Attorney Docket No. 109869-0003-658
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`IPR of U.S. Patent No. 6,701,344
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`United States Patent No: 6,701,344
`Inventors: Fred B. Holt, Virgil E. Bourassa
`Formerly Application No.: 09/629,042
`Issue Date: March 2, 2004
`Filing Date: July 31, 2000
`Former Group Art Unit: 2153
`Former Examiner: B. Edelman
`Patent Owner: Acceleration Bay, LLC
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`Attorney Docket No.:
`109869-0003-658
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`Customer No.: 28120
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`Petitioners: Activision Blizzard,
`Inc., Electronic Arts Inc., Take-
`Two Interactive Software, Inc., 2K
`Sports, Inc., and Rockstar Games,
`Inc.
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`For: DISTRIBUTED GAME ENVIRONMENT
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`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`II.
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` Attorney Docket No. 109869-0003-658
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`IPR of U.S. Patent No. 6,701,344
`TABLE OF CONTENTS
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`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
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`STATEMENT OF MATERIAL FACTS ........................................................ 3
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 5
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`A.
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`B.
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`C.
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`Joinder Is Appropriate ........................................................................... 6
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`Presently-Asserted Grounds of Unpatentability Are Closely
`Related To The Already-Instituted Grounds ......................................... 8
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`Joinder Will Have At Most A Minimal Impact On the Trial
`Schedule And Costs For The Existing Review ................................... 11
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`D.
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`Procedures To Simplify Briefing And Discovery ............................... 13
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`IV. REQUEST FOR SHORTENED PRELIMINARY RESPONSE
`PERIOD ......................................................................................................... 13
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`V.
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`CONCLUSION .............................................................................................. 14
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` Attorney Docket No. 109869-0003-658
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`IPR of U.S. Patent No. 6,701,344
`TABLE OF AUTHORITIES
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`
`CASES
`ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286, Pap. 14 (Dec. Mot. for
`Joinder) (Aug 9, 2013) ...................................................................................... 7, 8
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`Page(s)
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`Ariosa Diagnostics, Inc. v. Isis Innovation Ltd., IPR2013-00250, Pap. 25
`(Dec. Mot. for Joinder) (Sept. 3, 2013) ................................................................ 7
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`Ariosa Diagnostics, Inc. v. Isis Innovation Ltd., IPR2012-00022, Pap. 104
`(Dec. on Patent Owner’s Request for Rehearing of Decision to Grant
`Joinder) (Oct. 31, 2013) ...................................................................................... 11
`
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Pap. 15 (Order) (Apr. 24,
`2013) ..................................................................................................................... 6
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`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Pap. 15 (Dec. Mot. for
`Joinder (Feb. 24, 2013) ......................................................................................... 7
`
`Samsung Elecs. Co., v. Va. Innovation Sci., Inc., IPR2014-00557 , Pap. 10
`(Inst. Dec. and Grant of Mot. for Joinder) (June 13, 2014) .............................. 6, 8
`
`Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem,
`IPR2013-00327, Pap. 15 (Dec. Mot. for Joinder) (Sept. 24, 2013)) .................... 7
`
`Target Corp. v. Destination Maternity Corp., IPR2014-00508, Pap. 28
`(Granting Petitioner’s Request for Rehearing), Pap. 31 (Order), Pap. 32
`(Inst. Dec.) (Feb. 12, 2015) ............................................................................... 6, 9
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`STATUTES
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`37 C.F.R. § 42.1(b) .................................................................................................... 1
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`37 C.F.R. §§ 42.22 ................................................................................................. 1, 7
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`37 C.F.R. § 42.122(a) ................................................................................................. 5
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`37 C.F.R. § 42.122(b) ............................................................................................ 1, 7
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`35 U.S.C. § 315(c) ............................................................................................passim
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`-ii-
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`I.
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` Attorney Docket No. 109869-0003-658
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`IPR of U.S. Patent No. 6,701,344
`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive
`
`Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc. (collectively
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`“Petitioners”) respectfully request joinder pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b) of the concurrently filed Petition for Inter Partes Review of
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`Claim 12 of U.S. Patent No. 6,701,344 (“the ’344 patent”) (“the Second ’344
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`Shoubridge Petition”) with pending inter partes review IPR2015-01972, which
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`involves the same parties and was instituted by the Board on March 24, 2016
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`relying on the teachings of the Shoubridge reference.1 IPR2015-01972, Pap. 8.
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`Joinder of the limited grounds raised in the Second ’344 Shoubridge Petition
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`to the instituted grounds in IPR2015-01972 is appropriate because such joinder
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`will not unduly delay the resolution of either proceeding, and instead will help
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`“secure the just, speedy, and inexpensive resolution” of these proceedings. See 37
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`C.F.R. § 42.1(b). The Second ’344 Shoubridge Petition seeks inter partes review
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`of Claim 12 of the ’344 patent based on two grounds not previously considered by
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`the Board: obviousness of Claim 12 over Shoubridge (Ground 1) and obviousness
`
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`1 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks, in 3
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`IEEE INT’L CONF. ON COMMC’NS CONF. REC. 1381-86 (Montreal, 1997) (Ex. 1205)
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`(“Shoubridge”).
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`of Claim 12 over Shoubridge in view of DirectPlay2 (Ground 2) – which is distinct
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`from a previously-asserted ground (obviousness of Claim 12 over DirectPlay and
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`Shoubridge) that was denied institution after the Board adopted the Patent Owner’s
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`mischaracterizations of the prior art as described in the Second ’344 Shoubridge
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`Petition.
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`Claim 12 – and Claim 1 from which Claim 12 depends – as well as the prior
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`art references relied upon (Shoubridge and DirectPlay) are already at issue in
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`related instituted proceedings, namely: IPR2015-01970 (Pap. 9 at 26) 3 and
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`IPR2015-01972 (Pap. 8 at 23). Accordingly, Petitioners submit substantially the
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`2 Bradley Bargen & Peter Donnelly, INSIDE DIRECTX, (Microsoft Press, 1998) (Ex.
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`1203) (“DirectPlay”).
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`3 In IPR2015-01970, the Board instituted review of Claim 12 of the ’344 patent on
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`obviousness grounds in view of the combination of DirectPlay and Lin (Meng-Jang
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`Lin, et al., Gossip versus Deterministic Flooding: Low Message Overhead and
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`High Reliability for Broadcasting on Small Networks, Technical Report No.
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`CS1999-0637 (Univ. of Cal. San Diego, 1999) (“Lin”)). As Petitioners noted in
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`the IPR2015-01972 petition, Petitioners sought institution on grounds based on the
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`Shoubridge and Lin references in the event that Patent Owner is able to swear
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`behind the Lin reference. IPR2015-01972, Pap. 2 at 5; see also IPR2015-01970,
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`Pap. 6 (Prelim. Resp.) at 14-21.
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`-2-
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` Attorney Docket No. 109869-0003-658
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`IPR of U.S. Patent No. 6,701,344
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`same arguments and evidence regarding previously-instituted Claim 1 and minimal
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`new evidence and argument regarding the challenged claim, and there will be
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`minimal, if any, impact on the briefing, discovery, and trial schedule for the
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`existing review.
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`In conjunction with this request for joinder, Petitioners respectfully request
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`that, to the extent Patent Owner Acceleration Bay LLC (“Patent Owner”)
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`determines to file a Preliminary Response, the Board specify a shortened response
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`period of at most four (4) weeks (to May 19, 2016). Petitioners have also
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`requested a call with the Board to discuss scheduling for these proceedings,
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`including the time for briefing on this Motion. Petitioners also informed counsel
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`for Patent Owner in IPR2015-01972 on April 19, 2016 of Petitioners’ intent to
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`seek joinder and a shortened response period.
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`II.
`A.
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`STATEMENT OF MATERIAL FACTS
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`In IPR2015-01970, Petitioners requested inter partes review of claims 1-19
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`of the ’344 patent under two grounds of unpatentability: obviousness of claims 1-
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`19 in view of DirectPlay and Lin (Ground 1); and obviousness of claims 1-11 and
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`16-19 over Lin (Ground 2). IPR2015-01970, Pap. 2 (Pet.) (Sept. 25, 2015).
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`B.
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`In IPR2015-01972, Petitioners requested inter partes review of claims 1-19
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`of the ’344 patent under two grounds of unpatentability: obviousness of claims 1-
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`19 in view of DirectPlay and Shoubridge (Ground 1); and obviousness of claims 1-
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`11 and 16-19 over Shoubridge (Ground 2). IPR2015-01970, Pap. 2 (Pet.) (Sept.
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`25, 2015).
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`C.
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`Patent Owner submitted a Preliminary Response on December 30, 2015 in
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`IPR2015-01972 (Pap. 6). In its Preliminary Response, Patent Owner argued that a
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`person of ordinary skill in the art would not have been motivated to combine
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`DirectPlay with Shoubridge: “Because, in DirectPlay, every node must be
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`messaged, DirectPlay’s various network nodes must be known a priori . . . thereby
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`making DirectPlay a static network that uses a complete graph.” Id. at 32
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`(emphasis added).
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`D.
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`In a decision dated March 24, 2016, the Board instituted inter partes review
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`on two grounds in IPR2015-01970: Claims 1-12 and 16-19 as obvious over
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`DirectPlay and Lin, and Claims 1-11 and 16-19 as obvious over Lin. IPR2015-
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`01970, Pap. 9 (Inst. Dec.) at 26.
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`E.
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`In a decision dated March 24, 2016, the Board instituted inter partes review
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`on one ground in IPR2015-01972: Claims 1-11 and 16-19 as obvious over
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`Shoubridge. IPR2015-01972, Pap. 8. The Board, however, adopted Patent
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`Owner’s argument that “that DirectPlay contemplates a static network in which all
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`participants are known a priori,” and declined to institute review on obviousness
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`grounds based on the combination of DirectPlay and Shoubridge. Id. at 22-23.
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`F.
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`DirectPlay affirmatively discloses the ability to create dynamic networks,
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` Attorney Docket No. 109869-0003-658
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`IPR of U.S. Patent No. 6,701,344
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`which participants can “join” and “leave.” (E.g., Ex. 1203 at 21, 47, 50, 98, 122.)
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`G. Concurrently, with this Motion for Joinder, Petitioners are filing its Second
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`’344 Shoubridge Petition, challenging Claim 12 as obvious under Shoubridge
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`(Ground 1) and obvious under Shoubridge in view of DirectPlay (Ground 2).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The requested joinder will serve to secure the just, speedy, and inexpensive
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`resolution of these proceedings. 35 U.S.C. § 315(c) (“Joinder”) provides:
`
`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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`37 C.F.R. § 42.122(a) further provides that, “[w]here another matter involving the
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`patent is before the Office, the Board may during the pendency of the inter
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`partes review enter any appropriate order regarding the additional matter including
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`providing for the stay, transfer, consolidation, or termination of any such matter.”
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`“The Board will determine whether to grant joinder on a case-by-case basis, taking
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`into account the particular facts of each case, substantive and procedural issues,
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`and other considerations.” Samsung Elecs. Co., v. Va. Innovation Sci., Inc.,
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`IPR2014-00557 , Pap. 10 (Inst. Dec. and Grant of Mot. for Joinder) at 16 (June 13,
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`2014) (citing 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
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`Kyl)). Further, “the Board’s rules for AIA proceedings ‘shall be construed to
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`secure the just, speedy, and inexpensive resolution of every proceeding.’” Id. at 17
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`(citing 37 C.F.R. § 42.1(b); 77 Fed. Reg. at 48,758). As the Board has previously
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`found, “liberal joinder of reviews, including those having new arguments” further
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`this statutory and regulatory purpose of ensuring fair and just resolution of related
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`patent issues. Target Corp. v. Destination Maternity Corp., IPR2014-00508, Pap.
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`28 (“Granting Petitioner’s Request for Rehearing”) at 10-13 (Feb. 12, 2015).
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`The Board has identified a Representative Order, IPR2013-00004 Paper 15,
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`regarding motions for joinder, which directs a movant to: (1) “explain the reasons
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`why joinder is appropriate,” (2) “identify any new ground of unpatentability being
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`raised” in the petition, (3) explain how the impact on the schedule and costs of the
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`current proceedings will be minimized, and (4) “specifically address how briefing
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`and/or discovery may be simplified to minimize schedule impact.” Kyocera Corp.
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`v. Softview LLC, IPR2013-00004, Pap. 15 (Order) at 4 (Apr. 24, 2013). These
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`factors are addressed below and each weigh in favor of granting the instant motion.
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`Joinder Is Appropriate
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`A.
`The Board has authority to join a properly-filed IPR petition to an instituted
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`IPR proceeding. See 35 U.S.C. § 315(c). The Second ’344 Shoubridge Petition
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`and concurrently filed Motion for Joinder are timely under 35 U.S.C. § 315(c) and
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`-6-
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`IPR of U.S. Patent No. 6,701,344
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`37 C.F.R. §§ 42.22 and 42.122(b). 37 C.F.R. § 42.122 states that a motion for
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`joinder is to be filed “no later than one month after the institution date of any inter
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`partes review for which joinder is requested.” IPR2015-01972 was instituted on
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`March 24, 2016. IPR2015-01972, Pap. 8. The Petitioners filed the Second ’344
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`Shoubridge Petition concurrently with this Motion for Joinder on April 21, 2016,
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`which is no later than one month from the institution of IPR2015-01972. The
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`Board’s authority to join the Second ’344 Shoubridge Petition to the instituted
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`IPR2015-01972 proceeding is unaffected by the fact that the Second ’344
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`Shoubridge Petition is submitted by the same Petitioners. Indeed, “the Board
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`already has allowed joinder of additional grounds by the same party.” Samsung,
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`IPR2014-00557, Pap. 10 at 16 (citing as examples: Microsoft Corp. v. Proxyconn,
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`Inc., IPR2013-00109, Pap. 15 (Dec. Mot. for Joinder) (Feb. 25, 2013); Ariosa
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`Diagnostics, Inc. v. Isis Innovation Ltd., IPR2013-00250, Pap. 25 (Dec. Mot. for
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`Joinder) (Sept. 3, 2013); ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286, Pap. 14
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`(Dec. Mot. for Joinder) (Aug 9, 2013); Sony Corp. v. Yissum Research Dev. Co. of
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`the Hebrew Univ. of Jerusalem, IPR2013-00327, Pap. 15 (Dec. Mot. for Joinder)
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`(Sept. 24, 2013)). Joinder is appropriate for the Second ’344 Shoubridge Petition
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`that is submitted by the same Petitioners as those in IPR2015-01972.
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`As further described below, joinder is appropriate given that both IRP2015-
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`01972 and the Second ’344 Shoubridge Petitions are directed to the ’344 patent,
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` Attorney Docket No. 109869-0003-658
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`IPR of U.S. Patent No. 6,701,344
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`address whether Shoubridge renders obvious the limitations of Claim 1 (which are
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`also limitations of Claim 12, challenged in the Second ’344 Shoubridge Petition
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`because Claim 12 depends from Claim 1), and rely on the Shoubridge reference for
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`their respective grounds.
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`B.
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`Presently-Asserted Grounds of Unpatentability Are Closely
`Related To The Already-Instituted Grounds
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`Joinder is appropriate as the Second ’344 Shoubridge Petition introduces
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`very little additional subject matter that is not already at issue in IPR2015-01972
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`and the related IPR2015-01970. The Board has previously exercised its discretion
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`and granted joinder under § 315(c) under similar circumstances where, as here, few
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`additional dependent claims are challenged in a second petition by the same parties
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`involving previously asserted or related prior art. See, e.g., Samsung, IPR2014-
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`00557, Pap. 10 at 17-19 (granting institution and joinder on second petition
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`submitted by same parties challenging just two dependent claims that were
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`previously challenged in the original petition that added minimal additional subject
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`matter where the same prior art relied upon in the second petition was asserted in
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`related proceedings); ABB Inc. v. Roy-G-Biv Corp., IPR2013-00282, Pap. 14 (Inst.
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`Dec.) at 2, 11 (Aug. 9, 2013) (granting institution on second petition challenging
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`three dependent claims that were previously challenged in the original petition
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`where the petitioner limited the grounds of unpatentability to those “based
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`primarily on prior art that the Board relied upon in instituting” related IPRs
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`involving the same parties); see also Target, IPR2014-00508, Pap. 28 at 2-3, 16-17
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`(granting request for rehearing of a decision based on “an erroneously narrow
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`interpretation of 35 U.S.C. § 315(c)” where petitioner had limited its challenged to
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`just two dependent claims that were previously challenged in an earlier petition
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`and that depended on a claim that was subject to pending inter partes review); id.,
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`Pap. 31 (Order) & Pap. 32 (Inst. Dec.) (Feb. 12, 2015).
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`The Second ’344 Shoubridge Petition only challenges Claim 12 of the ’344
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`patent. Claim 12 depends on Claim 1, which is already subject to review in
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`IPR2015-01972 as obvious over Shoubridge. Accordingly, the Second ’344
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`Shoubridge Petition consists of substantially the same arguments and evidence
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`regarding Claim 1 (not itself challenged in the Second ’344 Shoubridge Petition) as
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`those submitted in IPR2015-01972 concerning the instituted ground of obviousness
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`of Claim 1 over Shoubridge. For the asserted Ground 1 in the Second ’344
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`Shoubridge Petition (obviousness of dependent Claim 12 in view of Shoubridge), it
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`will require minimal, if any, additional work on the part of the Patent Owner to
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`address the relatively minor additional claim limitation of Claim 12 in view of
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`Shoubridge. See Target, IPR2014-00508, Pap. 31 at 3-5 (granting motion for
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`joinder of a previously challenged claim after finding that the “relevant factors” –
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`including the fact that “same patent and parties” are involved in both proceedings,
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`the “overlap in the cited prior art,” and the minimal impact on the “schedule” due
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`to the limited grounds in the second petition – “all weigh[ed] in favor” of granting
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`the motion); id., Pap. 28 at 2-3, 16-17.
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`For the asserted Ground 2 in the Second ’344 Shoubridge Petition
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`(obviousness of Claim 12 over Shoubridge in view of DirectPlay), it will also
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`require minimal, if any, additional work of the Patent Owner to address this ground
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`as Claim 12 is also subject to review in IPR2015-01970 as obvious in view of the
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`DirectPlay and Lin references. See Target, IPR2014-00508, Pap. 31 at 3-5; id.,
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`Pap. 28 at 2-3, 16-17. In fact, any additional effort that Patent Owner may need to
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`expend with respect to Ground 2 is the result of Patent Owner’s
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`mischaracterization of DirectPlay’s teachings, incorrectly asserting that DirectPlay
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`discloses only static networks in which all participants must be known a priori as
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`described in the Second ’344 Petition. Compare IPR2015-01972, Pap. 8 (Inst.
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`Dec.) at 22 (citing Pap. 6 (Prelim. Resp.) at 33) with Ex. 1203 at 21, 47, 50, 98,
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`122 (discussing the ability to create dynamic (rather than static) networks, which
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`participants can “join” and “leave”).
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`This minimal amount of additional work required on the part of the Patent
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`Owner to address the additional grounds regarding Claim 12 “is strongly
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`outweighed by the public interest in having consistency of outcome concerning
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`similar sets of subject matter and prior art.” See Samsung, IPR2014-00557, Pap.
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`10 at 17-18. The Second ’344 Shoubridge Petition also cites to the expert
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`declaration of Dr. David Karger, the same expert used in the original IPR2015-
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`01972 Shoubridge petition. Given the considerable overlap in subject matter, this
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`second expert declaration also contains very little new, additional content not
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`present in the original declaration and further supports granting joinder. See
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`Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Pap. 104 (Dec. on
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`Patent Owner’s Request for Rehearing of Decision to Grant Joinder) at 5 (Oct. 31,
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`2013) (asserting that when exercising its discretion to grant joinder under § 315(c),
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`the Board noted the significant overlap in the prior art cited in the two proceedings
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`and that granting joinder allowed for a single deposition). Petitioners attach a
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`redline (Ex. 1227) comparing Dr. Karger’s original declaration to his declaration
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`for the Second ’344 Shoubridge Petition, which shows the minimal amount of
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`additional material included, and respectfully submit that a single deposition would
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`be appropriate given this minimal additional material.
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`For the reasons discussed above, joinder of Second ’344 Petition with
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`IPR2015-01972 is appropriate.
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`C.
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`Joinder Will Have At Most A Minimal Impact On the Trial
`Schedule And Costs For The Existing Review
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`Given the significant overlap in subject matter and prior art, joinder will
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`have minimal impact on the trial schedule and costs for the existing review. Here,
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`joinder need not materially affect the schedule and will minimize costs because the
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`same prior art and almost all of the issues and evidence raised in the Second ’344
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`-11-
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` Attorney Docket No. 109869-0003-658
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`Shoubridge Petition are already before the Board in the IPR2015-01970 and -
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`01972 proceedings.4 Also, little or no modifications are needed for the briefing
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`and discovery procedures, which should further help avoid any impact on the trial
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`schedule and minimize costs. As noted above, Petitioners have also requested a
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`call with the Board to discuss scheduling for these proceedings, and would propose
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`a common schedule. In particular, because the Second ’344 Shoubridge Petition
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`raises such similar issues to the original petition, Patent Owner may not require a
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`Preliminary Response, and even if one is filed, Petitioners respectfully submit that
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`the Board may be in a position to decide again the same question of institution
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`within a few weeks, likely before the current Due Date 1 for Patent Owner’s
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`Response in the IPR2015-01972 matter. To the extent this may not be practical,
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`and to the extent Patent Owner deems it necessary despite the substantial similarity
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`of arguments and evidence, Petitioners would agree that Patent Owner may file an
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`additional seven-page supplemental Response addressing the Second ’344
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`Shoubridge Petition on June 29, 2016 – one week after current Due Date 1. The
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`remainder of the existing schedule could then remain unchanged, as outlined in the
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`attached Petitioner’s Proposed Schedule. Alternatively, Petitioners are amenable,
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`in coordination with Patent Owner, to other arrangements the Board deems
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`4 The Board has set IPR2015-01970 and -01972 on the same schedule. IPR2015-
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`01970, Pap. 10 (Scheduling Order) at 1.
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`appropriate. Accordingly, this factor also points in favor of joinder.
`
`Procedures To Simplify Briefing And Discovery
`
`D.
`Because the Second ’344 Shoubridge Petition is submitted by the same
`
`Petitioners as in IPR2015-01972 and the Second ’344 Shoubridge Petition seeks to
`
`add only a single additional dependent claim from the same patent to those already
`
`subject to review under IPR2015-01972, no modifications to briefing or discovery
`
`procedures are necessary. To the extent that Patent Owner attempts to depose
`
`Petitioners’ expert before an institution decision on the Second ’344 Shoubridge
`
`Petition has issued, Petitioners would agree to offer Dr. Karger for a deposition on
`
`the supplemental declaration submitted with the Second ’344 Shoubridge Petition
`
`at the same time. Accordingly, this factor also points in favor of joinder.
`
`IV. REQUEST FOR SHORTENED PRELIMINARY RESPONSE
`PERIOD
`
`Petitioners respectfully request that the Board specify a shortened response
`
`period of at most four (4) weeks (to May 19, 2016) for Patent Owner to file a
`
`Preliminary Response to the Petition, to the extent it determines such a Response is
`
`necessary. Patent Owner and its counsel are already quite familiar with the patent
`
`and claims at issue, as well as the specific prior art at issue here. Patent Owner has
`
`already provided a Preliminary Response in IPR2015-01970 and -01972, and it has
`
`already briefed, for example, the issue of the application of Shoubridge to Claim 1,
`
`on which Claim 12 depends. Given the common issues already raised in each
`
`
`
`
`-13-
`
`

`
` Attorney Docket No. 109869-0003-658
`
`
`IPR of U.S. Patent No. 6,701,344
`
`proceeding, this will not cause undue prejudice, and will increase the efficiencies
`
`for the parties and the Board. Because this Petition involves substantially
`
`overlapping issues with the original petition and related proceedings, Petitioners
`
`respectfully submit the Board may be in a position to resolve this same question of
`
`institution expeditiously after the Patent Owner’s Preliminary Response, should
`
`Patent Owner choose to submit one.
`
`V. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that the grounds in
`
`the accompanying Petition for Inter Partes Review of U.S. Patent No. 6,701,344
`
`be instituted, and that the Board grant this Motion for Joinder to join this
`
`proceeding with IPR2015-01972 and for a shortened period of at most four (4)
`
`weeks (to May 19, 2016) for a Patent Owner Preliminary Response, together with
`
`an accelerated schedule for briefing on this Motion.
`
`Dated: April 21, 2016
`
`Respectfully submitted,
`
`By: /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`Reg No. 47,414
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 20006-6807
`steven.baughman@ropesgray.com
`Mailing address for all PTAB
`
`Attorneys for Petitioners
`
`correspondence:
`ROPES & GRAY LLP,
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`
`
`
`
`-14-
`
`

`
` Attorney Docket No. 109869-0003-658
`
`IPR of U.S. Patent No. 6,701,344
`PETITIONERS’ PROPOSED SCHEDULE
`
`Current Schedule
`in IPR2015-01972
`(See Pap. 9)
`June 22, 2016
`
`Sept. 19, 2016
`
`Petitioners’ Proposal for
`Schedule with Joinder
`
`June 22, 2016
`To the extent necessary, a
`7-page supplemental
`Response addressing the
`Second ’344 Shoubridge
`Petition may be submitted
`on June 29, 2016 (assuming
`institution decision circa
`June 17, 2016)
`Sept. 19, 2016
`
`Oct. 19, 2016
`
`Oct. 19, 2016
`
`Nov. 9, 2016
`
`Nov. 9, 2016
`
`Nov. 23, 2016
`
`Nov. 23, 2016
`
`Nov. 30, 2016
`
`Nov. 30, 2016
`
`Dec. 14, 2016
`
`Dec. 14, 2016
`
`
`
`
`
`
`Due Date 1
`Patent owner’s response to the
`petition
`Patent owner’s motion to
`amend the patent
`
`Due Date 2
`Petitioners’ reply to patent
`owner’s response to petition
`Petitioners’ opposition to
`motion to amend
`Due Date 3
`Patent owner’s reply to
`petitioners’ opposition to
`motion to amend
`Due Date 4
`Motion for observation
`regarding cross-examination of
`reply witness
`Motion to exclude evidence
`Request for oral argument
`Due Date 5
`Response to observation
`Opposition to motion to
`exclude
`Due Date 6
`Reply to opposition to motion
`to exclude
`Due Date 7
`Oral argument (if requested)
`
`

`
`
`
`
` Attorney Docket No. 109869-0003-658
`
`IPR of U.S. Patent No. 6,701,344
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONERS’
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22
`
`AND 42.122(b) AND REQUEST FOR SHORTENED RESPONSE TIME FOR
`
`PATENT OWNER’S PRELIMINARY RESPONSE has been served by U.S.
`
`Express Mail on Patent Owner indicated for U.S. Patent No. 6,701,344 through the
`
`following correspondence address of record:
`
`
`
`Correspondence Address:
`
`Litigation Counsel:
`
`Perkins Coie LLP – Boeing
`PO Box 1247
`Patent – SEA
`Seattle, WA 98111-1247
`Express Mail Label No:
`EF 124 367 596 US
`
`Paul J. Andre
`James Hannah
`Michael Lee
`Kramer Levin Naftalis & Frankel
`LLP
`990 Marsh Road
`Menlo Park, CA 94025
`(650) 752-1700
`Express Mail Label No:
`EF 124 367 605 US
`
`Shannon Hedvat
`Kramer Levin Naftalis & Frankel
`LLP
`1177 Avenue of the Americas
`New York, NY 10036
`(212) 715-7502
`
`

`
`
`
`
`
`Dated: April 21, 2016
`
`
`
`
`
`
`
` Attorney Docket No. 109869-0003-658
`
`IPR of U.S. Patent No. 6,701,344
`Express Mail Label No:
`EF 124 367 619 US
`
`Respectfully submitted,
`
`ROPES & GRAY LLP
`
` /Ginny Blundell/
`Name: Ginny Blundell
`
`
`
`-2-