Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 10
`
`
` Entered: October 22, 2015
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`BISCOTTI INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01054
`Patent 8,144,182 B2
`
`
`
`Before MICHELLE R. OSINSKI, NEIL T. POWELL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`And Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 10
`
`
` Entered: October 22, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`BISCOTTI INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01054
`Patent 8,144,182 B2
`
`
`
`Before MICHELLE R. OSINSKI, NEIL T. POWELL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`And Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`IPR2015-01054
`Patent 8,144,182 B2
`
`
`I. INTRODUCTION
`
`Microsoft Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
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`to institute an inter partes review of claims 72 and 73 of U.S. Patent
`
`No. 8,144,182 B2 (Ex. 1001, “the ’182 patent”). On the same day,
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`Petitioner also filed a Motion for Joinder, requesting joinder of this
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`proceeding with a related and instituted proceeding, Microsoft Corp. v.
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`Biscotti Inc., Case IPR2014-01459 (“’1459 IPR”). Paper 3 (“Joinder
`
`Motion”). Petitioner filed its Joinder Motion within one month after
`
`institution of a trial in the ’1459 IPR, as required by 37 C.F.R § 42.122(b).
`
`Patent Owner Biscotti Inc. filed a Preliminary Response to the Petition.
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`Paper 9 (“Prelim. Resp.”). Patent Owner also filed an Opposition to
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`Petitioner’s Motion for Joinder. Paper 8 (“Opp. To Joinder”).
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an
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`inter partes review may be authorized only if “the information presented in
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`the petition . . . and any [preliminary] response . . . shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least
`
`one of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`For the reasons below, we determine that Petitioner has not shown
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`that joinder is warranted in this instance. We also deny the Petition and do
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`not institute inter partes review as to claims 72 and 73 of the ’182 patent.
`
`A.
`
`Related Proceedings
`
`Patent Owner has asserted the ’182 patent against Petitioner in
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`Biscotti Inc. v. Microsoft Corp., Case No. 2:13-cv-01015-JRG (E.D. Tex.).
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`Pet. 5; Paper 6, 1. Additionally, in the ’1459 IPR, Petitioner filed its Petition
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`(“’1459 Petition”) on September 6, 2014 requesting inter partes review of
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`claims 1, 4, 5, and 69–74. Microsoft Corp. v. Biscotti Inc., Case IPR2014-
`
`
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`2
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`IPR2015-01054
`Patent 8,144,182 B2
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`01459, Paper 1 (Sept. 6, 2014). On March 19, 2015, in the ’1459 IPR, we
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`instituted an inter partes review of claims 69–71 and 74, and declined to
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`institute an inter partes review of claims 1, 4, 5, 72, and 73. Microsoft
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`Corp. v. Biscotti Inc., Case IPR2014-01459, slip op. 26–27 (PTAB Mar. 19,
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`2015) (Paper 11) (“’1459 Institution Decision”). Subsequently, Petitioner
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`filed the present Petition on April 17, 2015, challenging claims 72 and 73.
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`The ’182 patent also is involved in instituted inter partes reviews in
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`Microsoft Corp. v. Biscotti Inc., Case IPR2014-01457, and Microsoft Corp.
`
`v. Biscotti Inc., Case IPR2014-01458. Additionally, the ’182 patent is the
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`subject of petitions filed by Petitioner in Microsoft Corp. v. Biscotti Inc.,
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`Case IPR2015-01052, and Microsoft Corp. v. Biscotti Inc., Case IPR2015-
`
`01053. Pet. 4–5.
`
`B.
`
`The ’182 Patent
`
`The ’182 patent discloses “tools and techniques for providing video
`
`calling solutions.” Ex. 1001, Abst. The ’182 patent shows one video
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`communication system 100 in Figure 1A, reproduced below.
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`IPR2015-01054
`Patent 8,144,182 B2
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`Figure 1A shows various components of video communication system 100,
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`including video communication devices 105a and 105b, Internet 110, video
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`sources 115a and 115b, display devices 120a and 120b, and set-top
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`boxes 125a and 125b. Id. at col. 5, l. 40–col. 6, l. 13. The ’182 patent
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`discloses that video communication device 105a captures video stream 155
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`from video source 115a, and that video communication device 105b captures
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`video stream 160 from video source 115b. Id. at col. 5, ll. 49–56. Each
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`video communication device 105a and 105b can output to the connected
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`display device 120a or 120b a video stream, which may have various
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`compositions. Id. at col. 5, ll. 56–62.
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`As shown in Figure 1A, video communication device 105a may be
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`connected between set-top box 125a and display device 120a. Id. at col. 5,
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`ll. 62–65. The ’182 patent indicates that this arrangement allows video
`
`communication device 105a to pass audiovisual stream 150a from set-top
`
`
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`4
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`IPR2015-01054
`Patent 8,144,182 B2
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`box 125a through to display device 120a. See id. at col. 5, l. 62–col. 6, l. 1.
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`The ’182 patent discloses that video communication device 105a
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`(additionally or alternatively) may receive audio video stream 160 from
`
`video communication device 105b, and that video communication
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`device 105a may forward video stream 160 to display device 120a.
`
`Id. at col. 6, ll. 1–6. This may happen as part of a video call. Id. at col. 6, ll.
`
`1–5. The ’182 patent discloses that video communication device 105a, in
`
`some cases, may cause simultaneously the display of audiovisual stream
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`150a from set-top box 125a and stream 160 from video communication
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`device 105b. Id. at col. 6, ll. 14–18. This allows a user to watch television
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`while participating in a video call. Id. at col. 6, ll. 18–20.
`
`Claims 72 and 73 each depend from independent claim 69.
`
`Claims 69, 72, and 73 are reproduced below.
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`69. A method of providing video calling using a first
`video communication device comprising an audio
`capture device, a video capture device, a network
`interface, an audiovisual input interface, and an
`audiovisual output interface, the method comprising:
`
`receiving, on the audiovisual input interface, a set-top
`box audiovisual stream from a set-top box, the set-top
`box audiovisual stream comprising a set-top box
`video stream and a set-top box audio stream;
`
`receiving, on the network interface, a remote audiovisual
`stream via a network connection with a second video
`communication device, the remote audiovisual stream
`comprising a remote audio stream and a remote video
`stream;
`
`transmitting, on the audiovisual output interface, a
`consolidated output video stream comprising at least a
`portion of the remote video stream and a consolidated
`
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`5
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`IPR2015-01054
`Patent 8,144,182 B2
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`output audio stream comprising at least the remote
`audio stream;
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`capturing a captured video stream with the video capture
`device;
`
`capturing a captured audio stream with the audio capture
`device;
`
`encoding the captured video stream and the captured
`audio stream to produce a series of data packets; and
`
`transmitting the series of data packets on the network
`interface
`for
`reception by
`the
`second video
`communication device.
`
`72. The method of claim 69, wherein the audiovisual
`input
`interface
`is a high-definition multimedia
`interface ("HDMI").
`
`73. The method of claim 69, wherein the audiovisual
`output
`interface
`is a high-definition multimedia
`interface ("HDMI").
`
`Ex. 1001, col. 37, l. 63–col. 38, l. 23, col. 38, ll. 39–43.
`
`
`II. DECISION ON THE MOTION FOR JOINDER
`
`A. Background
`
`The statutory provision governing joinder of inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(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.
`
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`IPR2015-01054
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`Section 315(b) of the statute generally bars institution of inter partes
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`review when the petition is filed more than one year after the petitioner (or
`
`petitioner’s real party in interest or privy) is served with a complaint alleging
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`infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). That
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`one-year time bar, however, does not apply to a request for joinder.
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`35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). This is an
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`important consideration here because Petitioner was served with a complaint
`
`asserting infringement of the ’182 patent more than one year before filing
`
`the Petition in this proceeding. See Joinder Motion 2, 4. As noted above,
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`the ’182 patent is involved in a district court proceeding in the U.S. District
`
`Court of the Eastern District of Texas captioned Biscotti Inc. v. Microsoft
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`Corp., Case No. 2:13-cv-01015-JRG (E.D. Tex.) (“District Court
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`Proceeding”). Joinder Motion 2; Pet. 5. Petitioner represents that the
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`complaint in the District Court Proceeding was served on Petitioner on
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`November 27, 2013. Joinder Motion 2. As noted above, the present Petition
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`was filed on April 17, 2015. Thus, absent joinder of this proceeding to the
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`’1459 IPR, institution based on the current Petition is barred under 35 U.S.C.
`
`§ 315(b).
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`Joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). As
`
`indicated in the legislative history, the Board will determine whether to grant
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`joinder on a case-by-case basis, taking into account the particular facts of
`
`each case. See 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of
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`Sen. Kyl) (when determining whether and when to allow joinder, the Office
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`may consider factors including the breadth or unusualness of the claim
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`scope, claim construction issues, and consent of the patent owner). When
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`IPR2015-01054
`Patent 8,144,182 B2
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`exercising that discretion, the Board is mindful that patent trial regulations,
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`including the rules for joinder, must be construed to secure the just, speedy,
`
`and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
`
`As the moving party, Petitioner has the burden of proof in establishing
`
`entitlement to the requested relief. 37 C.F.R. 42.20(c).
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`B. Analysis
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`Petitioner notes that we declined to institute inter partes review in the
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`’1459 IPR with respect to Petitioner’s challenge of claims 72 and 73 as
`
`obvious over Kenoyer1 and the HDMI Specification2. Pet. 1; see ’1459
`
`Institution Decision 18–21, 26. As Petitioner acknowledges, we denied
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`Petitioner’s challenge because the ’1459 Petition presented inadequate
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`evidence and explanation in support of Petitioner’s contentions about the
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`public availability of the HDMI Specification prior to the effective filing
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`date of the ’182 patent. ’1459 Petition 12–13; ’1459 Institution
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`Decision 18–21.
`
`In the present Petition, Petitioner explains that:
`
`Petitioner presents . . . the grounds it presented in the -
`01459 proceeding regarding claims 72 and 73; namely,
`that claims 72 and 73 would have been considered
`obvious based on Kenoyer in view of the HDMI
`Specification version 1.3a. In this petition, however,
`Petitioner also presents additional evidence establishing
`more than a reasonable likelihood that [the HDMI
`Specification] is prior art to the ’182 patent claims.
`Specifically, Petitioner presents Exhibit 1044,
`the
`Declaration of Steve Venuti, the now retired president of
`
`
`1 U.S. Patent No. 7,907,164 B2 (Exhibit 1006).
`2 Hitachi, Ltd. et al., High-Definition Multimedia Interface, Specification
`Version 1.3a (2006) (Exhibit 1007).
`
`
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`8
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`IPR2015-01054
`Patent 8,144,182 B2
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`HDMI Licensing LLC, an organization that developed
`and promoted the HDMI Specification.
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`Pet. 1–2. Petitioner asserts that it could not have provided this declaration of
`
`Mr. Venuti with the ’1459 petition “due to the policies of the sponsor of [the
`
`HDMI Specification] (i.e., HDMI Licensing, LLC).” Id. at 2 (citing
`
`Ex. 1044 ¶ 12).
`
`In support of its argument that we should join the present proceeding
`
`to the ’1459 IPR, Petitioner cites 37 C.F.R. § 42.1(b), which provides that
`
`our rules must be “construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” Joinder Motion 14. Petitioner asserts that
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`“[j]oining the -01054 and -01459 proceedings will ‘ensure the just, speedy,
`
`and inexpensive resolution’ of closely related claims of the ‘182 Patent in a
`
`single proceeding, with no discernible prejudice to [Patent Owner].” Id.
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`Petitioner argues that joining the instant proceeding to the ’1459 IPR would
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`further a principal objective of the America Invents Act by simplifying the
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`copending district court proceeding between the parties. Id. at 7. Petitioner
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`also argues that the ’1459 Institution Decision did not address the merits of
`
`the challenge based on the HDMI Specification, and that there is a strong
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`public interest in the Board addressing challenges to closely related claims
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`of the ’182 patent in one proceeding. Pet. 2–3 (citing Cisco, Inc. v.
`
`Crossroads Sys., Inc., Case IPR2014-01544, slip op. 13–14 (PTAB Apr. 3,
`
`2015) (Paper 9) (declining Patent Owner’s invitation to deny institution
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`under 35 U.S.C. § 325(d) where prosecution and reexaminations involved
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`similar art, but that art was not addressed substantively during prosecution
`
`and reexaminations); Kaiser Aluminum v. Constellium Rolled Products
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`Ravenswood, LLC, Case IPR2014-01002, slip op. 14–15 (PTAB Dec. 29,
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`2014) (Paper 11) (“[t]he permissive language of § 325(d) [] does not prohibit
`
`
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`9
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`IPR2015-01054
`Patent 8,144,182 B2
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`instituting inter partes review based on prior art previously presented to the
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`Office.”)); Joinder Motion 7–8.
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`Petitioner contends that joinder would not complicate unduly the
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`’1459 IPR. Joinder Motion 8–10. Petitioner asserts that this case involves
`
`the same parties, same patent, same cited references, and much of the same
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`evidence as the ’1459 IPR. Id. at 8. Petitioner contends that “the only
`
`substantive difference between the record in IPR2014-01459 and IPR2015-
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`01054 is that the latter proffers additional evidence that the HDMI
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`Specification (Ex. 1007) is prior art.” Id.
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`Petitioner argues that joinder should not delay final determination in
`
`the ’1459 IPR. Id. at 11–12. Petitioner contends that the claim challenge
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`advanced presents straightforward issues. Id. at 11. Petitioner notes that,
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`when it filed the Joinder Motion on April 17, 2015, there remained nearly
`
`two months before Due Date 1 of the ’1459 IPR, as well as over six months
`
`before Due Dates 6 and 7 of the ’1459 IPR. Id. at 11. Additionally, the
`
`Joinder Motion notes that Petitioner was willing to extend Due Date 1 of the
`
`’1459 IPR. Id.
`
`Petitioner contends that instituting and joining would not prejudice
`
`Patent Owner. Joinder Motion 10–11, 14–15. In support of this argument,
`
`Petitioner notes that Patent Owner “has, since the petition in the -01459
`
`proceeding, been aware of the basis of Petitioner’s challenge (i.e., Kenoyer
`
`in view of the HDMI Specification v1.3a).” Id. at 10. Petitioner also asserts
`
`that its willingness to extend the schedule avoids prejudice to Patent Owner.
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`Id. at 11. Additionally, Petitioner asserts that “[j]oinder also will not affect
`
`Patent Owner’s ability to enforce its patent; it has agreed to stay the district
`
`court litigation.” Id. at 15. Petitioner asserts that if we deny joinder,
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`10
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`IPR2015-01054
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`Petitioner would suffer prejudice by incurring higher costs and additional
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`delays because Petitioner would need to litigate the challenged claims in
`
`district court. Id. at 11.
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`Petitioner asserts that this case resembles prior cases where the Board
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`has granted joinder, not cases where the Board has denied joinder. Joinder
`
`Motion 12–14. Petitioner argues that this case does not resemble cases
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`“where the Board has noted the risk of ‘petitioners [waiting] to unveil
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`strategically their best prior art and arguments in serial petitions.’” Id. at 13
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`(citing Conopco, Inc. v. Procter & Gamble Co., Case IPR2014-00628, slip
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`op. 5 (PTAB Mar. 20, 2015) (Paper 23)). Instead, Petitioner argues that this
`
`case resembles Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-
`
`00022, in which it was deemed that a later-filed petition addressed an
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`“oversight” in an earlier-filed petition. Id. at 12–13; Ariosa Diagnostics v.
`
`Isis Innovation Ltd., Case IPR2012-00022, slip op. 6–7 (PTAB Oct. 31,
`
`2013) (Paper 104).
`
`Patent Owner contends that the present Petition is a “second bite[] at
`
`the apple” using the ’1459 Institution Decision to remedy the deficiency in
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`Petitioner’s prior challenge. Opp. to Joinder 1 (citing Butamax Advanced
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`Biofuels LLC v. Gevo, Inc., Case IPR2014-00581, slip op. 13 (PTAB
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`Oct. 14, 2014) (Paper 8)); Prelim. Resp. 1–2. Patent Owner argues that the
`
`present case resembles a number of cases where the Board denied institution
`
`of petitions directed at addressing deficiencies in prior petitions. Opp. to
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`Joinder 12–14; Prelim. Resp. 12–15.
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`Patent Owner argues that joinder would complicate unduly the
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`’1459 IPR. Opp. to Joinder 6–8; Prelim. Resp. 6–8. Patent Owner argues
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`that joinder would add numerous issues and extensive briefing and evidence.
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`11
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`IPR2015-01054
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`Id. Patent Owner notes that joinder would add an obviousness challenge and
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`all of the issues that apply to obviousness challenges. Opp. to Joinder 8;
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`Prelim. Resp. 7. Patent Owner also notes that joinder, which would
`
`introduce the HDMI Specification into the ’1459 IPR, adds a dispute
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`regarding the public accessibility of the HDMI Specification. Opp. to
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`Joinder 8; Prelim. Resp. 7. Patent Owner further notes that joinder would
`
`add a new declarant (Mr. Venuti) that Patent Owner would have to depose.
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`Opp. to Joinder 8; Prelim. Resp. 7.
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`Patent Owner argues that joinder would also delay the ’1459 IPR and
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`prejudice Patent Owner. Opp. to Joinder 9–12; Prelim. Resp. 8–10. Patent
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`Owner notes that it has already deposed Petitioner’s declarant, Dr. Houh,
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`and filed its Patent Owner Response in the ’1459 IPR. Prelim. Resp. 8–9.
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`Patent Owner asserts that joinder would require Patent Owner to depose Dr.
`
`Houh again, and to file another set of responses. Id. at 9. Patent Owner
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`argues that joinder is not workable, given the upcoming dates for the oral
`
`argument and the final written decision in the ’1459 IPR. Id.
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`Patent Owner contends that joinder would prejudice it by forcing it to
`
`defend against challenges that would otherwise be barred under 35 U.S.C.
`
`§ 315(b). Prelim. Resp. 8. Patent Owner argues that joinder would subject
`
`it to either nearly impossible deadlines or delays in resolution of the
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`’1459 IPR, delaying relief on Patent Owner’s infringement claims. Id. at 9.
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`Regarding Petitioner’s assertion that Patent Owner agreed to stay the
`
`copending district court proceeding, Patent Owner asserts that it did so
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`without knowledge that Petitioner subsequently would file the present
`
`Petition and Joinder Motion. Id. Patent Owner also argues that joinder
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`would give Petitioner “an unfair advantage by allowing it to use [Patent
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`12
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`Owner’s] Preliminary Responses, its Patent Owner Responses, its already-
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`conducted deposition of Dr. Houh, and the Board’s institution decisions as
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`blueprints for [the present Petition].” Id. at 9–10.
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`Patent Owner further asserts that Petitioner’s arguments about the
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`district court having to address the validity of the challenged claims do not
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`warrant joinder. Opp. to Joinder 5–6. With respect to Petitioner’s citation
`
`of Rule 42.1(b), under which the rules must be “construed to secure the just,
`
`speedy, and inexpensive resolution of every proceeding,” Patent Owner
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`argues that “37 C.F.R. § 42.1(b) pertains to the just, speedy, and inexpensive
`
`resolution of proceedings before the Patent Trial and Appeal Board, and not
`
`to the just, speedy, and inexpensive resolution of the parties’ disputes
`
`generally.’” Id. at 5 (citing ZTE Corp. v. ContentGuard Holdings Inc., Case
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`IPR2013-00454, slip op. 7 (PTAB Sept. 25, 2013) (Paper 12)). Patent
`
`Owner argues that contrary to Petitioner’s argument that there is a strong
`
`public interest in the Board adjudicating challenges of closely related claims
`
`in one proceeding, our rules expressly contemplate instituting proceedings
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`on some claims of a patent, while denying institution of other claims,
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`irrespective of how “closely related” the claims are. Id. (citing 37 C.F.R.
`
`§ 42.108(a)). Additionally, Patent Owner argues that having to litigate the
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`validity of the challenged claims at the district court does not prejudice
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`Petitioner. Id. at 5–6. Because we previously declined to institute inter
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`partes review on claims 8, 27, 35, and 40, and because Petitioner does not
`
`challenge those claims before us now, Patent Owner argues that Petitioner
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`will have to litigate the validity of those claims at the district court,
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`regardless of whether we grant joinder here. Id. at 5–6, 12.
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`Regarding Petitioner’s assertion that the new evidence it submits was
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`unavailable when the ’1459 Petition was submitted, Patent Owner argues
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`that Petitioner “offers no explanation why it needed a declaration from Mr.
`
`Venuti specifically.” Prelim. Resp. 11. Patent Owner further asserts that
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`Petitioner says nothing about prior availability of Exhibit 1045, which
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`Petitioner submits in connection with Mr. Venuti’s Declaration to bolster its
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`contention that the HDMI Specification was publicly accessible. Id.
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`Additionally, Patent Owner argues that Petitioner “exercised no diligence in
`
`attempting to secure the additional information regarding the alleged public
`
`availability of the [HDMI Specification].” Id. In support of this contention,
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`Patent Owner notes that “[i]n connection with [Petitioner’s] attempt to
`
`submit this information as supplemental information in the [’1457 IPR],
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`Microsoft stated that it merely ‘attempted to contact HDMI Licensing, LLC
`
`prior to submitting its petition but [it] did not speak with anyone with the
`
`organization at that time.’” Id. at 11–12 (citing ’1457 IPR, Paper 14, 6 n. 4).
`
`Patent Owner also argues that the cases on which Petitioner relies are
`
`inapplicable. Opp. to Joinder 8–9; Prelim. Resp. 15. For example, Patent
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`Owner contends that, unlike Ariosa, the deficiencies in the ’1459 Petition
`
`did not stem from an “oversight.” Opp. to Joinder 9. Instead, Patent Owner
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`argues, “Petitioner deliberately selected its arguments and evidence the first
`
`time, and now that it has lost, it went back to the well to come up with
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`something new.” Id.
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`In view of the circumstances of this case, we are not persuaded that
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`Petitioner has established sufficiently that joinder to the ’1459 IPR is
`
`warranted. Granting joinder would complicate the substantive issues in the
`
`’1459 IPR significantly more than Petitioner suggests. Contrary to
`
`
`
`14
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`
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`IPR2015-01054
`Patent 8,144,182 B2
`
`Petitioner’s suggestion, joinder would do more than simply add evidence
`
`that the HDMI Specification is prior art. See Joinder Motion 8. Joinder
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`would add to the ’1459 IPR an obviousness challenge to claims 72 and 73,
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`thereby adding the numerous issues that any obviousness analysis entails.
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`Additionally, contrary to Petitioner’s suggestion, the challenge raised in the
`
`present Petition does not rely on the same references as the pending
`
`challenges in the ’1459 IPR. See Joinder Motion 8 (“The -01054 proceeding
`
`involves . . . the same prior art . . . as the -01459 proceeding.”). Unlike the
`
`challenge raised in the present Petition, no pending claim challenge in the
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`’1459 IPR relies on the HDMI Specification. See ’1459 Institution
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`Decision 27. Indeed, joinder would add a significant dispute regarding the
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`public accessibility of the HDMI Specification.
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`Additionally, granting joinder would add significant procedural
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`complications and delay resolution of the ’1459 IPR. In the ’1459 IPR,
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`Patent Owner has filed its Response, and the date for the oral hearing is only
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`weeks away. Granting joinder would require adjusting the schedule to allow
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`Patent Owner discovery on the issues presented by the challenge in the
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`present Petition. Petitioner does not offer a practical way to accommodate
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`the additional discovery and briefing without rushing significantly all
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`involved or delaying the final written decision beyond its current due date of
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`March 19, 2016.
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`Furthermore, Petitioner’s assertions demonstrate that the present
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`Petition is directed at addressing shortcomings in the ’1459 Petition that we
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`identified in the ’1459 Institution Decision. See, e.g., Pet. 1–2. Petitioner
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`asserts that it needs to do so because Mr. Venuti’s declaration could not have
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`been provided with the ’1459 Petition. See, e.g., id. at 2; Joinder Motion 5,
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`15
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`IPR2015-01054
`Patent 8,144,182 B2
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`13–14. Assuming, arguendo, Mr. Venuti’s declaration was unavailable
`
`when the ’1459 Petition was filed, this does not persuade us that we should
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`grant Petitioner a second bite at the apple, at the expense of significantly
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`complicating and extending the ’1459 IPR. Regardless of whether Petitioner
`
`could have acquired Mr. Venuti’s declaration when it prepared the ’1459
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`Petition, Petitioner had control of how it gathered and presented other
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`evidence regarding the public accessibility of the HDMI Specification. With
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`respect to the evidence that the ’1459 Petition did present, Petitioner gave
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`virtually no explanation of the significance of the evidence, providing only
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`the conclusory assertion that “[t]he public availability and publication of the
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`HDMI Specification is shown by numerous sources,” after which Petitioner
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`listed certain evidence without any further explanation. ’1459 Pet. 12–13.
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`We do not agree with Petitioner’s characterization of this case as akin to
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`Ariosa, where it was deemed that a flaw in an earlier petition resulted from a
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`“minor oversight.” See Ariosa Diagnostics v. Isis Innovation Ltd., Case
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`IPR2012-00022, slip op. 6–7 (PTAB Oct. 31, 2013) (Paper 104); Joinder
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`Motion 12–13.
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`In view of the particular facts and issues before us in the instant case,
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`we exercise our discretion to deny Petitioner’s Joinder Motion.
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`
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`III. DECISION ON THE PETITION
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`Institution of inter partes review is barred when the petition is filed
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`more than one year after the petitioner is served with a complaint alleging
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`infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The
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`present Petition was filed more than one year after Petitioner was served
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`with a complaint alleging infringement of the ’182 patent. See Joinder
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`
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`16
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`IPR2015-01054
`Patent 8,144,182 B2
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`Motion 2, 4. Accordingly, in view of our decision to deny Petitioner’s
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`Joinder Motion, we deny the present Petition because it was not filed within
`
`the time limits imposed under 35 U.S.C. § 315(b).
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`In consideration of the foregoing, it is hereby:
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`IV. ORDER
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`ORDERED that Petitioner’s Motion for Joinder is denied;
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`FURTHER ORDERED that the Petition is denied and no trial is
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`instituted.
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`17
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`IPR2015-01054
`Patent 8,144,182 B2
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`PETITIONER:
`
`Joseph Micallef
`Jeffery Kushan
`Douglas Lewis
`Sidley Austin LLP
`jmicallef@sidley.com
`jkushan@sidley.com
`dilewis@sidley.com
`
`PATENT OWNER:
`
`Amanda Hollis
`Kirkland & Ellis LLP
`amanda.hollis@kirkland.com
`
`
`
`18
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