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`Tel: 571-272-7822
`
`
`
`
`Paper 15
`Entered: June 2, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HARMONIX MUSIC SYSTEMS, INC. AND
`KONAMI DIGITAL ENTERTAINMENT INC.,
`Petitioner,
`
`v.
`
`PRINCETON DIGITAL IMAGE CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2015-00271
`Patent 5,513,129
`_______________
`
`Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`OSINSKI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122
`
`

`

`IPR2015-00271
`Patent 5,513,129
`
`
`INTRODUCTION
`I.
`Harmonix Music Systems, Inc.1 and Konami Digital
`Entertainment Inc. (collectively “Petitioner”) filed a Petition for Inter Partes
`Review (Paper 1) of claims 1–23 of U.S. Patent No. 5,513,129 (Ex. 1001,
`“the ’129 patent”), and concurrently filed a Motion for Joinder (Paper 5,
`“Mot.”). In the Motion for Joinder, Petitioner seeks to join challenges
`against the ’129 patent in this proceeding (“the ’271 IPR”) to a proceeding
`previously instituted against the’129 patent, Ubisoft Entertainment SA v.
`Princeton Digital Image Corporation, Case IPR2014-00635 (“the ’635
`IPR”). Mot. 1. Princeton Digital Image Corporation (“Patent Owner”)
`timely filed an Opposition to the Motion for Joinder (Paper 8, “Opp.”).
`Petitioner filed a Reply to Patent Owner’s Opposition (Paper 9, “Reply”)
`and a Corrected Petition (Paper 11, “Pet.”). On March 17, 2015, Patent
`Owner filed a Preliminary Response (Paper 13, “Prelim. Resp.”).
`For the reasons that follow, we determine that Petitioner has not
`shown that joinder is warranted in this instance and Petitioner’s Motion is
`denied. 2 Furthermore, in a decision entered concurrently, the Petition is
`denied.
`
`
`1 We note that Harmonix Music Systems, Inc. also filed a separate Petition
`to institute inter partes review of claims 1, 5, 6, 8–13, 15–19, and 21–23 of
`the ’129 patent on November 15, 2013. See Case IPR2014-00155 (“the
`’155 IPR”), Paper 1. On May 9, 2014, we granted the Petition and instituted
`an inter partes review of claims 10, 11, 22, and 23. ’155 IPR, Paper 11, 2.
`An oral hearing was held on January 15, 2015, and a Final Written Decision
`was entered May 6, 2015. ’155 IPR, Papers 25, 26.
`2 The Petition was filed on November 17, 2014, more than one year after
`Petitioner was served with a complaint alleging infringement of the
`
`
`
`
`2
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`IPR2015-00271
`Patent 5,513,129
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`
`II.
`PRINCIPLES OF LAW
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The
`Board will determine whether to grant joinder on a case-by-case basis,
`taking into account the particular facts of each case, substantive and
`procedural issues, and other considerations. See 157 CONG. REC. S1376
`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether
`and when to allow joinder, the Office may consider factors including “the
`breadth or unusualness of the claim scope” and claim construction issues).
`When exercising its discretion, the Board is mindful that patent trial
`regulations, including the rules for joinder, must be construed to secure the
`just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C.
`§ 316(b); 37 C.F.R. § 42.1(b).
`A motion for joinder should: (1) set forth the reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`
`’129 patent. Pet. 55; ’155 IPR, Paper 11, 2. Petitioner Konami Digital
`Entertainment Inc. was added as a party on December 10, 2012. Mot. 5.
`When a Petition is filed more than one year after Petitioner was served with
`a complaint alleging infringement of the patent, an inter partes review
`ordinarily may not be instituted. See 35 U.S.C. § 315(b); 37 C.F.R.
`§ 42.101(b). An exception to this one-year time bar exists in the case of a
`request for joinder that is filed within one month of institution of the
`proceeding sought to be joined. See 35 U.S.C. § 315(b) (final sentence);
`37 C.F.R. § 42.122(b). The ’635 IPR was instituted on October 17, 2014,
`and Petitioner filed its Motion for Joinder on November 17, 2014.
`Consequently, we may consider whether joinder is appropriate in this case.
`Absent joinder of this proceeding with the ’635 IPR, the Petition would be
`barred.
`
`
`
`3
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`IPR2015-00271
`Patent 5,513,129
`
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See IPR2013-00004, Paper 15 at 4;
`Frequently Asked Question (“FAQ”) H5 on the Board’s website at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`III. ANALYSIS
`A. New Grounds of Unpatentability
`The Petition seeks review of three claims, claims 14, 19, and 20, that
`were denied institution in the ’635 IPR and of claims for which review was
`instituted in the ’635 IPR. Mot. 1; ’635 IPR, Paper 9 (Decision on
`Institution), 2.3 In particular, the Petition includes a new challenge to both a
`claim not instituted in the ’635 IPR, claim 14, and claims instituted in the
`’635 IPR, claims 5–7 and 16–18, based on a new combination of references
`considered in the ’635 IPR. Additionally, Petitioner adds claims 19 and 20
`to a ground on which we instituted in the ’635 IPR. Mot. 1; ’635 IPR, Paper
`9, 2. Petitioner points out that claim 14 (which Petitioner is challenging
`based on a combination of Adachi and Tsumura) depends from claim 12,
`and the Board has already instituted inter partes review of claim 12 based on
`Adachi. Mot. 10–11. Petitioner further points out that claims 19 and 20
`(which Petitioner is challenging based on Lytle) depends from claim 16, and
`the Board has already instituted inter partes review of claim 16 based on
`Lytle. Id. at 11.
`
`
`3 The Petition also seeks review of the same claims 1–13, 15–18, and 21–23
`upon which we instituted an inter partes review in the ’635 IPR, and does
`not include any challenges rejected by the Board. Mot. 1; Reply 1; ’635
`IPR, Paper 9, 2.
`
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`4
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`IPR2015-00271
`Patent 5,513,129
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`As compared to the grounds of unpatentability raised in the ’635 IPR,
`the Petition asserts the following grounds of unpatentability.
`Claims
`Claims
`Claims not
`References
`challenged in
`instituted in
`instituted
`in ’635 IPR
`’635 IPR
`’635 IPR
`in ’635
`and/or ’271
`IPR
`IPR
`Tsumura4
`1, 5–7, 12–
`15, 21
`N/A
`
`10, 11
`
`1, 5–7, 10–15,
`21
`5–7, 9–12, 16–
`5–7, 9–12, 16–
`18, 22, 23
`18, 22, 23
`1, 12, 13, 15, 21 1, 12, 13, 15, 21 N/A
`1, 8, 12, 13, 15,
`1, 8, 12, 13, 15,
`N/A
`21
`21
`1–6, 8, 9, 12,
`1–4, 12, 13, 15,
`13, 15–19, 21
`21
`
`5, 6, 8, 9,
`16–19
`
`10, 11, 22, 23
`
`N/A
`
`16–20
`
`N/A
`
`N/A
`
`N/A
`
`Tsumura
`and
`Williams
`Adachi and
`Tsumura
`Compare Pet. 2 with ’635 IPR, Paper 9, 6–7, 24–25.
`
`10, 11, 22,
`23
`16–20
`
`N/A
`
`Lytle5
`
`Adachi6
`Lytle and
`Adachi
`Thalmann7
`and
`Williams8
`Williams
`
`Claims
`challenged in
`’271 IPR
`
`10, 11
`
`5–7, 9–12, 16–
`20, 22, 23
`1, 12, 13, 15, 21
`1, 8, 12, 13, 15,
`21
`1–4, 12, 13, 15,
`21
`
`N/A
`
`N/A
`
`5–7, 14, 16–20
`
`
`4 Tsumura et al., US 5,208,413 (iss. May 4, 1993) (“Tsumura,” Ex. 1002).
`5 Wayne T. Lytle, Driving Computer Graphics Animation from a Musical
`Score, SCIENTIFIC EXCELLENCE IN SUPERCOMPUTING, THE IBM 1990
`CONTEST PRIZE PAPERS 643–86 (Keith R. Billingsley et al. ed., 1992)
`(“Lytle,” Ex. 1003).
`6 Adachi et al., US 5,048,390 (iss. Sept. 17, 1991) (“Adachi,” Ex. 1004).
`7 Daniel Thalmann, Using Virtual Reality Techniques in the Animation
`Process, PROC. VIRTUAL REALITY SYSTEMS, BRITISH COMPUTER SOCIETY 1–
`20 (1992) (“Thalmann,” Ex. 1006).
`8 Williams et al., US 5,430,835 (iss. July 4, 1995) (“Williams,” Ex. 1005).
`
`
`
`5
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`IPR2015-00271
`Patent 5,513,129
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`Petitioner argues that “joinder should not unduly affect the Board’s
`ability to issue its final determination because the majority of the challenges
`are the same and the few additional challenges proposed by Petitioner
`feature the exact same references already being considered.” Mot. 10.
`Patent Owner counters that joinder would introduce new evidence and
`expand discovery. Opp. 8–9 (citing Ex. 1007). Petitioner responds that it
`provided a Declaration from Ubisoft’s expert that mirrors arguments made
`in the ’635 IPR and provides support for the additional arguments. Mot. 4;
`Reply 2–3.
`
`B. Schedule
`Petitioner argues joinder would have minimal impact on the schedule
`of the ’635 IPR because it would “coordinate with Ubisoft in the joined
`proceedings to consolidate submissions and in the taking of any
`depositions.” Mot. 4. Petitioner suggests that the Board may order Ubisoft
`and Petitioner to consolidate their submissions and conduct joint discovery
`in order to minimize complication or delay. Id. at 11. Petitioner pointed out
`in the conference call that (i) it would not be seeking significant page
`extensions, (ii) Ubisoft consented to the joinder, and (iii) depositions in the
`’635 IPR would not be taking place until late January or early February.
`The schedule for the ’635 IPR is significantly advanced. Patent
`Owner’s Response was filed on February 27, 2015. ’635 IPR, Paper 14.
`Petitioner’s Reply was filed on April 10, 2015. ’635 IPR, Paper 16. Patent
`Owner filed a Motion for observation regarding cross-examination of a reply
`witness on May 5, 2015. ’635 IPR, Paper 20. The oral hearing for the
`’635 Patent was held on May 22, 2015.
`
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`6
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`IPR2015-00271
`Patent 5,513,129
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`Petitioner points out that the statute governing inter partes review
`gives the Board flexibility to extend the one-year period by up to six months
`in the case of joinder. Mot. 12; see also id. at 14. Petitioner asserts that
`“[t]he benefits to Petitioner[] of not having to bring . . . invalidity arguments
`(especially on only the three dependent claims not currently instituted) in a
`district court far outweighs any short delay in the schedule before the
`Board.” Mot. 14.
`In sum, Petitioner’s proposed schedule does not address convincingly
`how the Petition could be joined to the ’635 IPR without significantly
`impacting the trial schedule of the ’635 IPR. Although we are aware that the
`schedule may be adjusted in the case of joinder, this does not mean that
`joinder is appropriate in all circumstances. Under the circumstances, joinder
`would have a significant adverse impact on the Board’s ability to complete
`the existing proceeding in a timely manner, which weighs against granting
`Petitioner’s Motion for Joinder.
`C. Other Factors
`Petitioner argues that joinder is appropriate “because it . . . will not
`prejudice the parties to the Ubisoft IPR.” Mot. 1. Petitioner argues
`specifically that Patent Owner will not be prejudiced since Patent Owner
`will be facing arguments that it would later face in the related district court
`proceedings anyway and that joinder is “likely more convenient and
`efficient” for Patent Owner. Id. at 14–15. Patent Owner counters that it
`would be prejudicial to Patent Owner to shorten the time available to it to
`file a Patent Owner Response, and that Patent Owner should not be
`penalized by Petitioner’s decision to ultimately assert challenges that could
`have been asserted in the ’155 IPR, considering that the art relied upon in the
`
`
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`7
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`current proceeding was available at the time that Petitioner filed the
`’155 IPR. Opp. 11. Petitioner responds that Patent Owner has already
`considered the same references in the ’635 IPR and has known about the
`references since Ubisoft filed its Petition on April 14, 2014. Reply 5.
`Additional challenges joined to the ’635 IPR would require the Patent
`Owner to undertake additional cost and effort in an expedited time frame.
`Further, we are mindful that Petitioner has not provided a compelling reason
`why the grounds of unpatentability asserted in the Petition could not have
`been asserted in the ’155 IPR, or why Petitioner did not seek to immediately
`pursue similar grounds of unpatentability after the ’635 IPR was instituted.
`Rather, Petitioner utilized all of its available time under the statute and filed
`its request for joinder on the last possible day (i.e., one month after the
`institution date of the inter partes review for which joinder is requested).
`Petitioner also argues that it would be prejudiced in the absence of
`joinder “because [its] interests may not be adequately represented in the
`Ubisoft IPR on the instituted independent claims” and that Konami Digital
`Entertainment, Inc. has not previously requested inter partes review of the
`claims of the ’129 patent. Mot. 3. Additionally, Petitioner asserts that it
`would be forced to litigate three dependent claims should Ubisoft be
`successful in the ’635 IPR “with the record created by the Board on the
`independent claims” or would be forced to litigate the same arguments in the
`district court on all claims from the beginning should the ’635 IPR terminate
`without proceeding to a final written decision. Id. at 3–4; see also id. at 13.
`
`
`
`8
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`Patent 5,513,129
`
`Patent Owner counters that failure to join to the ’635 IPR would not
`be prejudicial to Petitioner because it was within Petitioner’s control to
`challenge claims 14, 19,9 and 20 in the ’155 IPR. Opp. 2–3. Patent Owner
`also counters that Konami “was well aware of the IPRs filed by its co-
`defendants, and chose not to participate” at the time of the earlier filing and
`that Petitioner’s alleged possible prejudice stemming from termination of the
`’635 IPR before a final written decision is merely speculative. Id. at 3; see
`also id. at 14–15.
`Petitioner argues that joinder is appropriate because “the entire
`’129 Patent would be under review by the Board in one proceeding,
`completely eliminating the need for review by the district court in the two
`related litigations.” Mot. 2. Petitioner further argues “not addressing all
`claims of the ’129 Patent in a consolidated IPR could result in a waste of
`judicial resources, an increase in litigation costs to both parties, and contrary
`to the purpose of ensuring a ‘just, speedy, and inexpensive resolution.’” Id.
`at 13 (citing Target Corporation v. Destination Maternity Corporation,
`Case No. IPR2014-00508 (PTAB Sept. 25, 2014), Paper 18, 10). Patent
`Owner counters that “any of the grounds under review at the Board could be
`raised in the ’129 patent litigation by Electronic Arts because it is a
`defendant in the litigation but is not a Petitioner in any of the three IPRs
`against the ’129 patent.” Opp. 3.
`
`
`9 We note that Petitioner did challenge claim 19 as anticipated by US Patent
`No. 4,771,344 to Fallacaro et al. in the ’155 IPR, but we did not institute on
`this ground. ’155 IPR, Paper 11, 2.
`
`
`
`9
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`Patent 5,513,129
`
`Petitioner’s assertion that the entire ’129 patent would be under
`review in one proceeding ignores that we already have two Board
`proceedings relating to the ’129 patent—the ’155 IPR and the ’635 IPR.
`Petitioner’s assertion regarding eliminating the need for review by a district
`court presumes that we would necessarily institute inter partes review based
`on asserted grounds raised in the instant Petition relating to the additional
`claims, and that we would ultimately conclude that Petitioner establishes by
`a preponderance of the evidence that all challenged claims (including the
`additional claims) are unpatentable based on grounds raised in that Petition.
`We have not made a determination regarding patentability of the challenged
`claims of the ’129 patent in this proceeding, or with regard to the claims at
`issue in the ’635 IPR. We determine that any prejudice to Petitioner is
`outweighed by the additional burden that would be placed on Patent Owner
`under an expedited schedule addressing additional challenges.
`D. Conclusion
`Petitioner has not satisfied its burden of proof in showing entitlement
`to joinder with the ’635 IPR. See 37 C.F.R. § 42.20. Petitioner presents no
`persuasive argument or evidence to explain why the grounds of
`unpatentability asserted in the Petition could not have been asserted in the
`’155 IPR. Joinder would increase the cost, time, and effort expended by
`Patent Owner in the ’635 IPR and likely necessitate Patent Owner forfeiting
`its full statutory time periods for response. Moreover, Petitioner has not
`shown that joinder would promote efficient resolution of the unpatentability
`issues without substantially affecting the schedule for the ’635 IPR.
`Consequently, we decline to exercise our discretion under 35 U.S.C.
`§ 315(c) to authorize joinder, and deny the Motion for Joinder.
`
`
`
`10
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`IPR2015-00271
`Patent 5,513,129
`
`
`IV. ORDER
`Accordingly, it is hereby
`ORDERED that the Motion for Joinder is denied.
`
`FOR PETITIONER:
`
`Linda J. Thayer
`Rachel Emsley
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`linda.thayer@finnegan.com
`rachel.emsley@finnegan.com
`
`
`Kenneth X. Xie
`MORRISON & FORESTER LLP
`kxie@mofo.com
`
`
`
`FOR PATENT OWNER:
`
`Dr. Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Robert R. Axenfeld
`O’KELLY ERNST & BIELLI, LLC
`raxenfeld@oeblegal.com
`
`
`
`
`
`
`
`
`11
`
`