Trials@uspto.gov
`571–272–7822
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`
`
`Paper 11
`Entered: March 6, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VMWARE, INC.,
`Petitioner,
`
`v.
`
`GOOD TECHNOLOGY SOFTWARE, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00031
`Patent 8,012,219 B2
`_______________
`
`
`
`Before BRYAN F. MOORE, PETER P. CHEN, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`I. INTRODUCTION
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`VMware, Inc. (“Petitioner”) filed a Petition (Paper 1; “Petition” or
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`“Pet.”) requesting inter partes review of claims 1, 9–11, 14–16, 18–19, and
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`23–24 of U.S. Patent No. 8,012,219 B2 (Ex. 1001; “the ’219 patent”). Good
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`Technology Software, Inc. (“Patent Owner”) filed a redacted Preliminary
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`Response to the Petition. Paper 8 (“Prelim. Resp.”). Patent Owner also filed
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`a confidential version of the Preliminary Response. Paper 9. For the
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`reasons set forth below, the Petition is not timely under 35 U.S.C. § 315(b).
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`Accordingly, the Petition is denied.
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`II. ANALYSIS
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`Patent Owner served a complaint (the “Complaint”) on AirWatch,
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`LLC (“AirWatch”) alleging infringement of the ’219 patent on November
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`15, 2012 (the “Lawsuit”). Pet. 3. Petitioner executed an agreement entitled
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`“Agreement and Plan of Merger” (the “Agreement”) on January 21, 2014.
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`Ex. 2002. Pursuant to the Agreement, Petitioner acquired AirWatch as its
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`wholly owned subsidiary in February 2014. Id.; Pet. 4. Petitioner admits
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`that AirWatch became its privy as a result of the acquisition, and, thus,
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`Petitioner and AirWatch have been in privity at least since February 2014.
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`IPR2015-00030,1 Paper 1, 3. Petitioner filed the Petition challenging the
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`’219 patent on October 6, 2014. Pet. 60.
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`Under 35 U.S.C. § 315(b), an inter partes review “may not be
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`instituted if the petition requesting the proceeding is filed more than 1 year
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`after the date on which the petitioner, real party in interest, or privy of the
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`petitioner is served with a complaint alleging infringement of the patent.”
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`1 IPR2015-00030 involves the same parties as this proceeding and identifies
`this proceeding as being related. IPR2015-00030, Paper 1, 1.
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`2
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`Petitioner admits that AirWatch is its privy. IPR2015-00030, Paper 1, 3
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`(“Petitioner VMware purchased VMware in February of 2014, and is now in
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`privity with AirWatch”); Prelim. Resp. 10, 42. Petitioner also admits that
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`AirWatch was served with the Complaint alleging infringement of the ’219
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`patent more than a year before the Petition was filed. Pet. 3. Petitioner
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`argues that the Petition is timely under § 315(b), because Petitioner was not
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`in privity with AirWatch at the time of service of the Complaint. Pet. 3–5.
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`
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`The analysis under § 315(b) is a “highly fact-dependent question” that
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`is evaluated consistent with “flexible and equitable considerations.” Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012).
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`The relevant factors for determining whether a party is a real party in interest
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`or a privy of the petitioner include, inter alia, the party’s relationship with
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`the petitioner and the nature and/or degree of the party’s involvement in the
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`filing of the petition. Id. at 48,760. Thus, at least some of the factors
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`analyzed in determining whether a party is a real party in interest or a privy
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`of the petitioner involve actions or events that may occur after service of a
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`complaint alleging infringement of the challenged patent. Petitioner cites to
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`several non-precedential decisions of the Board in inter partes review
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`proceedings, but does not identify any language in the statute or any other
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`persuasive rationale to support the argument that privity under § 315(b) is
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`determined only at the time of service of the complaint alleging infringement
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`of the challenged patent. See Pet. 3–5. Further, although the decision is not
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`binding precedent, in Synopsys, Inc. v. Mentor Graphics Corp., Case
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`IPR2012-00042, slip op. at 16 (Feb. 22, 2013) (Paper 16),2 the panel
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`2 Petitioner cites to Synopsys to support its argument that the Petition is
`timely under § 315(b). Pet. 4.
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`3
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`indicated that the relevant dates for § 315(b) include the filing date of the
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`petition, not just the date of service of the complaint alleging infringement of
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`the challenged patent. Prelim. Resp. 43.
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`Therefore, we do not conclude that privity under § 315(b) is
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`determined only at the time of service of a complaint alleging infringement
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`of the challenged patent. Because AirWatch, a privy of Petitioner, was
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`served with the Complaint alleging infringement of the ’219 patent more
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`than a year before the Petition challenging the ’219 patent was filed, we are
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`persuaded, on this record, that the Petition is not timely under § 315(b).
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`III. CONCLUSION
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`The Petition is denied because it was not filed within the time period
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`set forth in 35 U.S.C. § 315(b).
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
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`
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`ORDERED that the Petition is denied and no trial is instituted.
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`IPR2015-00031
`Patent 8,012,219 B2
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`PETITIONER:
`
`Matthew Kreeger
`Diek Van Nort
`Fahd Patel
`MORRISON & FOERSTER LLP
`MKreeger@mofo.com
`DVannort@mofo.com
`fpatel@mofo.com
`
`PATENT OWNER:
`
`Phillip Bennett
`EIP US LLP
`pbennett@eip.com
`
`Steven J. Pollinger
`MCKOOL SMITH, P.C.
`spollinger@McKoolSmith.com
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