UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`VALVE CORPORATION,
`
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2017-00136
`
`Patent 8,641,525
`
`____________
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
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`JOINDER AND/OR CONSOLIDATION
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`
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`

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`TABLE OF CONTENTS
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`
`Page
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND ............................................................................................ 1
`II.
`III. ARGUMENT .................................................................................................. 3
`A. Valve Is Not Entitled To Use The Institution Decision In The
`948 IPR As A Roadmap For Its Second Petition ................................. 4
`B. Valve Fails To Provide A Good Cause Or Reason To Warrant
`A “Second Bite At The Apple” ............................................................ 6
`The Facts Of This Case Merit Denial Of Joinder ................................ 8
`Joinder Would Unduly Delay And Complicate The Proceedings
`Already Well Underway ..................................................................... 11
`Joinder Will Unjustly Prejudice Ironburg .......................................... 13
`E.
`IV. CONCLUSION ............................................................................................. 15
`
`C.
`D.
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`-i-
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`TABLE OF AUTHORITIES
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`
`Page
`
`
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`CASES
`Ariosa Diagnostics v. Isis Innovation, Ltd.
`IPR2013-00250 ..................................................................................................... 6
`Butamax Advanced Biofuels LLC. v. Gevo, Inc.,
`IPR2014-00581 ..................................................................................................... 4
`Medtronic, Inc. v. Endotach LLC,
`IPR2014-00695 ................................................................................................... 14
`Microsoft Corp. v. Proxyconn,
`Inc., IPR2013-00109 ............................................................................................. 7
`NetApp, Inc. v. PersonalWeb Techs., LLC,
`IPR2013-00319 ..................................................................................................... 3
`Oxford Nanopore Tech. Ltd. v. Univ. of Washington,
`IPR2015-00057 ..................................................................................................... 7
`Samsung Elecs. Co. Ltd. v. Virginia Innovation Sciences, Inc.,
` IPR2014-00557 .................................................................................................... 7
`Samsung Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC,
`IPR2015-00820 ..................................................................................................... 4
`Samsung Electronics, et al. v. Rembrandt Wireless Tech., LP,
`IPR2015-00555 ..................................................................................................... 6
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00386 ..................................................................................................... 3
`Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of
`Jerusalem,
`IPR2013-00327 ..................................................................................................... 7
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00907 ................................................................................................... 12
`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508 ..................................................................................................... 7
`ZTE Corp. et al. v. ContentGaurd Holdings, Inc.,
`IPR2013-00454 ..................................................................................................... 6
`
`
`
`
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`-i-
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`

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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`
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`STATUTES
`35 U.S.C. § 315(c) ................................................................................................. 3, 4
`OTHER AUTHORITIES
`37 C.F.R. §§ 42.20(c) ................................................................................................. 3
`37 C.F.R. § 42.53(d) .......................................................................................... 13, 15
`37 C.F.R. § 42.122 ..................................................................................................... 3
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`-ii-
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`IPR2017-00136
`Patent 8,641,525
`
`
`INTRODUCTION
`
`Valve Corporation (“Valve”) asks the Board to exercise its discretion to join
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`I.
`
`
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`and/or consolidate two inter partes review proceedings, involving different claims,
`
`different prior art references, different combinations of prior art, different
`
`arguments, and different expert testimony. IPR2017-00136, Paper 3 (“Motion”).
`
`But Valve is not entitled to a “do over” to challenge claims 1-20 of the ’525 Patent
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`on five new grounds of unpatentability based on three new references. Valve’s
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`new petition is nothing more than a “second bite at the apple” and an effort to
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`remedy its prior deficient challenges against the ‘525 Patent. It has not
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`demonstrated why joinder and/or consolidation of IPR2016-00948 (“the 948 IPR”)
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`with IPR2017-00136 (“the 136 IPR”) is appropriate in this case or how it can be
`
`accomplished without unduly delaying the proceedings well underway. Joinder of
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`these proceedings will also undoubtedly prejudice Ironburg Inventions Ltd.
`
`(“Ironburg”). Therefore, Valve’s Motion should be denied.
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`II. BACKGROUND
`
`
`
`On April 22, 2016, Valve filed its first petition (“First Petition”) for inter
`
`partes review of the ‘525 Patent, alleging Claims 1-20 are unpatentable over
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`Tosaki, Jimakos, Enright, Ono and Oelsch references. 948 IPR, Paper 1 at 4-6.
`
`
`
`
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`On June 13, 2016, Ironburg notified Valve that, in addition to the patents
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`1
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`IPR2017-00136
`Patent 8,641,525
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`under IPR review, Valve is also infringing Ironburg’s U.S. Pat. No. 9,352,229
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`(“the ‘229 Patent”). Declaration of Robert Becker in support of Patent Owner’s
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`Opposition to Petitioner’s Motion for Joinder (“Becker Decl.”), Appendix A.
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`
`
`On July 28, 2016, Ironburg filed its Preliminary Response to the First
`
`Petition. 948 IPR, Paper 7. The Board instituted inter partes review on September
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`27, 2016 as to claims 1-11, 13, 14, and 16-20, but not for claims 12 and 15 of the
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`‘525 Patent. 948 IPR, Paper 10 at 30. In its Institution Decision, the Board held
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`that “Petitioner has not demonstrated a reasonable likelihood of prevailing in the
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`contention that claims 2, 4, 5, 7, 8, 12, 14–16, and 19 are unpatentable as obvious
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`over Tosaki and Jimakos.” Id. at 28. The Board also held that “ Petitioner has not
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`demonstrated a reasonable likelihood of prevailing in the contention that claims 14,
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`15, and 19 are unpatentable as obvious over Enright, Tosaki, and Ono.” Id. at 26.
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`
`
`On October 25, 2016—over 6 months after the First Petition was filed—
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`Valve filed a second petition (“Second Petition”) for inter partes review, which
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`again sought to invalidate the ‘525 Patent. Valve’s Second Petition presents five
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`new grounds of unpatentability based on three new references, namely the Wörn,
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`Date and Lee references. 136 IPR, Paper 1 at 12-13.
`
`
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`Finally, on November 4, 2016 the Board entered a Notice of Filing Date
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`Accorded to Petition for Valve’s Second Petition, setting a February 4, 2017 due
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`date for filing the Patent Owner Preliminary Response. 136 IPR, Paper 4.
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`2
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`IPR2017-00136
`Patent 8,641,525
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`III. ARGUMENT
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`
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`The America Invents Act (“AIA”) created inter partes review as an efficient,
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`streamlined, and cost-effective alternative to district court litigation. To this end,
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`the AIA permits the joinder of like proceedings in some circumstances. 35 U.S.C.
`
`§ 315(c). But joinder is not automatic. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122.
`
`
`
`As the moving party, Valve has the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). “A motion for
`
`joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any
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`new grounds of unpatentability asserted in the petition; (3) explain what impact (if
`
`any) joinder would have on the trial schedule for the existing review; and (4)
`
`address specifically how briefing and discovery may be simplified.” Sony Corp. of
`
`Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00386, Paper 16 at 4 (July 29,
`
`2013). A petitioner seeking joinder has the burden to “explain adequately the
`
`impact of those new substantive issues on the patent owner … and the trial
`
`schedule of [the earlier IPR].” NetApp, Inc. v. PersonalWeb Techs., LLC, IPR2013-
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`00319, Paper 18 at 6 (July 22, 2013). Valve has not met this burden.
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`
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`Joinder and/or consolidation is inappropriate for at least five reasons: (i)
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`Valve is not entitled to use the prior institution decision in the 948 IPR as a
`
`roadmap for its Second Petition—“second bite at the apple”; (ii) Valve fails to
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`provide a persuasive reason to warrant a do-over with new references; (iii) the facts
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`3
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`Patent 8,641,525
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`of this case merit denial of joinder; (iv) joinder would unduly complicate
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`proceedings already underway, and (v) joinder will unjustly prejudice Ironburg.
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`Accordingly, the Board should exercise its discretion under § 315(c) to deny
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`Valve’s Motion and dismiss the Second Petition.
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`A. Valve Is Not Entitled To Use The Institution Decision In The 948
`IPR As A Roadmap For Its Second Petition
`
`The Board should deny Valve’s Motion because Valve’s Second Petition
`
`
`
`seeks nothing more than “a second bite at the apple”—a second chance to
`
`challenge the same claims that were previously challenged and/or denied by the
`
`Board. Numerous Board decisions have denied joinder when the petitioner
`
`attempts to use a prior institution decision as a roadmap for remedying challenges
`
`that were unsuccessfully advanced in the first petition. See, e.g., Butamax
`
`Advanced Biofuels LLC. v. Gevo, Inc., IPR2014-00581, Paper 8 at 12-13 (Oct. 14,
`
`2015) (“the four obviousness grounds are ‘second bites at the apple,’ which use our
`
`prior decision as a roadmap to remedy [petitioner’s] prior, deficient challenge”);
`
`Samsung Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC, IPR2015-
`
`00820, Paper 12 at 4 (May 15, 2015) (“[t]his appears . . . to be a case where
`
`Petitioner seeks to use our Decision to Institute . . . as a guide to remedy
`
`deficiencies in the earlier filed petition, i.e. a ‘second bite at the apple’”).
`
`
`
`Such is the case here. Valve’s Second Petition challenges claims 1-20 and
`
`uses the prior institution decision as a roadmap to remedy Valve’s First Petition in
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`4
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`IPR2017-00136
`Patent 8,641,525
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`the 948 IPR. Specifically, the Second Petition relies on the same Enright and
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`Oelsch references, which were previously relied on in the 948 IPR, and adds three
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`new references—namely, the Wörn, Date and Lee references—to address the First
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`Petition’s shortcomings. See Paper 1 at 13-14. For example:
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` Valve added the Wörn reference to compensate for obvious deficiencies in
`
`Tosaki, namely that it is not a handheld controller and the shift levers of
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`Tosaki are actually on or adjacent the front surface, as opposed to the
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`elongate members that are on the back of the controller, as claimed. See id.
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`at 18-20. Valve even used Ironburg’s Preliminary Response in the 948 IPR
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`as a roadmap for its own arguments in its Second Petition. See id. at 6-7.
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` Valve added the Date and Lee references to provide additional rationale
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`because the Board held that Petitioner had failed to adequately address how
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`the features of Ono enhanced Enright and Ono. Id. at 25-26.
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` Valve used its Second Petition to bolster its argument that a UK patent
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`examiner is a person of ordinary skill in the art after the Board held that the
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`Petitioner had “not explained persuasively how observations from a UK
`
`patent examiner, which presumably are based on UK law and not United
`
`States law, are of use in our proceeding.” 948 IPR, Paper 10 at 4.
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`
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`Thus, armed with knowledge of the deficiencies identified by the Board in
`
`the Institution Decision, Valve now inappropriately requests the Board for a do-
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`IPR2017-00136
`Patent 8,641,525
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`over. Such tactics should not be allowed, and Valve’s Motion should be denied.
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`
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`The Board has stated that it is concerned about encouraging, unnecessarily,
`
`the filing of petitions which are partially inadequate. See ZTE Corp. et al. v.
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`ContentGaurd Holdings, Inc., IPR2013-00454, Paper 12 at 5-6 (Sept. 25, 2013).
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`The Board reasoned that “[a] decision to institute review on some claims should
`
`not act as an entry ticket, and a how-to guide . . . to challenge those claims which
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`[the petitioner] unsuccessfully challenged in the first petition.” Id. By “[p]ermitting
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`second chances” the Board needs to “be mindful not only of this proceeding, but of
`
`every proceeding” when exercising its discretion, for such cases will inevitably
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`“tie[] up the Board’s limited resources.” See Samsung Electronics, et al. v.
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`Rembrandt Wireless Tech., LP, IPR2015-00555, Paper 20 at 8 (Jun. 19, 2015).
`
`
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`Thus, the Board, keeping these concerns in mind, should deny Valve’s
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`belated attempt to use a Second Petition to remedy its prior deficient arguments.
`
`B. Valve Fails To Provide A Good Cause Or Reason To Warrant A
`“Second Bite At The Apple”
`
`In rare, exceptional cases, the Board has previously granted joinder—where
`
`
`
`parties have demonstrated “good cause” for a second chance. For example, in
`
`Ariosa Diagnostics v. Isis Innovation, Ltd., the Board granted joinder when a new
`
`product was launched leading to a threat of new assertions of infringement.
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`IPR2013-00250, Paper 25 at 2, 4 (Sept. 8, 2013). The Board also found that joinder
`
`may be warranted where the patent owner had asserted additional claims against
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`IPR2017-00136
`Patent 8,641,525
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`the petitioner in concurrent district court litigation after the one-year bar had taken
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`effect, and the patent owner did not oppose joinder. See Microsoft Corp. v.
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`Proxyconn, Inc., IPR2013-00109, Paper 15 at 3 (Feb. 25, 2013). Here, there is no
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`similar “good cause” or “good reason” as to why Valve should be allowed a do-
`
`over or a second chance with its three new references.
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`
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`Valve’s contention that the Board should allow joinder because “the Board
`
`has indeed joined proceedings in factual circumstances analogous to those
`
`presented here” is without merit. These cases are readily distinguishable. For
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`example, in Sony, the petitioner filed a second petition (prior to the first institution
`
`decision), because the patent owner asserted new claims in a concurrent district
`
`court litigation after the first petition was filed. See Sony Corp. v. Yissum Research
`
`Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00327, Paper 4 at 1-2, 5 (Jul.
`
`3, 2013). In Target, the petitioner relied on a newly discovered reference that was
`
`revealed to the petitioner by the patent owner only after the institution decision.
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`See Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper 31 (Feb.
`
`12, 2015); Paper 3, at 2, 5-6 (Mar. 14, 2014).
`
`
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`Meanwhile, in both Oxford and Virginia Innovation, the petitioner relied on
`
`the same references that were previously cited in the original petition. See
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`Samsung Elecs. Co. Ltd. v. Virginia Innovation Sciences, Inc., IPR2014-00557,
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`Paper 1 at 17-18 (June 13, 2014); Oxford Nanopore Tech. Ltd. v. Univ. of
`
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`IPR2017-00136
`Patent 8,641,525
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`Washington, IPR2015-00057, Paper 10 at 23 (Apr. 27, 2015).
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`
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`Valve does not have the Sony facts (newly asserted claim and second
`
`petition filed prior to institution decision), the Target facts (newly discovered prior
`
`art disclosed by patent owner), and the Virginia Innovation and Oxford facts (all
`
`references are the same as those in original petition) in its favor. These cases are
`
`thus distinguishable and do not support Valve’s position.
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`C. The Facts Of This Case Merit Denial Of Joinder
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`The Second Petition of the 136 IPR seeks review of claims 1-20 of the ’525
`
`
`
`Patent. Specifically, the Second Petition asserts the following grounds of
`
`unpatentability (136 IPR, Second Petition at 13-14):
`
`Claim(s) Challenged
`1, 2, 4-7, 12, 16, 17, and
`20
`1-3, 6, 8-11, and 13
`14-16, and 19
`14, 15, and 19
`18
`
`Basis
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`References(s)
`Wörn
`
`Enright and Wörn
`Wörn and Date
`Wörn and Lee
`Wörn and Oelsch
`
`
`
`Meanwhile, the 948 IPR addressed the following grounds of unpatentability
`
`and was instituted on all claims except Claim 13 (948 IPR, Paper 10 at 17, 21):
`
`Claim(s) Challenged
`1, 6, 13, 14, 16, 17, 19, & 20
`1-11, 13, 16, 17, and 20
`14, 15, and 19
`
`References(s)
`Basis
`§ 102(b) Tosaki
`§ 103(a) Enright and Tosaki
`§ 103(a) Enright, Tosaki, and
`Ono
`2, 4, 5, 7, 8, 12, 14-16, and 19 § 103(a) Tosaki and Jimakos Not Instituted
`18
`§ 103(a) Tosaki and Oelsch
`Instituted
`
`PTAB Decision
`Instituted
`Instituted
`Not Instituted
`
`
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`8
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`IPR2017-00136
`Patent 8,641,525
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`As shown above, the Second Petition asserts grounds of unpatentability that
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`substantially differ from those presented in the 948 IPR. For example, the Second
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`Petition presents three new prior art (Wörn, Lee and Date) references, five new
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`prior art combinations and arguments, and a new expert declaration—none of
`
`which was relied upon in the 948 IPR. Indeed, even Valve concedes that the
`
`arguments presented in the Second Petition are “substantially different from
`
`arguments and prior art previously presented.” 136 IPR, Paper 1 at 7.
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`
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`However, the Board has repeatedly stated that “combinations of prior art
`
`references and arguments not previously presented or considered by the Board”
`
`weighs against joinder. See, e.g., Sony Corp., IPR2013-00386, Paper 16 at 7
`
`(denying motion for joinder in part because second petition “assert[s] three new
`
`grounds of unpatentability” and “assert[s] five new prior art references, none of
`
`which are at issue in the existing proceeding”); NetApp, Inc., IPR2013-00319,
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`Paper 18 at 5 (denying motion for joinder in part because the expert declaration
`
`filed in the second proceeding “contains new testimony and arguments not
`
`previously presented in [the first proceeding]”).
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`
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`Valve attempts to shift the blame for its belated filing of the Second Petition
`
`on Ironburg in light of a newly asserted ‘229 patent in the related District Court
`
`Proceeding. See, e.g., Motion at 8 (“Indeed, it was the Patent Owner’s own
`
`amendment and addition to its complaint in the District Court action against Valve,
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`Patent 8,641,525
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`that prompted the additional prior art search that led to Valve’s new IPR”). This
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`baseless argument however is no more than a mere smoke screen to mask the
`
`glaring deficiencies in its Motion.
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`
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`First, it is worth noting that Valve did not petition here to institute against
`
`the newly asserted ‘229 patent; rather, it is petitioning the same ‘525 patent that is
`
`subject to the 948 IPR. Second, Valve was on notice of the ‘229 Patent at least as
`
`early as July 28, 2016 (Becker Decl., Appendix A)—about 2 months before the
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`Board’s Institution Decision—but chose to wait so it can use the Board’s decision
`
`as a roadmap. Third, Valve’s excuse that there was no reason to include “groove”
`
`in its search term—has no merit. 136 IPR, Paper 1 at 8. Claim 7 of the ‘525
`
`Patent recites a “recess,” which is synonymous to “groove.”
`
`
`
`
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`There simply is no reasonable explanation for why Valve could not have
`
`found the Wörn reference earlier and made its §103 arguments in the First Petition.
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`In fact, Valve failed to offer any evidence as to why any of the three new
`
`references was not previously available. Interestingly, Valve has not submitted
`
`any evidence in support of its assertion that Wörn was discovered after Ironburg
`
`amended the complaint in the District Court litigation.
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`
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`Conspicuously absent from Valve’s Motion is any discussion or explanation
`
`for why the Date and Lee references—which form the basis of 2 of the 5 new
`
`grounds of unpatentability—were not asserted in the 948 IPR. Valve failed to
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`provide any reason as to why it did not rely on the Date and Lee references in its
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`First Petition. This is a silent admission that Valve possessed these references at
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`the time of filing its First Petition, but chose to withhold them for a “second bite at
`
`the apple.” See Rembrandt, IPR2015-00555, Paper 20 at 8 (denying joinder where
`
`Petitioner “presents no argument or evidence that [new reference] was not known
`
`or available to it at the time of filing [the second IPR]”).
`
`D.
`
`Joinder Would Unduly Delay And Complicate The Proceedings
`Already Well Underway
`
`Valve has not met its burden of “explain[ing] what impact (if any) joinder
`
`
`
`would have on the trial schedule for the existing review.” Sony Corp., IPR2013
`
`00386, Paper 16 at 4. The 948 IPR schedule includes:
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`January 16, 2017 (Due Date 1)
`
`March 28, 2017 (Due Date 2)
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`April 21, 2017 (Due Date 3)
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`June 5, 2017 (Due Date 7)
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`See 948 IPR, Paper 16 at 2.
`
`Patent Owner’s Response to the Petition and
`Motion to Amend
`Petitioner’s Reply to Patent Owner’s
`Response to Petition and Opposition to
`Motion to Amend
`Patent Owner’s Reply to Petitioner’s
`Opposition to Motion to Amend
`Oral Argument
`
`
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`Meanwhile, the Board has set a February 4, 2017 due date for Valve to file
`
`its Preliminary Response in the 136 IPR. Paper 4 at 1. Beyond the Preliminary
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`Response due date, the deadline for the Board to render its institution decision in
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`the 136 IPR proceeding is May 4, 2017 – a mere 32 days before the date set for
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`oral argument in the first proceeding. 77 Fed. Reg. at 48757. It is difficult to
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`reconcile these two schedules because Valve filed its Second Petition about six
`
`months after filing its First Petition, and the first proceeding is well underway.
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`Standard Innovation Corp. v. Lelo, Inc., IPR2014-00907, Paper 10 at 8 (Dec. 1,
`
`2014) (denying joinder where the “proceeding has now been on-going for over six
`
`months”).
`
`
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`Valve has not proposed a modified schedule that would allow for joinder
`
`without negatively affecting the schedule of the existing proceedings. Any
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`consolidated schedule should allow time for Ironburg’s Preliminary Response,
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`which is due on February 4, 2017. 136 IPR, Paper 4 at 1. Ironburg has not been
`
`able to draft a revised schedule that allows for a February 4, 2017 Preliminary
`
`Response and a June 5, 2017 oral argument date without negatively affecting the
`
`briefing schedule and discovery windows in the existing proceedings. More
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`importantly, Valve has not been able to do so either.
`
`
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`Especially in light of three new prior art references, new combinations of
`
`prior art, new declaration and new arguments in its Second Petition, Valve should
`
`have “address[ed] specifically how briefing and discovery may be simplified.”
`
`Sony Corp., IPR2013-00386, Paper 16 at 4. It did not. Rather than addressing the
`
`obvious scheduling problem, Valve makes a general statement that it is “prepared
`
`to accommodate any reasonable logistical or scheduling request of the Patent
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`Owner, including but not limited to expedited discovery, in order to facilitate
`
`joinder or consolidation of the proceedings, and to allow for a final written
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`decision within one year of institution.” Motion at 9. Valve’s general statement is
`
`not enough and fundamentally ignores the scheduling problem noted above and the
`
`complexities regarding briefing and discovery if the Second Petition is joined with
`
`the ongoing 948 IPR proceeding.
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`
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`Valve’s rationale that because it used the same declarant means that joinder
`
`will allow for a single deposition is misplaced. Motion at 7. The deposition period
`
`for Valve’s declarant ends on January 9, 2017 (see 37 CFR 42.53(d)(2)), which is
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`well before the February 4, 2017 Preliminary Response date and the May 4, 2017
`
`institution decision deadline for the 136 IPR. Thus, by the time the Board will rule
`
`on the Second Petition, Patent Owner will have completed all discovery in the 948
`
`IPR, including deposition of Petitioners’ declarant. If the Second Petition is now
`
`joined, the parties will have to expend additional time and resources to conduct
`
`discovery related to this improper petition such that there is simply no
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`simplification of briefing or discovery that will be achieved.
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`E.
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`Joinder Will Unjustly Prejudice Ironburg
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`Granting joinder and/or consolidation will needlessly prejudice Ironburg and
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`substantially increase the costs. Ironburg will have to review and substantively
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`address the five new grounds of unpatentability premised on three new references
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`IPR2017-00136
`Patent 8,641,525
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`that Valve now seeks to add at this late-stage. Even if there is an overlap with
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`respect to the Enright and Oelsch references, that does not mitigate the prejudice
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`from the Wörn, Date and Lee references. See Medtronic, Inc. v. Endotach LLC,
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`IPR2014-00695, Paper 18 at 8 (Sept. 25, 2014) (determining that the patent owner
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`was prejudiced where petitioner presented and relied on “three new grounds,”
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`containing two new “references never cited by [p]etitioner before institution” even
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`though there was an “overlap in relation to one reference,” which was previously
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`cited in the institution decision).
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`Valve argues that Ironburg would not be prejudiced by joinder or
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`consolidation because “the newly discovered prior art reference cited in Valve’s
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`new IPR Petition (i.e., U.S. Patent No. 6,362,813 to Wörn), was already disclosed
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`to Patent Owner in invalidity contentions and accompanying detailed invalidity
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`claim charts that were served on the Patent Owner in September, 2016, as part of
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`the District Court proceedings involving the ‘525 Patent.” Motion at 9. This of
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`course misses the point. Mere knowledge of one of Valve’s new references (that
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`was only disclosed 2 months ago) does not change the amount of cost and burden
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`Ironburg will suffer if it is now forced by joinder and/or consolidation to litigate
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`Valve’s new challenges in an IPR. Nor does such knowledge extend (a) the
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`parties’ deposition schedule, (b) the period in which to conduct discovery, or (c)
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`the time to provide Ironburg’s Patent Owner Response in the 948 IPR, all of which
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`would have passed by the time Valve’s joinder motion is decided. See 37 C.F.R. §
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`42.53(d). Accordingly, the Board should deny Valve’s Motion.
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`IPR2017-00136
`Patent 8,641,525
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`IV. CONCLUSION
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`Valve fails to meet its burden demonstrating that the joinder is appropriate.
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`Valve is not entitled to a "second bite of the apple." Valve has not provided any
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`justification for getting a "second bite at the apple." Nor has Valve provided any
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`persuasive reason as to why it could not have presented the art and arguments in
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`the earlier proceeding that it now makes in its Second Petition. Further, contrary to
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`Valve’s self-serving reasoning, joinder will indeed prejudice Ironburg. Thus, for at
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`least these reasons discussed above, Ironburg respectfully requests the Board to
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`deny Valve’s Motion for joinder and/or consolidation.
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`Respectfully submitted,
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`By: /s/ Ehab M. Samuel
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`Ehab Samuel
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`Attorney for Patent Owner
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`Reg. No. 57,905
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`Danielle Mihalkanin
`Attorney for Patent Owner
`Reg. No. 69,506
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`Respectfully
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`Date: November 23, 2016
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`IPR2017-00136
`Patent 8,641,525
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
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`that on November 23, 2016, a complete and entire electronic copy of this PATENT
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`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER AND/OR
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`CONSOLIDATION, was served via email to Petitioner’s counsel of record at the
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`following address:
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`Joshua C. Harrison, Reg. No. 45,686, josh@bhiplaw.com
`Reynaldo C. Barcelo, Reg. No. 42,290, rey@bhiplaw.com
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`Respectfully submitted,
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`By: /s/ Ehab Samuel
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`Ehab Samuel
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`Attorney for Patent Owner
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`Reg. No. 57,905
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`Danielle Mihalkanin
`Attorney for Patent Owner
`Reg. No. 69,506
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`Date: November 23, 2016
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