`571-272-7822
`
`
` Paper No. 20
` Entered: February 17, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IPR LICENSING, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00074
`Patent 8,380,244 B2
`
`____________
`
`
`
`Before SALLY C. MEDLEY, BEVERLY M. BUNTING, Administrative
`Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`ORDER
`
`
`
`
`
`IPR2015-00074
`Patent 8,380,244 B2
`
`
`A conference call in IPR2015-00074 was held on February 13, 2015,
`
`among respective counsel for Petitioner, Microsoft Corporation, and Patent
`
`Owner, IPR Licensing, Inc., and Judges Bunting and Medley.
`
`The call was initiated by the Panel to discuss the motion for joinder of
`
`IPR2015-00074 (“the ’074 petition”) with recently instituted IPR2014-
`
`00525 (“the ’525 IPR”) presently under consideration. We remarked that 35
`
`U.S.C. 315(c) gives the Board discretion over whether to allow joinder, and
`
`that the one-year time bar of 35 U.S.C. § 315(b) is not applicable to a
`
`request for joinder. In addition, we reviewed the various factors that
`
`influence our consideration, such as timing/status of the already instituted
`
`case, the burden on the patent owner, the instituted grounds, and substantive
`
`arguments. We also explained that the ’074 petition would be considered on
`
`its merits, including whether the petition is barred under 35 U.S.C. § 315(b),
`
`if determined that the motion for joinder should be denied.
`
`In comparing the ’074 petition to the ’525 IPR, we noted that by
`
`arguing the one ground instituted in the ’525 IPR in the alternative,
`
`Microsoft was essentially asserting 4 grounds. Moreover, the differences
`
`between the ’074 petition and the petition in the ’525 IPR, including
`
`restructured arguments to emphasize certain points, additional citations,
`
`arguments regarding related litigation, and supplemental declaration, could
`
`potentially place an additional burden on IPR Licensing.
`
`Thus, we authorized Microsoft to file a paper specifying that if joined
`
`with the ’525 IPR, it would only pursue the instituted ground in the ’525
`
`IPR, and to the extent any argument in the ’074 petition differs from
`
`arguments and evidence of record filed by the Petitioner in the ’525 IPR,
`
`Microsoft would not be relying on such arguments and evidence. IPR
`
`
`
`2
`
`
`
`IPR2015-00074
`Patent 8,380,244 B2
`
`Licensing does not, at this time, oppose such paper. Should joinder be
`
`granted, in view of this paper, we confirmed that all filings in the joined
`
`proceedings would be made by ZTE, the petitioner in the ’525 IPR. While
`
`Microsoft could attend an oral hearing, they would not be providing
`
`argument. In addition, should ZTE and IPR Licensing settle their dispute,
`
`Microsoft could continue as petitioner.
`
`Microsoft agreed to notify the panel, by February 17, 2015, of its
`
`intent regarding filing of such paper. The parties agreed to meet and confer,
`
`and Microsoft further agreed to provide IPR Licensing a draft of the paper
`
`prior to filing. The paper is due by February 20, 2015, and is limited to 2
`
`pages. IPR licensing will notify the Board if it seeks authorization to file an
`
`opposition by February 23, 2015.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Microsoft is authorized to file a paper in accordance
`
`with this order by February 20, 2015, limited to 2 pages;
`
`FURTHER ORDERED that Microsoft will notify the Board by
`
`February 17, 2015 of its intent to file the paper;
`
`FURTHER ORDERED that the parties will meet and confer and
`
`Microsoft will provide a draft of the paper to IPR Licensing before filing;
`
`and
`
`FURTHER ORDERED that IPR licensing will notify the Board, by
`
`February 23, 2015, if it intends to seek authorization to file an opposition.
`
`3
`
`
`
`
`
`
`
`IPR2015-00074
`Patent 8,380,244 B2
`
`PETITIONER:
`
`Joseph A. Micallef
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jmicallef@sidley.com
`
`Douglas I. Lewis
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`dilewis@sidley.com
`
`Scott Border
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`sborder@sidley.com
`
`
`
`4
`
`PATENT OWNER:
`
`Jonathan D. Link
`Latham & Watkins LLP
`555 11th Street, NW Suite 1000
`Washington, D.C. 20004-1304
`jonathan.link@lw.com
`
`Julie M. Holloway
`Latham & Watkins LLP
`505 Montgomery Street, Suite 2000
`San Francisco, CA 94111-6538
`julie.holloway@lw.com
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