TRIAL NO: IPR2015-00568
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`ASSIGNEE: Babbage Holdings, LLC
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`ISSUED: October 1, 1996
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`PATENT: 5,561,811
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`INVENTOR: Eric A. Bier
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`FILED: November 10, 1992
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`TITLE: METHOD AND
`APPARATUS FOR PER-USER
`CUSTOMIZATION OF
`APPLICATIONS SHARED BY A
`PLURALITY OF USERS ON A
`SINGLE DISPLAY
`
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DOCKET NO: 723-3847
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`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`PETITIONER’S MOTION FOR JOINDER
` UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`ASSIGNEE: Babbage Holdings, LLC
`
`ISSUED: October 1, 1996
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`
`
`
`
`
`
`PATENT: 5,561,811
`
`INVENTOR: Eric A. Bier
`
`FILED: November 10, 1992
`
`TITLE: METHOD AND
`APPARATUS FOR PER-USER
`CUSTOMIZATION OF
`APPLICATIONS SHARED BY A
`PLURALITY OF USERS ON A
`SINGLE DISPLAY
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`DOCKET NO: 723-3847
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PETITIONER’S MOTION FOR JOINDER
` UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`Petitioner’s Motion for Joinder
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
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`TABLE OF CONTENTS
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`Statement of Relief Requested ............................................................. 1
`I.
`Statement of Material Facts .................................................................. 3
`II.
`III. Statement of Reasons for Requested Relief ......................................... 6
`A. Legal Standard .............................................................................. 6
`B. Nintendo’s Motion for Joinder is Timely ..................................... 6
`C. Joinder is Appropriate ................................................................... 7
`IV. CONCLUSION ................................................................................. 10
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`
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`i
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`Petitioner’s Motion for Joinder
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
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`TABLE OF AUTHORITIES
`
`
`FEDERAL CASES
`Dell Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper No. 17 (July 29, 2013) .............................................. 6
`Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
`IPR2014-00556, Paper No. 19 (July 9, 2014) ................................................ 7
`
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`Page(s)
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`
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`FEDERAL STATUTES
`35 U.S.C. § 315(b) .......................................................................................... 6
`35 U.S.C. § 315(c) ...................................................................................... 1, 6
`35 U.S.C. § 316(a)(11) .................................................................................... 9
`
`
`
`
`FEDERAL REGULATIONS
`37 C.F.R. § 42.100(c) ..................................................................................... 9
`37 C.F.R. § 42.122(a) ..................................................................................... 6
`37 C.F.R. § 42.122(b) ................................................................................. 1, 6
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`ii
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`Petitioner’s Motion for Joinder
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`I. Statement of Relief Requested
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`
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
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`Petitioners Nintendo Co., Ltd. and Nintendo of America Inc. (“Nintendo”)
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`respectfully submit this Motion for Joinder together with a Petition for Inter Partes
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`Review of U.S. Patent No. 5,561,811 (“Petition”). Pursuant to 35 U.S.C. § 315(c)
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`and 37 C.F.R. § 42.122(b), Nintendo requests inter partes review and joinder with
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`505 Games, et al. v Babbage Holdings, Inc., Case IPR2014-00954 (the “’954 IPR”),
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`in which trial was instituted on Ground 1 of the ’954 IPR petition on December 15,
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`2014. Nintendo’s Petition is in all material respects the same as Ground 1 of the
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`petition in the ’954 IPR – no new arguments, no new patent claims and no new
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`grounds of unpatentability are added by Nintendo’s Petition. Nintendo’s Motion for
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`Joinder and accompanying Petition are being filed within one month of the decision
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`instituting trial in the ‘954 IPR, and are therefore timely.
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`
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`Nintendo is filing this petition and joinder motion to ensure that the trial is
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`completed in the event that the current petitioners in the ’954 IPR reach settlement
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`with the Patent Owner. Joinder is appropriate here because Nintendo’s Petition is
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`narrowly drafted to challenge only the single claim of USP 5,561,811 (the “’811
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`Patent) challenged in the ’954 IPR (claim 7), and only on the single ground of
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`unpatentability (Ground 1) on which the Board instituted trial. Additionally,
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`joinder will not adversely impact the trial schedule in the ’954 IPR, as Nintendo’s
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`legal theories and claim charts are identical to the legal theories and claim charts
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`
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`1
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`Petitioner’s Motion for Joinder
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
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`with respect to Ground 1 in the ’954 IPR, and Nintendo relies on the same expert
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`declaration relied on by the existing petitioners in the ’954 IPR. Consequently, no
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`additional expert discovery will be required if joinder is allowed, simplifying
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`discovery. Furthermore, Nintendo will adhere to all applicable deadlines set forth
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`by the December 15, 2014 Scheduling Order currently in place in the ’954 IPR.
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`Nintendo will coordinate with counsel for the ’954 IPR petitioners regarding the
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`consolidation of all filings and will not submit any separate filings unless
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`Nintendo’s position differs from the position of the ’954 IPR petitioners, in which
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`case Nintendo would limit any additional filing to seven (7) pages or less.1 This
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`procedure and continued cooperation of counsel will greatly simplify briefing if the
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`Board permits joinder. Moreover, Nintendo would be prejudiced if the Board
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`denies the motion for joinder because of the possibility that all petitioners will reach
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`a settlement and successfully move to terminate the proceedings prior to the
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`issuance of a final determination.
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`
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`Any additional costs incurred by the existing parties to the ’954 IPR will be
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`minor and do not outweigh the prejudice to Nintendo that would result from a
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`denial of joinder. Accordingly, joinder is appropriate and will not prejudice any
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`1 Nintendo will continue on this basis unless and until the ’954 IPR is terminated as
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`to all other petitioners.
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`2
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`Petitioner’s Motion for Joinder
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
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`party to the ’954 IPR. To the contrary, joinder will provide for the just, speedy and
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`inexpensive determination of the proceedings.
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`II.
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` Statement of Material Facts
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`1.
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`The ’811 Patent was asserted in eleven patent infringement lawsuits filed on
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`September 23, 2013, by Patent Owner against the petitioners in Case IPR2014-00954
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`in the United States District Court for the Eastern District of Texas. 37 C.F.R. §
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`42.8(b)(2). These eleven actions are styled as: Babbage Holdings, LLC v. 505 Games
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`Interactive, Inc. (13-cv-749), Babbage Holdings, LLC v. Activision Blizzard Inc. et al.
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`(13-cv-750), Babbage Holdings, LLC v. Capcom U.S.A., Inc. et al. (13-cv-751),
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`Babbage Holdings, LLC v. The Walt Disney Company et al. (13-cv-752), Babbage
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`Holdings, LLC v. Electronic Arts, Inc. (13-cv-753), Babbage Holdings, LLC v. Namco
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`Bandai Games America, Inc. et al. (13-cv-755), Babbage Holdings, LLC v. Sony
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`Computer Entertainment et al. (13-cv-757), Babbage Holdings, LLC v. Ubisoft, Inc. et
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`al. (13-cv-758), Babbage Holdings, LLC v. Take-Two Interactive Software, Inc. et al.
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`(13-cv-764), Babbage Holdings, LLC v. Square Enix, Inc. et al. (13-cv-765), and
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`Babbage Holdings, LLC v. Riot Games Inc. (13-cv-766).
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`2.
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`The ’811 Patent was also asserted in the following action in the Eastern District
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`of Texas: Babbage Holdings, LLC v. Konami Digital Entertainment, Inc. (13-cv-754).
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`3.
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`On October 11, 2013, Nintendo of America was served with a complaint
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`captioned Babbage Holdings, LLC v. Nintendo of America, Inc., Civil Action No.
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`3
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`Petitioner’s Motion for Joinder
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
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`2:13-CV-756 (E.D. Tex.), alleging infringement of the ’811 Patent. By order dated
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`September 29, 2014, Nintendo’s case was transferred to the United States District
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`Court for the Northern District of California (Civil Action No. 5:14-cv-04822).
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`4.
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`On June 13, 2014, a Petition for Inter Partes Review challenging claim 7 of
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`the ’811 Patent was filed by the following petitioners: 505 Games, Inc., Activision
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`Blizzard, Inc., Blizzard Entertainment, Inc., Capcom U.S.A. Inc., The Walt Disney
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`Co., Disney Interactive Studios, Inc., LucasArts, Electronic Arts Inc., BANDAI
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`NAMCO Games America, Inc., BANDAI NAMCO Holdings USA Inc., Riot
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`Games, Inc., Sony Computer Entertainment America LLC (“Sony”), Square Enix,
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`Inc., Square Enix of America Holdings, Inc., Take-Two Interactive Software, Inc.,
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`Rockstar Games, Inc., 2KSports, Inc., 2K Games, Inc., and Ubisoft, Inc. Sony does
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`not oppose Nintendo’s Motion for Joinder.
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`5.
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`On December 15, 2014, a decision instituting trial was entered in Case
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`IPR2014-00954 on the ground of claim 7 of the ’811 Patent under 35 U.S.C. § 103
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`as obvious over Yoshino (USP 5,548,304) and Greanias (USP 5,157,384) (i.e.,
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`Ground 1).
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`6.
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`On November 20, 2014, the court in the related district court litigation
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`granted the joint stipulation of dismissal with prejudice that was filed by Patent
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`Owner and 505 Games, Inc. Exhibit 1006.
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`7.
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`On November 24, 2014, the court in the related court district litigation
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`4
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`Petitioner’s Motion for Joinder
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
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`granted the joint stipulation of dismissal with prejudice that was filed by Patent
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`Owner and Take-Two Interactive Software, Inc., Rockstar Games, Inc., 2KSports,
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`Inc., and 2K Games, Inc. Exhibit 1007.
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`8.
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`On December 11, 2014, Patent Owner and Ubisoft, Inc. filed a joint
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`stipulation of dismissal with prejudice in the related district court litigation.
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`Exhibit 1008.
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`9.
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`On January 6, 2015, Patent Owner and The Walt Disney Co., Disney
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`Interactive Studios, Inc., and LucasArts Entertainment Company, LLC filed a
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`motion to stay all case deadlines after agreeing on a settlement in principle in the
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`related district court litigation. Exhibit 1009.
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`10. On January 6, 2015, Patent Owner and Capcom U.S.A., Inc., Electronic Arts
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`Inc., BANDAI Namco Games America Inc., Take-Two Interactive Software, Inc.,
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`Rockstar Games, Inc., 2KSports, Inc., 2K Games, Inc, Square Enix, Inc., Riot
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`Games, Inc., Activision Publishing, Inc. and Blizzard Entertainment, Inc. filed a
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`joint motion to stay Federal Circuit mandamus proceedings after agreeing on a
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`settlement in principle. Exhibit 1010.
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`11. Concurrently with this Motion for Joinder, Nintendo is filing a Petition
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`challenging claim 7 of the ’811 Patent on the same ground on which trial was
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`instituted in the ’954 IPR, relying on the same legal theories and evidence.
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`5
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`Petitioner’s Motion for Joinder
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`III. Statement of Reasons for Requested Relief
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`A. Legal Standard
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`
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
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`The Leahy-Smith America Invents Act (AIA) permits joinder of like review
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`proceedings, e.g. an inter partes review may be joined with another inter partes
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`review. 37 C.F.R. § 42.122(a). The Board has discretion to join parties to an
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`existing inter partes review. 35 U.S.C. § 315(c). In deciding whether to exercise its
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`discretion, the Board considers factors including: (1) the movant’s reasons why
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`joinder is appropriate; (2) whether the new petition presents any new grounds of
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`unpatentability; (3) what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) how briefing and discovery may be simplified. Dell
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`Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper No. 17 at 4 (July
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`29, 2013).
`
`B. Nintendo’s Motion for Joinder is Timely
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`The instant Petition and this Motion for Joinder are timely under 35 U.S.C. §
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`315(c) and 37 C.F.R. § 42.122(b). While, as a general proposition, a petition for
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`inter partes review may not be filed more than one year after the date on which a
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`petitioner is served with a complaint alleging infringement of the patent-at-issue (35
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`U.S.C. § 315(b)), the one year period does not apply when a petition for inter partes
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`review is accompanied by a motion for joinder filed within one month of institution
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`of the inter partes review for which joinder is requested. Id.; 37 C.F.R. §
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`
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`6
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`Petitioner’s Motion for Joinder
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
`
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`42.122(b). This Motion for Joinder and the accompanying Petition are timely, as
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`they are submitted within one month of the institution of trial in the ’954 IPR on
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`December 15, 2014.
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`C. Joinder is Appropriate
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`
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`The PTAB has previously stated that it is “mindful of a policy preference for
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`joining a party that does not present new issues that might complicate or delay an
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`existing proceeding.” Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
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`IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157 CONG. REC. S1376
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`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that
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`joinder will be allowed as of right – if an inter partes review is instituted on the
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`basis of a petition, for example, a party that files an identical petition will be joined
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`to that proceeding, and thus allowed to file its own briefs and make its own
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`arguments.”)). Nintendo’s Petition challenges the same patent claim on the same
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`ground on which trial in the ’954 IPR was instituted, and relies on the same legal
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`theories and expert declaration relied on by the ’954 IPR petitioners.2
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`2 In support of its Petition Nintendo has submitted the same Declaration of Stephen
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`C. Hayne, Ph.D. submitted in support of the ’954 IPR petition, and relies on those
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`portions of the Hayne Declaration that support inter partes review on Ground 1.
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`See Petition at 4, n.1.
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`7
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`Petitioner’s Motion for Joinder
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
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`Nintendo is in communication with counsel for the ’954 IPR petitioners and
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`will cooperate on all briefing and discovery.3 No new claims and no new grounds
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`will be added to the proceedings as a result of the Board allowing joinder. Thus,
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`Patent Owner should not require a substantial amount of time to prepare a
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`Preliminary Patent Owner Response, if it chooses to file one. Because Nintendo’s
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`Petition is narrowly drafted to address the only claim and ground upon which the
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`’954 IPR trial has been instituted, joinder will result in no substantial additional cost
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`to any party. Therefore, no party will be prejudiced if the Board permits joinder.
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`Joinder will not alter the trial schedule currently in place in the ’954 IPR
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`because both Nintendo and the existing ’954 IPR petitioners will address the same
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`prior art using the same expert, resulting in no additional expert discovery.
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`Moreover, Nintendo has agreed to adhere to all applicable deadlines set forth in the
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`’954 IPR Scheduling Order and will coordinate with counsel for the ’954 IPR
`
`petitioners to consolidate filings. Unless and until all ’954 petitioners settle with the
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`patent owner, Nintendo would take an understudy role; it will not submit any
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`separate filings to the PTO unless it disagrees with the positions of the current
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`petitioners, and in the event of such disagreement it would submit a filing not
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`exceeding seven pages. Since Nintendo’s Petition challenges no additional claims
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`and raises no new grounds of unpatentability, joinder should not unduly affect the
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`3 Sony does not oppose Nintendo’s Motion for Joinder.
`8
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`Petitioner’s Motion for Joinder
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
`
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`Board’s ability to complete its review and issue its final determination within the
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`statutory time limits under 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
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`Therefore, joinder will have no adverse impact on the ’954 IPR Scheduling Order.
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`Nintendo is filing this petition and joinder motion to ensure that the trial is
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`completed in the event that the current petitioners in the ’954 IPR reach settlement
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`with the Patent Owner. Given that the patent owner has settled with several
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`defendants so far, this is a significant concern.4 Nintendo would be prejudiced if
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`the Board denies the motion for joinder because Nintendo’s interests may not be
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`adequately represented under all circumstances in the ’954 IPR, particularly in the
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`event that all petitioners reach a settlement and successfully move to terminate the
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`proceedings prior to the issuance of a final determination.
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`4 On January 6, 2015, Patent Owner and Capcom U.S.A., Inc., Electronic
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`Arts Inc., BANDAI Namco Games America Inc., Take-Two Interactive Software,
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`Inc., Rockstar Games, Inc., 2KSports, Inc., 2K Games, Inc, Square Enix, Inc., Riot
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`Games, Inc., Activision Publishing, Inc. and Blizzard Entertainment, Inc. filed a
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`joint motion to stay Federal Circuit mandamus proceedings after agreeing on a
`
`settlement in principle. Exhibit 1010.
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`9
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`Petitioner’s Motion for Joinder
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`IV. Conclusion
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`
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` Case IPR2015-00568
` U.S. Patent No. 5,561,811
`
`For the foregoing reasons, Nintendo respectfully requests that the Board
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`institute its Petition for Inter Partes Review of U.S. Patent 5,561,811 and join the
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`proceeding with 505 Games, et al. v Babbage Holdings, Inc., Case IPR2014-00954.
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`Although it is believed that no fee is required for this Motion, the Commissioner is
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`hereby authorized to charge any additional fees which may be required for this
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`Motion to Deposit Account No. 14-1140.
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`
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`Dated: January 14, 2015
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`Respectfully submitted,
`
`/Joseph S. Presta/
`Joseph S. Presta
`Reg. No. 35,329
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`10
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