U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`GAMELOFT, S.A.
`Petitioner,
`
`v.
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`ROTHSCHILD DIGITAL MEDIA INNOVATION, LLC
`Patent Owner.
`
`____________
`
`Case No. IPR2016-00472
`Patent 6,101,534
` ____________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(C), 37 C.F.R. §42.22 and 37 C.F.R. § 42.122(B)
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`Petitioner’s Motion for Joinder
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`GAMELOFT, S.A.
`Petitioner,
`
`v.
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`ROTHSCHILD DIGITAL MEDIA INNOVATION, LLC
`Patent Owner.
`
`____________
`
`Case No. IPR2016-00472
`Patent 6,101,534
` ____________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(C), 37 C.F.R. §42.22 and 37 C.F.R. § 42.122(B)
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`STATEMENT OF RELIEF REQUESTED
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`I.
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`Petitioner Gameloft, S.A. (“Petitioner”) hereby respectfully requests joinder
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`pursuant to 35 U.S.C. §315(c) and 37 C.F.R. 42.122(b) of the above-captioned
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`inter partes review with the pending inter partes review concerning the same
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`patent brought by Petitioner Sony Computer Entertainment America, LLC, Case
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`No. IPR2015-01364 (“Sony IPR”), which was instituted on December 15, 2015
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`(Paper 8). Joinder is appropriate because it will promote efficient resolution of the
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`validity of the U.S. Patent No. 6,101,534 (“the ‘534 Patent”), and it will not
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`prejudice the parties to the Sony IPR.
`This Motion for Joinder is timely filed under 37 C.F.R. §§ 42.22 and
`42.122(b) as it is submitted no later than one month after the December 15, 2015
`institution date of the Sony IPR.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`On June 9, 2015, petitioner in the Sony IPR requested inter partes
`review of claims 1, 6-9, and 21-24 of the ‘534 Patent. Sony IPR, Paper 3.
`2.
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`The Patent Owner, Rothschild Digital Media Innovation, LLC
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`(“Rothschild”), submitted a preliminary response on September 17, 2015. Id.,
`Paper 7.
`3.
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`On December 15, 2015 the Board issued a decision instituting trial on
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`claims 1, 6-9 and 21-24 in the Sony IPR. Specifically, the Board instituted inter
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`partes review on two requested grounds: (1) claims 1, 6-9, 21, 23 and 24 as
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`obvious over Mages in view of Batchelor; and, (2) claim 22 as obvious over
`Mages, Batchelor and Hughes.
`4.
`Today, Petitioner filed a Petition for inter partes review (“Joinder
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`Petition”) that only challenges the same claims under the same grounds as those
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`instituted in the Sony IPR. The claim charts and expert declaration in the Joinder
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`Petition are substantially, if not completely, identical to the claim charts contained
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`in the Sony IPR petition, with the exception that the grounds that were not
`instituted in the Sony IPR have been removed from the Joinder Petition.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A. LEGAL STANDARD
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`The Leahy-Smith America Invents Act (“AIA”) explicitly provides for
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`joinder of inter partes review (“IPR”) proceedings. The statutory provision
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`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c) that
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`reads as follows:
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`(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
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`response, determines warrants the institution of an inter
`partes review under section 314.
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`In this case of joinder, the Board has the discretion to adjust the time period for
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`issuing a final determination in an inter partes review. 35 U.S.C. § 316(a)(11); 37
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`C.F.R. § 42.100(c).
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`In exercising its discretion to grant joinder, the Board considers the impact
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`of substantive and procedural issues on the proceedings, as well as other
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`considerations, while being “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” See Dell Inc. v. Network-1 Security Solutions,
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`Inc., Case IPR2013-00385, Paper No. 17, July 29, 2013 at 3. The Board should
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`“also take into account the policy preference for joining a party that does not
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`present new issues that might complicate or delay an existing proceeding.” Id. at
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`10.1 Under this framework, joinder of the Joinder Petition with the Sony IPR is
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`1 Citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)
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`(“The Office anticipates that joinder will be allowed as of right - if an inter partes
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`review is instituted on the basis of a petition, for example, a party that files an
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`identical petition will be joined to that proceeding, and thus allowed to file its own
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`briefs and make its own arguments.”) (emphasis added).
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`appropriate.
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`“A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified.” Id. at 4. Each of these four factors is addressed in turn below.
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`B.
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`FACTOR (1): JOINDER IS APPROPRIATE IN ACCORDANCE
`WITH THE STATUTORY FRAMEWORK
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`The Board has authority under 35 U.S.C. § 315(c) to join a properly-filed
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`second inter partes review petition to an instituted inter partes review proceeding.
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`The present Motion for Joinder is timely filed under § 42.122(b).2
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`First, this request for joinder is timely. 37 C.F.R. § 42.122(b). Trial was
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`instituted on December 15, 2015 and the instant motion and the Joinder Petition
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`were filed on or before January 15, 2016. Therefore, this motion is made no later
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`one month after the date the trial was instituted in IPR2015-01364 as required by
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`37 C.F.R. § 42.122(b).
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`Not only is joinder procedurally proper, but it is also substantively
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`appropriate under the circumstances. First, the Joinder Petition involves the same
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`2 The complaint alleging infringement of the ‘534 Patent against Gameloft was
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`served on December 21, 2015.
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`patent, the same expert declaration evidence, the same claim construction
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`arguments and the same two instituted grounds as involved in the Sony IPR.3 The
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`claim charts in the Joinder Petition that accompanies the present Motion are
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`substantially identical to the claim charts contained in the Sony IPR petition for the
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`instituted grounds. Compare Joinder Petition at pp. 16-40 with Sony IPR Petition,
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`Paper 3, at 16-35 and 53-58.
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`The expert declaration accompanying the Joinder Petition is from the same
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`expert as that in the Sony IPR, and is substantially the same as the declaration
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`submitted with the petition in the Sony IPR, Ex. 1009. 4 Further, the only
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`differences between the Joinder Petition and the Sony IPR petition are that the
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`rejections from the Sony IPR that were not instituted have been removed and the
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`mandatory notices under 37 C.F.R. §42.8(A)(1). Therefore, the declaration, and
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`petition, present no new issues that would complicate or delay the proceeding.
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`As to the two grounds on which trial has been instituted in the Sony IPR, the
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`3 In addition, the same Exhibit numbering has been used as in the Sony IPR with
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`the exception that Exhibits 1006 and 1007 are not part of the Joinder Petition
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`because rejections based on those references were not instituted in the Sony IPR.
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`4 The expert declaration was amended to remove discussion of those grounds not
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`instituted in the Sony IPR.
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`Joinder Petition does not present new issues that might complicate or delay an
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`existing proceeding. Rather, the Joinder Petition adopts the reasoning and
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`rationale of the Sony IPR and as accepted by the Board as to the two grounds.
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`In sum, joinder in the present circumstances is appropriate and consistent
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`with the statutory framework.
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`C.
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`FACTOR (2): NO NEW GROUNDS OF UNPATENTABILITY
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`As noted above, the Joinder IPR petition involves the same patent, the same
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`claims, the same prior art, and the same two instituted grounds as involved in the
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`Sony IPR. Accordingly, the Joinder IPR petition does not present any new ground
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`of unpatentability.
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`D.
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`FACTOR (3): JOINDER WOULD HAVE NO DISCERNIBLE
`IMPACT ON THE TRIAL SCHEDULE FOR THE SONY IPR
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`Given that the Joinder IPR petition involves the same patent, the same
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`claims, the same prior art, and the same two instituted grounds as involved in the
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`Sony IPR, and that Petitioner proposes specific ways in which briefing and
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`discovery are simplified (see Factor (4) below), there appears to be no discernible
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`impact on the trial schedule for the Sony IPR. If Patent Owner does not waive
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`filing a Preliminary Response because no new issues are presented, Petitioner
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`submits that such response should be filed no later than March 15, 2016 (this is the
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`due date of Patent Owner’s response in IPR2015-01364, see Paper 13), and
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`because no new issues are presented, the Board will have adequate time to review
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`the Petition, the Preliminary Response, and Joinder motion and reach a decision on
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`institution prior to the May 30, 2016 deadline for Sony’s reply in the Sony IPR.
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`Sony IPR, Scheduling Order, Paper 9, as modified by Paper 13. Similar timing of
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`the preliminary response in a joinder petition and petitioners’ reply in the original
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`proceeding were utilized in IPR2015-01026 (Paper 8 at 3, setting preliminary
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`response to joinder petition as June 30, 2015) and IPR2014-01453 (Paper 12 at 6,
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`setting reply date in first petition as September 8, 2015). However, should more
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`time be required, a short extension of the schedule will be possible without
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`impacting the stated 12-month completion date in IPR2015-01364, which will not
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`occur until December 15, 2016. As explained in more detail below for Factor (4),
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`Petitioner proposes specific procedures to simplify briefing and discovery that
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`should avoid any material impact on the trial schedule, or any prejudice to the
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`parties involved in the Sony IPR.
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`E.
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`FACTOR (4): PROCEDURES TO SIMPLIFY BRIEFING AND
`DISCOVERY
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`Given that Sony and Petitioner will be addressing identical grounds for the
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`identical claims, the Board may adopt procedures similar to those adopted in Cases
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`IPR2015-01026 and IPR2014-01453. In those cases, the Board ordered all of the
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`petitioners to file consolidated filings, for which the first petitioner (here, Sony)
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`was responsible and to conduct coordinated (not separate) discovery. IPR2015-
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`01026, Paper No. 10 at 7; IPR2014-01453, Paper No. 16 at 7. Petitioner in the
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`present Motion is agreeable to a similar format.
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`Moreover, because Petitioner is represented by the same counsel as Sony,
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`and in order to completely alleviate any complication or delay, Petitioner waives
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`the right to additional pages or time in which to file any papers and will completely
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`agree to the schedule set forth in the Sony IPR, as it now stands or as amended in
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`future. In addition, Petitioner will not need any discovery or deposition time in
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`addition to that already provided in the Sony IPR, given the similarity of the issues
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`and presuming that Patent Owner utilizes the same expert(s) in both proceedings.
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`This procedure would minimize any complication or delay caused by joinder, as
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`the Board recognized in those cases.
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`With respect to any deposition of Sony’s and Petitioner’s expert, because the
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`same expert witness has submitted substantially identical declaration evidence,
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`Patent Owner will not need additional time to schedule a second deposition of a
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`second expert. Because the substance of the expert declarations is substantially the
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`same, Patent Owner should not need additional time beyond the normally allotted
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`timeframe. With respect to oral argument, Petitioner agrees that it would not need
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`any additional time given that counsel for Petitioner and Sony are the same. See,
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`e.g., IPR2013-00385, Paper No. 17 at 9.
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`Finally, in an effort to accommodate any difference in scheduling, Petitioner
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`is willing to be bound to the schedule in the Sony IPR proceeding. Petitioner will
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`also accommodate any reasonable logistical or scheduling request of Patent Owner
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`in order to accommodate joinder of the proceedings. Thus, the schedule in
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`IPR2015-01364 need not be adjusted much, if at all, but even if it needs to be
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`adjusted such an extension is permitted by law and is no reason for denying joinder
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`in this particular case. 37 C.F.R. § 42.100(c).
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`In view of the foregoing, joinder of the Joinder Petition to IPR2015-01364
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`would not cause any undue prejudice or hardship to Patent Owner. The Joinder
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`Petition accordingly should be joined to IPR2015-01364 under 35 U.S.C. §315(c)
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`and Rule 42.122(b).
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 6,101,534 be instituted, and that the
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`proceeding be joined with the Sony IPR, Case No. IPR2015-01364.
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`Respectfully submitted,
`ERISE IP, P.A.
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`BY: /s/ Eric A. Buresh
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`Eric A. Buresh, Reg. No. 50,394
`Abran J. Kean, Reg. No. 58,540
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`Date: January 15, 2016
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`
`Mark C. Lang, Reg. No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`abran.kean@eriseip.com
`mark.lang@eriseip.com
`ATTORNEYS FOR PETITIONER
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`
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`U.S. Patent No. 6,101,534
`Petitioner’s Motion for Joinder
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105(a)
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
`that on January 15, 2016, a complete and entire copy of Petitioner’s Motion for
`Joinder was provided via Federal Express to the Patent Owner by serving the
`correspondence address of record for the ’534 Patent and Patent Owner’s counsel
`in IPR2015-01364:
`
`
`Cuenot, Forsythe & Kim, LLC
`20283 State Road 7, Suite 300
`Boca Raton, FL 33498
`Tel: 561.214.6161
`
`
`Thomas K. Landry
`Adam C. Underwood
`CAREY RODRIGUEZ O’KEEFE
`MILIAN GONYA, LLP
`1395 Brickell Avenue, Suite 700
`Miami, FL 33131
`Tel: 305.372.7474
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`BY:
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`ERISE IP, P.A.
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` /s/ Mark C. Lang
`
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`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`Kathleen Fitterling, Reg. No. 62,950
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`kathleen.fitterling@eriseip.com
`ATTORNEYS FOR PETITIONER
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