Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: December 28, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS
`NETWORK SERVICES INC., VERIZON SERVICES CORP., TIME
`WARNER CABLE INC., ICONTROL NETWORKS, INC., and
`COXCOM, LLC
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01486
`Patent 6,549,130 B1
`____________
`
`
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`
`
`571-272-7822
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`
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`
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` Paper 10
`
`
` Entered: December 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS
`NETWORK SERVICES INC., VERIZON SERVICES CORP., TIME
`WARNER CABLE INC., ICONTROL NETWORKS, INC., and
`COXCOM, LLC
`Petitioner,
`
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01486
`Patent 6,549,130 B1
`____________
`
`
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-01486
`Patent 6,549,130 B1
`
`
`I.
`INTRODUCTION
`Petitioner, Terremark North America LLC, Verizon Business
`Network Services Inc., Verizon Services Corp., Time Warner Cable Inc.,
`iControl Networks, Inc., and Coxcom, LLC, filed a Petition requesting an
`inter partes review of claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145, and 149
`of U.S. Patent No. 6,549,130 B1 (Ex. 1001, “the ’130 patent”). Paper 1
`(“Pet.”). In addition, on August 5, 2015, Petitioner filed a Motion to
`Recognize June 23, 2015, as the filing date. Paper 6 (“Motion”). On August
`19, 2015, in response to Petitioner’s Motion, Patent Owner, Joao Control &
`Monitoring Systems, LLC, filed Patent Owner’s Opposition to Motion to
`Recognize June 23 as the filing date. Paper 7. Patent Owner filed a
`Preliminary Response. Paper 9 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`be instituted “unless . . . the information presented in the petition . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.”
`For the reasons set forth below, we determine that the Petition was not
`filed timely within the statutory period of 35 U.S.C. § 315(b). We, thus,
`deny inter partes review of the ’130 patent.
`
`A. Identifying the Petitioner
`Petitioner presents various lists of petitioning parties throughout the
`Petition. The Petition lists Terremark North America LLC, Verizon
`Business Network Services Inc., Verizon Services Corp., Time Warner
`Cable Inc., iControl Networks, Inc., and Coxcom, LLC in the caption of the
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`2
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`IPR2015-01486
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`Petition and in the “[r]eal party-in-interest” section. Pet. 1. Five entities,
`CoxCom, LLC, Terremark North America LLC, Verizon Communications
`Inc., Time Warner Cable, Inc., and iControl Networks, Inc. are identified in
`the Petition as Petitioners in the “[l]ead and back-up counsel” section. Pet.
`4–5.
`
`Verizon Communications Inc., Verizon Corporate Resources Group
`LLC, and Verizon Data Services LLC are identified in the Petition as real
`parties-in-interest. Pet. 2. Petitioner notes that Verizon Communications
`Inc. has more than 500 affiliated entities and states that “each of these
`entities agrees to be estopped under the provisions of 35 U.S.C. §§ 315
`and/or 325 as a result of any final written decision in the requested IPR to
`the same extent that the Petitioners are estopped.” On this record, we
`construe any mismatch between the named Verizon entities to be a
`typographical error.
`Because Petitioner identifies five entities, CoxCom, LLC, Terremark
`North America LLC, Verizon Communications Inc., Time Warner Cable,
`Inc., and iControl Networks, Inc. as Petitioners in the “[l]ead and back-up
`counsel” section (id.), and, as stated supra, any mismatch between the
`named Verizon entities (e.g., Verizon Communications Inc., Verizon
`Business Network Services, and Verizon Services Corp.) is a typographical
`error, we construe any mismatch between the caption of the Petition, the
`“[r]eal party-in-interest” section, and the “[l]ead and back-up counsel”
`section to be a typographical error.
`We, thus, identify Petitioner as Terremark North America LLC,
`Verizon Communications Inc., Verizon Services Corp., Verizon Business
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`IPR2015-01486
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`Network Services, Time Warner Cable Inc., iControl Networks, Inc., and
`Coxcom, LLC.
`
`B. Related Matters
`Petitioner indicates that the ’130 patent has been asserted in the
`following proceedings: (1) Joao v. LifeShield, Inc., No. 2-15-cv-02772
`(E.D. Pa.); (2) Joao v. Slomin’s Inc., No. 2-14-cv-02598 (E.D.N.Y.);
`(3) Joao v. Cox Communications, Inc., No. 1-14-cv-00520 (D. Del.);
`(4) Joao v. Volkswagen Group of America, Inc., No. 1-14-cv-00517 (D.
`Del.); (5) Joao v. DISH Network Corp., No. 1-14-cv-00522 (D. Del.);
`(6) Joao v. Cablevision Systems Corp., No 1-14-cv-00518 (D. Del.);
`(7) Joao v. Consolidated Edison, Inc., No. 1-14-cv-00519 (D. Del.); (8) Joao
`v. Verizon Communications, Inc., No. 1-14-cv-00525 (D. Del.); (9) Joao v.
`Time Warner Cable, Inc., No. 1-14-cv-00524 (D. Del.); (10) Joao v.
`DirecTV, No. 1-14-cv-00521 (D. Del.); (11) Joao v. Nissan North America,
`Inc., No. 1-14-cv-00523 (D. Del.); (12) Alarm.com Inc. v. Joao, No. 1-14-
`cv-00284 (D. Del.); (13) Joao v. Protect America, Inc., No. 1-14-cv-00134
`(W.D. Tex.); (14) Joao v. FrontPoint Security Solutions LLC, No. 1-13-cv-
`01760 (D. Del.); (15) Joao v. Chrysler Corp., No. 4-13-cv-13957 (E.D.
`Mich.); (16) Joao v. Ford Motor Co., No. 4-13-cv-13615 (E.D. Mich.);
`(17) Joao v. Mazda Motor of America Inc., No. 1-13-cv-00728 (D. Del.);
`(18) Joao v. Mitsubishi Motors North America Inc., No. 1-13-cv-00614 (D.
`Del.); (19) Joao v. Lowe’s Cos., Inc., No. 5-13-cv-00056 (W.D.N.C.);
`(20) Joao v. Jaguar Land Rover North America LLC, No. 1-13-cv-00507 (D.
`Del.); (21) Joao v. Vivint Inc., No. 1-13-cv-00508 (D. Del.); (22) Joao v.
`
`4
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`IPR2015-01486
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`Chrysler Corp., No. 1-13-cv-00053 (S.D.N.Y.); (23) Joao v. Ford Motor
`Co., No. 1-12-cv-01479 (D. Del.); (24) Joao v. City of Yonkers, No. 1-12-cv-
`07734 (S.D.N.Y.); (25) Joao v. Ford Motor Co., No. 4-12-cv-14004 (E.D.
`Mich.); (26) Joao v. Hyundai Motor America, No. 8-12-cv-00007 (C.D.
`Cal.); (27) Joao v. Ford Motor Co., No. 2-12-cv-00033 (C.D. Cal.);
`(28) Joao of California, LLC v. Sling Media, Inc., No. 3-11-cv-06277 (C.D.
`Cal.); (29) Xanboo Inc. v. Joao of California, No. 8-11-cv-00604 (C.D.
`Cal.); (30) Joao of California, LLC v. ACTI Corp., No. 8-10-cv-01909 (C.D.
`Cal.); and (31) Joao v. Cenuco, Inc., No. 7-05-cv-01037 (S.D.N.Y.). Pet. 2–
`4; Paper 5.
`According to Patent Owner, the ’130 patent also is the subject of four
`ex parte reexaminations, Reexamination Control Nos.: (1) 90/013,303;
`(2) 90/013,301; (3) 90/013,302; and (4) 90/013,300. Paper 5, 5. Petitioner
`concurrently filed petitions requesting an inter partes review of the
`following U.S. Patent Nos.: (1) 6,549,130 (Case IPR2015-01509);
`(2) 6,542,077 B2 (Case IPR2015-01466); (3) 6,587,046 (Case IPR2015-
`01477); (4) 7,277,010 (Case IPR2015-01484); (5) 6,542,076 (Case
`IPR2015-01478); (6) 7,397,363 (Case IPR2015-01482); (7) 7,397,363 (Case
`IPR2015-01485); and (8) 6,542,076 (Case IPR2015-01508). Id. at 4–5.
`
`II. ANALYSIS
`Because at least one of the petitioning parties was served with a
`complaint on June 23, 2014 (Exs. 2002–2005), the statutory bar date for
`IPR2015-01486 is June 23, 2015. 35 U.S.C. § 315(b); 37 C.F.R.
`§ 42.101(b). Petitioner, however, was accorded a filing date of June 24,
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`2015. Paper 3. Petitioner filed, served, and paid the fee for IPR2015-01486
`on June 24, 2015, which is one day after the statutory bar date. Motion 2–5
`(citing Ex. 1 ¶¶ 1–12).1
`Petitioner contends that it is not barred or estopped from requesting an
`inter partes review of the ’130 patent, thus, satisfying the requirements of
`§ 315(b) for the following five reasons: (1) the Patent Review Processing
`System (“PRPS”) “was apparently malfunctioning” when Petitioner
`repeatedly attempted to upload documents the night of June 23, 2015; (2) the
`three petitions (i.e., IPR2015-01482, IPR2015-01485, and IPR2015-01486)
`were filed serially, beginning with IPR2015-01482, to avoid having to
`reload any previously submitted exhibits, which caused Petitioner to
`complete the filing of all three cases after June 23, 2015; (3) the Board has
`the authority, as demonstrated in past decisions, to recognize the filing date
`for this inter partes review as June 23, 2015; (4) there is no prejudice to
`Patent Owner because immediate remedial measures were taken right away
`by Petitioner; and (5) one of the petitioning parties, CoxCom, LLC, was not
`served with a complaint until August 18, 2014 and is, thus, not time barred
`
`1 Exhibits 1–4, filed by Petitioner with the Motion, do not comply with
`37 C.F.R. § 42.63(c), requiring all exhibits to be separately and uniquely
`numbered within the range of 1001–1999, or 37 C.F.R. § 42.63(d)(1)(ii),
`requiring exhibits not filed with the petition to include “the party’s name,
`followed by a unique exhibit number, the names of the parties, and the trial
`number.” Motion. Petitioner, instead, filed their motion, declarations, and
`all supporting exhibits together as the Motion. To avoid potential for further
`confusion, we treat the citations to Exhibits 1–4 as though Petitioner had
`identified and filed correct exhibits. We note that Petitioner’s non-
`compliance with these rules is moot in light of our denial of the Motion and
`the Petition.
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`IPR2015-01486
`Patent 6,549,130 B1
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`from filing a petition. Motion 2–9. We disagree that Petitioner is not time
`barred or estopped. We address Petitioner’s arguments in turn.
`
`A.
`
`Petitioner has not Shown that PRPS was “Apparently
`Malfunctioning”
`
`Petitions for inter partes review must be filed within one year after
`Petitioner was served with a complaint alleging infringement. 35 U.S.C.
`§ 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a
`filing date once (1) a petition has been filed; (2) payment has been made;
`and (3) the complete petition is served on the patent owner. 35 U.S.C.
`§ 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-
`statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit
`a party to file a motion to correct a “clerical or typographical mistake.”
`37 C.F.R. § 42.104(c). The burden of proof rests with the moving party,
`which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.
`It is undisputed that at least two of the petitioning parties were served
`with a complaint alleging infringement of the ’130 patent on June 23, 2014.
`Ex. 2001 ¶¶ 1–4; Exs. 2002–2005. On June 23, 2015, Petitioner failed to
`comply with the statutory requirements of 35 U.S.C. § 312(a) by not paying
`the required fee and failing to meet the requirements of 37 C.F.R.
`§ 42.106(a) by not filing and serving the Petition and its supporting
`evidence. Motion 2–5 (citing Ex. 1 ¶¶ 1–12). On June 24, 2015, one day
`after the one year statutory deadline, Petitioner completed filing of the
`Petitions at issue. Id. at 3–5 (citing Ex. 1 ¶¶ 1–12).
`
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`IPR2015-01486
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`
`Petitioner alleges that the filings were one day late because of PRPS
`“apparently malfunctioning.” Motion 2–5. The burden of proof, as stated
`supra, rests with Petitioner. Petitioner has not shown persuasively how a
`series of screenshots illustrating a “pending” status (id. at 3–4 (citing Ex. 1
`¶¶ 1–12)) demonstrates that PRPS was “apparently malfunctioning.” Put
`another way, “pending” is a normal status message that shows the document
`is being uploaded. In addition, there are other possible reasons, besides
`PRPS allegedly malfunctioning, why Petitioner was unable to upload their
`documents at the required time such as Petitioner’s network malfunctioning,
`Petitioner’s computer malfunctioning, etc. Moreover, our internal
`investigation confirms that PRPS access on June 23, 2015 was functioning
`properly.
`Even if Petitioner was able to show that PRPS was malfunctioning
`with respect to uploading documents, which it did not, Petitioner has not
`shown persuasively why it was unable to serve to Patent Owner and why it
`did not pay the filing fee on time. In addition, an alleged PRPS malfunction
`when filing IPR2015-01482 would not prevent having one employee, using
`a different computer, from uploading the IPR2015-01486 Petition and
`supporting documents while another employee troubleshot the alleged PRPS
`malfunction with filing IPR2015-01482.
`Petitioner, thus, has not shown persuasively how a series of screen
`shots and a statement that PRPS was “apparently malfunctioning” justifies
`the relief requested.
`
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`IPR2015-01486
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`
`Petitioner’s Serial Filings did not Prevent Timely Filing
`B.
`Although Petitioner alleges the three petitions (i.e., IPR2015-01482,
`IPR2015-01485, and IPR2015-01486) were filed in series “to avoid having
`to reload any previously submitted exhibits” (Motion 4 (citing Ex. 1 ¶ 7)),
`this argument is not persuasive because PRPS requires separate uploading
`and filing of documents for each petition. Petitioner’s filings additionally
`undermine its position because Petitioner did not cross-reference earlier-
`filed documents in later-filed petitions, but instead, re-filed numerous
`duplicative exhibits in each of the three petitions at issue. See, e.g., Ex.
`1003 in IPR2015-01482, -01485, and -01486; Ex. 1004 in IPR2015-01482, -
`01485, and 01486. Thus, Petitioner’s argument that “the second . . . and
`third petition . . . could not be filed until the first filing was completed”
`(Motion 4) is not persuasive.
`Petitioner also alleges but for PRPS malfunctioning, their counsel
`would have “serve[d] the three petitions and accompanying documents.”
`Ex. 1 ¶ 4. Service and filing, however, are independent events, as
`demonstrated by the fact that Petitioner printed the documents for service
`before completing the electronic filing. Id. ¶ 3. Petitioner acknowledges
`that there was more than one employee in the office at the time of filing. Id.
`¶ 4.
`
`Petitioner, thus, has not shown persuasively how the combination of
`serial filings, a series of screen shots, and a statement that PRPS was
`apparently malfunctioning justifies the relief requested.
`
`9
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`IPR2015-01486
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`
`The Board’s Prior Decisions are Distinguishable
`C.
`Petitioner cites a number of non-precedential Board decisions to
`support its arguments. These cases, however, are distinguishable because
`none of them addressed the combination of a failure to file, serve, and pay
`the required fee as set out in our Rules and governing statute.
`In E*Trade Financial Corp. v. Droplets, Inc., Case IPR2015-00470
`(PTAB Apr. 20, 2015) (Paper 17), the Board addressed a Motion to Change
`the Filing Date. In E*Trade, the petitioner received a notice from PRPS that
`the system was “currently down” when the petitioner attempted to file the
`petition. Moreover, in E*Trade, a Board employee, acting with the authority
`of the Board, instructed the petitioner to email its petition and supporting
`documents as an attachment. The petitioner in E*Trade paid timely the
`filing fee, and served timely the petition on the patent owner. The petitioner
`in E*Trade refiled the petition and supporting documents when PRPS
`functioned properly. The Board granted the motion because all three filing
`requirements were met; in particular, the documents were emailed timely,
`fees were paid timely, and the documents were served timely. E*Trade, slip
`op. at 3–4.
`Regarding ConMed Corp. v. Bonutti Skeletel Innovations LLC, Case
`IPR2013-00624 (PTAB Mar. 14, 2014) (Paper 22), the Board addressed a
`Motion to Correct Filing Date. The petitioner in ConMed paid timely the
`filing fee, and served timely the petition on the patent owner. The petitioner
`in ConMed filed the petition and supporting documents, but because the
`petitioner failed to click “Submit” when filing those documents, the
`proceeding was accorded a filing date after the statutory bar. The petitioner
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`in ConMed did not hit the submit button until several days after the statutory
`bar date when it refiled exhibits with the corrected labels. The Board,
`however, granted the motion primarily because all three filing requirements
`were met; in particular, the documents were uploaded and filed timely but
`for an omission to click a “Submit” button, fees were paid timely, and the
`documents were served timely. ConMed, slip op. at 2–6.
`As for Oracle Corp. v. Maz Encryption Techs. LLC, Case IPR2014-
`00472 (PTAB May 1, 2014) (Paper 9), the Board addressed a Motion to
`Recognize March 1, 2014 as Filing Date. The petitioner in Oracle paid
`timely the filing fee, and served timely the petition on the patent owner. The
`petitioner in Oracle was unable to timely file the petition because PRPS was
`malfunctioning. The Board, however, granted the motion because its
`“internal investigation confirm[ed] that PRPS access . . . was indeed
`compromised.” Oracle, slip op. at 2.
`In 2Wire, Inc. v. TQ Delta, LLC, Case IPR2015-00239 (PTAB Jan.
`15, 2015) (Paper 10), the Board addressed a Motion to Correct Filing Date.
`In 2Wire, counsel pressed the “submit” button after midnight. The Board,
`however, granted the motion because all three filing requirements were met;
`in particular, the documents were uploaded timely, fees were paid timely,
`and the documents were served timely. 2Wire, slip op. at 4–8.
`Regarding Micron Tech., Inc. v. e.Digital Corp., Case IPR2015-00519
`(PTAB Mar. 24, 2015) (Paper 14), the Board addressed a Motion to Deny a
`Petition a Filing Date based on Improper Service. The petitioner in Micron
`filed timely the petition, and paid timely the filing fee. In addition, in
`Micron, the petitioner served a copy of the petition and supporting
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`documents on the patent owner’s litigation counsel via email more than two
`weeks prior to expiration of the statutory bar date, and email correspondence
`between the parties indicated that the patent owner’s litigation counsel was
`in receipt of the documents prior to the statutory bar date. The petitioner in
`Micron failed to timely serve the patent owner at the correspondence address
`of record. The Board, however, denied the patent owner’s motion because
`the patent owner, through its litigation counsel, actually received the petition
`prior to the one year statutory bar date. Micron, slip op. at 4–6.
`As for ABB Inc. v. Roy-G-Biv Corp., Case IPR2013-00063 (PTAB
`Jan. 16, 2013) (Paper 21), the Board addressed a Motion to Correct Petition.
`The petitioner in ABB served timely the petition, and paid timely the filing
`fee. The petitioner in ABB failed to timely file the correct exhibits. The
`Board, however, granted the motion based on a finding that although the
`petitioner filed the wrong exhibits, the petitioner served timely the correct
`exhibits on the patent owner. ABB, slip op. at 2, 5–11.
`In Schott Gemtron Corp. v. SSW Holding Co. Inc., Case IPR2014-
`00367 (PTAB Sept. 22, 2014) (Paper 30), the Board addressed a Motion to
`Correct Filing Date. The petitioner in Schott served timely the petition, and
`paid timely the filing fee. In Schott, the petitioner filed timely an incorrect
`exhibit. The Board, however, granted the motion because the petitioner
`served timely the petition and supporting documents, which the patent owner
`acknowledged during a conference call. Schott, slip op. at 2–4.
`Regarding Syntroleum Corp. v. Neste Oil OYJ, Case IPR2013-00178
`(PTAB July 22, 2013) (Paper 21), the Board addressed a Motion to Correct
`Petition. The petitioner in Syntroleum paid timely the filing fee. In
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`Syntroleum, the petitioner filed timely and served timely the petition, but
`filed an incorrect reference and served the same incorrect reference. The
`petitioner in Syntroleum intended to file a published European application,
`but instead, the petitioner filed inadvertently and served inadvertently a
`patent that issued from the publication. The Board, however, granted the
`motion because both the petitioner’s original petition and declaration cited
`the published European application. Syntroleum, slip op. at 2–6.
`Thus, as described above, all of these cases are distinguishable from
`the facts currently before us. Petitioner has not directed us to any case
`where the petitioning party failed to file, serve, and pay the required fee by
`the statutory bar date.
`
`D.
`
`Petitioner’s Arguments Pertaining to a Prejudice to Patent Owner is
`Misplaced
`
`Petitioner contends there is no prejudice to Patent Owner because
`immediate remedial measures were taken right away by Petitioner. Motion
`9. Petitioner’s argument, however, is misplaced because the standard for
`permitting a late filing is not dependent solely on whether there was
`prejudice to Patent Owner.
`We, therefore, decline to grant the relief requested.
`
`E.
`
`The Presence of CoxCom, LLC does not Remove the Statutory Bar
`
`Petitioner contends that one of the petitioning parties, CoxCom, LLC,
`was not served with a complaint until August 18, 2014, and is, thus, not time
`barred from filing the Petition. Motion 9. We disagree that Petitioner is not
`time barred.
`
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`
`“An inter partes review may not be instituted if the petition requesting
`the proceeding is filed more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent” (emphasis added). 35 U.S.C.
`§ 315(b).
`Petitioner acknowledges that Terremark North America LLC, Verizon
`Business Network Services Inc., Verizon Services Corp., Time Warner
`Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon
`Communications Inc., Verizon Corporate Resources Group, LLC, and
`Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner
`also acknowledges that Terremark North America LLC, Verizon
`Communications Inc., and Time Warner Cable Inc. were served with a
`complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is
`precluded for at least the reasons that Terremark North America LLC and
`Verizon Communications Inc. are real parties-in-interest and were served
`with a complaint on June 23, 2014. 35 U.S.C. § 315(b).
`CoxCom, LLC, is precluded additionally from filing the Petition for
`other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc.,
`Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board
`addressed a Motion of Adverse Judgement against PNC. In PNC Bank,
`PNC, one of three petitioners, violated 35 U.S.C. § 325(a)(1) by filing the
`petition for covered business method review (“CBM”) after it had filed a
`district court suit challenging the validity of the patent challenged in the
`CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved
`for entry of adverse judgment against it in the CBM proceeding and
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`IPR2015-01486
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`contended that other petitioners could proceed with the petition without
`further involvement by PNC. The Board denied institution on the CBM
`petition and dismissed the motion because PNC already had exerted
`substantial control over the case, and granting PNC’s request for adverse
`judgment would not obviate the control that PNC already had exerted. Id.,
`slip op. at 4.
`Similarly, Terremark North America LLC and the named Verizon
`entities in this case already have exerted substantial control over the case by
`participating in filing the Petition, appointing counsel, etc. The presence of
`CoxCom, LLC, therefore, does not remove the statutory bar.
`
`III. CONCLUSION
`For the foregoing reasons, the Petition falls outside the one-year time
`bar set forth in 35 U.S.C. § 315(b). We, thus, deny inter partes review of
`the ’130 patent.
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that the Petition is denied as to all challenged claims and
`no trial is instituted.
`
`
`
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`PETITIONER:
`Vaibhav P. Kadaba
`D. Clay Holloway
`Kilpatrick Townsend & Stockton LLP
`wkadaba@kilpatricktownsend.com
`cholloway@kilpatricktownsend.com
`
`Frank C. Cimino, Jr.
`Megan S. Woodworth
`Venable LLP
`FCCimino@venable.com
`MSWoodworth@venable.com
`
`Jackson Ho
`K&L Gates LLP
`jackson.ho@klgates.com
`
`
`PATENT OWNER:
`Raymond Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`HENINGER GARRISON DAVIS, LLC
`rvazquez@hgdlawfirm.com
`
`
`16
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