paper 7. Specifically, the Board found that SkyHawke had
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`demonstrated a reasonable likelihood of prevailing and demonstrating that claims
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`1-5, 8-11, 13-14, and 17-18 are unpatentable over the specified combinations of
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`Palmer (WO 92/04080), Osamu (GB 2 249 202 A), and Vanden Heuvel et al. (US
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`5,426,422). See Case IPR2014-00437, Paper 7 at 20 and Case IPR2014-00438,
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`Paper 7 at 23.
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`10. On even date herewith, SkyHawke filed a third petition for inter
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`partes review of the ‘566 patent (“Third Petition”) requesting cancellation of the
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`additional asserted claims 6 and 16, as well as claim 15, which is materially
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`identical to claim 16.
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`11. SkyHawke’s grounds for challenging the patentability of claims 6, 15,
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`and 16 are based on the same prior art references and grounds upon which the ‘437
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`and ‘438 IPRs were instituted.
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`12. SkyHawke’s Third Petition argues that claims 6, 15, and 16 are
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`unpatentable in view of Palmer, Vanden Heuvel, and Osamu. The same arguments
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`set forth by SkyHawke in the ‘437 and ‘438 IPRs apply equally to claims 6, 15,
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`and 16, as these claims do not introduce new features outside of those challenged
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`in the ‘437 and ‘438 IPRs. For example, claim 6 of the ‘566 patent states that the
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`claimed apparatus includes “game-interactive golf advice information screens,”
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`which is redundant to presently challenged claim 8 reciting, in part, “one or more
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`game-interactive advice/feedback information screens.”
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`13. Claims 15 and 16 of the ‘566 patent are materially identical to
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`challenged claims 8 and 14, except for the limitations in claims 15 and 16 reciting
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`that “the [pre-game or game-interactive, respectively] information screens are
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`provided with means for selecting non-sequential option screens.” These
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`limitations are redundant to challenged claims 2 and 3, which recite, inter alia,
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`“…choice means for non-sequential selection or changing of information screens,”
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`and “…wherein the choice means is screen-dependent to provide a customized set
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`of screen-changing options for a displayed information screen.”
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`For the reasons set forth above, SkyHawke considers the filing of the Third
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`Petition to be necessary and appropriate.
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`4
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`III. GOVERNING RULES
`35 U.S.C. § 315(b).
`(b) Patent Owner’s Action. — An inter partes review may not be instituted if
`the petition requesting the proceeding is filed more than 1 year after the date
`on which the petitioner, real party in interest, or privy of the petitioner is
`served with a complaint alleging infringement of the patent. The time
`limitation set forth in the preceding sentence shall not apply to a request for
`joinder under subsection (c).
`35 U.S.C. § 315(c).
`(c) 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.
`37 C.F.R. § 42.122(b) Multiple proceedings and Joinder.
`(b) Request for joinder. Joinder may be requested by a patent owner or
`petitioner. 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. The time period set forth in § 42.101(b) shall
`not apply when the petition is accompanied by a request for joinder.
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`IV. DISCUSSION
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`In accordance with the Board’s representative order identifying matters to be
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`addressed in a motion for joinder (see Paper 15 at 4, IPR2013-00004, April 24,
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`2013), a motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified. A motion for joinder must be filed no later than one month
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`after the institution of any inter partes review for which joinder is requested.
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`This motion for joinder is timely under Rule 42.122(b), as the ‘438 IPR was
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`instituted on August 21, 2014, and the instant motion has been filed on or before
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`September 22, 2014 (September 21, 2014 falls on a Sunday). Similarly, the one
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`year time bar set forth in 35 U.S.C. § 315(b) does not apply to requests for joinder
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`under 35 U.S.C. § 315(c).
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`Joinder Is Appropriate. Joinder is appropriate here because it will
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`promote the efficient determination of the patentability of the ‘566 patent; no new
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`arguments or grounds of unpatentability are presented in SkyHawke’s Third
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`Petition; and L&H will not be prejudiced if the concurrently filed petition for inter
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`partes review is joined with the ‘438 IPR, whereas SkyHawke will be unduly
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`prejudiced if joinder is denied. See IPR2013-00385, Paper 17 at 7 (P.T.A.B. July
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`29, 2013) (granting motion for joinder because “Dell’s Petition raises no new
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`issues beyond what is already before the Board in the existing proceedings, which
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`weighs in favor of granting the motion.”); IPR2013-00326, Paper No. 15 at 6 and 7
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`(P.T.A.B. Sept., 24, 2013) (granting motion for joinder because “the two sets of
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`6
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`claims are related closely and involve the same prior art,” and “Petitioner’s
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`challenge of additional claims 4, 5, and 34 here, appear on this record, to be a
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`reasonable and timely response to Patent Owner’s litigation posture, as opposed to
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`a dilatory, unilateral action.”); IPR2013-00109, Paper No. 15 at 2-4 (P.T.A.B. Feb.,
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`25, 2013) (same).
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`First, joinder will promote the efficient determination of the patentability of
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`the ‘566 patent. As set forth above in Petitioner’s Statement of Material Facts, all
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`of the prior art references presented in the Third Petition (Palmer, Osamu, and
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`Vanden Heuvel) have been presented in the ‘438 IPR. Similarly, the same
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`arguments set forth by SkyHawke in the ‘437 and ‘438 IPRs apply equally to
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`claims 6, 15, and 16, as these claims do not introduce new features outside of those
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`already challenged via IPR. See paragraphs 12 and 13, above. Accordingly, the
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`ground of unpatentability set forth in the Third Petition has a related ground in the
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`‘437 and ‘438 IPRs, and no new arguments are set forth in the Third Petition, or
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`the corresponding declaration of Prof. Carl Gutwin.
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`Second, there will be no prejudice to L&H from joining the proceedings.
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`L&H is already defending its patent against the same ground and arguments in the
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`‘437 and ‘438 IPRs as set forth in the Third Petition. L&H has exercised its
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`opportunity to preliminarily respond to the unpatentability arguments set forth by
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`7
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`SkyHawke in view of Palmer, Osamu, and Vanden Heuvel. Thus, there is nothing
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`new for L&H to address.
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`Joinder will save both L&H and SkyHawke costs by avoiding duplicative
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`efforts in litigating the validity of claims 6 and 16 in the underlying litigation in
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`view of the same grounds and arguments set forth in the ‘437 and ‘438 IPRs.
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`Further, the underlying litigation is currently stayed until further order of the
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`district court. The stay was entered to allow the ‘437 and ‘438 IPRs to proceed to
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`initial decision, and to allow SkyHawke to request joinder of the concurrently filed
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`Third Petition. No schedule, or trial date, has been set in the Mississippi litigation.
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`Even if the stay of the underlying litigation were to be lifted, it is highly likely that
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`the Board will issue a final determination regarding the patentability of the asserted
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`claims of the ‘566 patent before trial commences in the district court, thereby
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`simplifying the issues and saving costs for the parties. And, as set forth below,
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`L&H will not be delayed in receiving a timely final written decision on the
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`patentability of claims 1-6, 8-11, and 13-18 of the ‘566 patent.
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`Third, SkyHawke will suffer undue prejudice if its Third Petition is not
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`joined to the ‘438 IPR. Within one year of being sued by L&H, SkyHawke
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`challenged via inter partes review all of the claims of the ‘566 patent that L&H
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`had asserted against it. In response to SkyHawke’s motion to stay the underlying
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`litigation, and more than one year from the filing of its complaint for patent
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`8
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`infringement, L&H asserted additional claims 6 and 16 against SkyHawke.
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`However, during the seven months that passed between the filing of its
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`infringement contentions and the one-year anniversary of its complaint in the
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`underlying litigation, L&H never attempted to add these claims to the case. L&H’s
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`tactical decision to belatedly assert claims 6 and 16 against SkyHawke will, absent
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`joinder, prejudice Petitioner because SkyHawke is otherwise time barred from
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`challenging these claims before the Board. See 35 U.S.C. § 315(b).
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`Moreover, if SkyHawke’s Third Petition is not joined with the ‘438 IPR,
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`SkyHawke will face a higher burden before the district court of proving invalidity
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`of claims 6 and 16 (clear and convincing), as opposed to the lower burden
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`(preponderance of the evidence) that will be used during inter partes review
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`proceedings of the other challenged claims. See 35 U.S.C. § 316(e). Having the
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`same grounds and arguments reviewed under two different evidentiary standards
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`would increase the potential for inconsistent results, and be prejudicial to
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`SkyHawke.
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`Joinder will not prevent the Board from completing its review of the
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`‘566 patent within one year. SkyHawke’s Third Petition includes only those
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`grounds on which its previous IPRs were instituted; namely, unpatentability in
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`view of the Palmer, Osamu, and Vanden Heuvel references. No new issues are
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`presented. Each limitation of newly challenged claims 6, 15, and 16 is a repeat of
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`9
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`limitations found in previously challenged claims 2, 3, 8, and 14. The reasons for
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`combining the prior art to render claims 6, 15, and 16 obvious are the same as
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`those previously set forth by Prof. Gutwin. Thus, joinder will not affect the
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`schedule in the instituted IPRs, nor increase the complexity of the proceedings in
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`any way.
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`L&H’s discovery and responses with respect to the challenge of claims 1-5,
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`8-11, 13-14, and 17-18, upon which trial has already been instituted, will apply
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`equally to claims 6, 15, and 16. SkyHawke agrees to allow L&H to take discovery
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`of Prof. Gutwin regarding claims 6, 15, and 16 during the patent owner’s initial
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`discovery period. Thus, while the Board considers SkyHawke’s motion, discovery
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`can proceed as anticipated and, if joinder is granted, no adjustment to the conduct
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`of the proceedings in the instituted IPRs will be required.
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`SkyHawke will also accommodate any reasonable logistical or scheduling
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`request of L&H in order to facilitate joinder of the proceedings. Accordingly,
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`briefing and discovery regarding claims 6, 15, and 16 can be conducted within the
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`discovery schedule set forth in the ‘438 IPR, which is identical to the discovery
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`schedule set forth in the ‘437 IPR, with little to no impact on the overall trial
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`schedule.
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`V. CONCLUSION
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`For the foregoing reasons, SkyHawke respectfully requests that it’s Petition
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`for Inter Partes Review of claims 6, 15, and 16 of the ‘566 patent be granted, and
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`that the proceeding be joined with Case No. IPR2014-00438.
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`Although SkyHawke does not believe that a fee is required for this motion,
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`the Patent Office is authorized to charge Deposit Account 15-0030 for any fee
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`Respectfully submitted,
`OBLON SPIVAK
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`/Thomas J. Fisher/
`Thomas J. Fisher
`Reg. No. 44,681
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`Scott McKeown
`Reg. No. 42,866
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`Christopher Ricciuti
`Reg. No. 65,549
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`Alex Englehart
`Reg. No. 62,031
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`appurtenant to this filing.
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`Dated: September 11, 2014
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`Customer Number
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`Tel. (703) 413-3000
`Fax. (703) 413-2220
`(OSMMN 02/10)
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`11
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e)(4) and
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`42.105(b) on the Patent Owner by UPS, overnight delivery, of a copy of this
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`Motion for Joinder at the correspondence address of record for the ‘566 patent:
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`Jason J Young
`3001 W Big Beaver Road Suite 624
`Troy, Michigan 48084
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` copy of this Motion for Joinder has also been served by UPS, overnight
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`delivery, on lead and back-up counsel for the Patent Owner as identified in Patent
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`Owner’s Mandatory Notices filed in Case Nos. IPR2014-00437 and IPR2014-
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`00438 at:
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`David M. Hoffman
`Matthew K. Wernli
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`/Thomas J. Fisher/
`Thomas J. Fisher
`(Reg. No. 44,681)
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`Dated: September 11, 2014
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`12
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