UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WMM HOLDINGS, LLC, AND MULTI MEDIA, LLC
`
`Petitioners
`
`v.
`
`WAG ACQUISITION, LLC
`
`Patent Owner
`
`________________
`
`Patent No. 8,122,141
`
`Issue Date: February 21, 2012
`
`Title: STREAMING MEDIA BUFFERING SYSTEM
`________________
`
`MOTION FOR JOINDER TO INSTITUTED INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b))
`
`i
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WMM HOLDINGS, LLC, AND MULTI MEDIA, LLC
`
`Petitioners
`
`v.
`
`WAG ACQUISITION, LLC
`
`Patent Owner
`
`________________
`
`Patent No. 8,122,141
`
`Issue Date: February 21, 2012
`
`Title: STREAMING MEDIA BUFFERING SYSTEM
`________________
`
`MOTION FOR JOINDER TO INSTITUTED INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b))
`
`i
`
`
`
`TABLE OF CONTENTS
`
`STATEMENT OF RELIEF REQUESTED.......................................................1
`I.
`II. BACKGROUND AND RELATED PROCEEDINGS......................................4
`III. STATEMENT OF REASONS FOR REQUESTED RELIEF...........................6
`A. Legal Standard............................................................................................6
`
`1. Joinder is appropriate. ...........................................................................7
`
`2. No new grounds of unpatentability are being asserted. ........................9
`
`3. Joinder will have no impact on the trial schedule...............................10
`
`4. Briefing and discovery will be simplified...........................................10
`
`B.
`
`Joinder will promote efficiency and conserve resources. ........................11
`
`IV. CONCLUSION ................................................................................................12
`
`ii
`
`
`
`I.
`
`Statement of Relief Requested
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b),
`
`petitioners FriendFinder Networks Inc.; Streamray Inc.; WMM, LLC; WMM
`
`Holdings, LLC; and Multi Media, LLC (collectively, “Petitioners”) respectfully
`
`request joinder with the Inter Partes Review of U.S. Patent No. 8,122,141 (the “’141
`
`Patent”), WebPower,
`
`Inc. v. WAG Acquisition, LLC,
`
`IPR2016-01238 (“the
`
`WebPower IPR”), which was instituted on January 4, 2017. This motion and the
`
`accompanying Petition are timely filed within one-month of institution of the
`
`WebPower IPR. 37 C.F.R. § 42.122(b).1
`
`Petitioners
`
`respectfully submit
`
`that
`
`joinder and institution of
`
`their
`
`concurrently filed Petition for Inter Partes Review are appropriate for several
`
`reasons.
`
`First, the accompanying Petition is identical to the WebPower IPR petition in
`
`all material respects. The only changes are: Mandatory Notices (Section II),
`
`Certification of Grounds for Standing (Section III), Section VI, and in matters of
`
`1 Petitioners plan to request a call with the Board and Patent Owner to discuss in-
`
`part either expediting and/or curtailing Patent Owner’s preliminary response given
`
`the same prior art and evidence are presented in the concurrently filed Petition as the
`
`instituted WebPower IPR.
`
`1
`
`
`
`form. The concurrently filed Petition and the WebPower IPR petition challenge the
`
`same claims of the ’141 Patent based on the same grounds with the same prior art,
`
`evidence, and expert declaration of Nathaniel Polish, Ph.D.2
`
`Second, Petitioners request that the institution of the Petition be limited solely
`
`to the grounds instituted in the WebPower IPR. Petitioners agree to proceed solely
`
`on the grounds, evidence, and arguments advanced, or that will be advanced, in the
`
`WebPower IPR, i.e., no new substantive issues are introduced in the concurrently
`
`filed Petition.
`
`Third, if joined, Petitioners will adhere to all applicable deadlines in the
`
`WebPower IPR.3 In other words, the WebPower IPR trial schedule will not be
`
`disrupted or changed by granting joinder.
`
`Fourth, Petitioners will take an “understudy” role to ensure briefing and
`
`discovery is streamlined.4 Petitioners agree to coordinate all filings with the
`
`2 The declaration has been updated only to reflect retention by Petitioners and is
`
`otherwise identical to the declaration of Dr. Polish submitted in the WebPower IPR.
`
`3 The undersigned counsel and law firm have been retained by the Petitioners and
`
`the WebPower IPR petitioner.
`
`4 Each Petitioner will continue on this basis unless WebPower settles with Patent
`
`Owner.
`
`2
`
`
`
`WebPower IPR petitioner and each other. The Petitioners will not submit a separate
`
`filing. Additionally, Petitioners will not seek additional discovery including any
`
`depositions or deposition time, and will coordinate deposition questioning and
`
`hearing presentations with the WebPower IPR petitioner and each other. Given these
`
`provisions, briefing and discovery will simplified.
`
`Fifth, because the Patent Owner has asserted the ’141 Patent in district court
`
`actions against the Petitioners, joinder will help efficiently resolve the disputes
`
`among the parties. In the district court actions, WAG has asserted in total against
`
`Petitioners claims 10, 14, 15, 17, 18, 19, 20, 21, and 24 of the ’141 Patent, while in
`
`WebPower IPR the Board has instituted on claims 10-23 of the ’141 Patent. Thus,
`
`except for a single claim, joinder could resolve the dispute relating to the ’141 Patent
`
`between the parties. Joinder thus will promote efficient adjudication across multiple
`
`fora.
`
`Finally, joinder also will not prejudice any party. To the contrary, joinder will
`
`promote the just, speedy and inexpensive determination of the proceedings. The
`
`WebPower IPR petitioner consents to Petitioners’ joinder. And, because joinder will
`
`not add any new substantive issues, not affect the schedule, not burden deponents,
`
`or not increase filings, there will be little-to-no additional costs to Patent Owner. On
`
`the other hand, denial of joinder will prejudice Petitioners: their interests may not be
`
`adequately protected in the WebPower IPR, particularly if WebPower settles with
`
`3
`
`
`
`the Patent Owner. Petitioners should be allowed to join in a proceeding affecting a
`
`patent asserted against each of them in three separate district court litigations, as
`
`detailed below.
`
`II.
`
`Background and Related Proceedings
`
`WAG Acquisition, LLC purports to be the owner of the ’141 Patent and
`
`related patents (U.S. Patent No. 8,327,011 (the “’011 Patent”); U.S Patent No.
`
`8,185,611 (the “’611 Patent”); and U.S. Patent No. 8,364,839 (the “’839 Patent”)).
`
`The Litigations. The Patent Owner has asserted the ’141 Patent, as well as
`
`some or all of these related patents, in nine pending litigations filed in the District of
`
`New Jersey as follows: WAG Acquisition, LLC v. Sobonito Investments, Ltd., No.
`
`2:14-cv-1661 (D.N.J.); WAG Acquisition, LLC v. Multi Media, LLC, No. 2:14-cv-
`
`2340 (D.N.J.); WAG Acquisition, LLC v. Data Conversions, Inc., No. 2:14-cv-2345
`
`(D.N.J.); WAG Acquisition, LLC v. Flying Crocodile, Inc., 2:14-cv-2674 (D.N.J.);
`
`WAG Acquisition, LLC v. Gattyàn Group S.à r.l, No. 2:14- cv-2832 (D.N.J.); WAG
`
`Acquisition, LLC v. FriendFinder Networks Inc., No. 2:14-cv-3456 (D.N.J.); WAG
`
`Acquisition, LLC v. Vubeology, Inc., No. 2:14-cv-4531 (D.N.J.); WAG Acquisition,
`
`LLC v. Gamelink, Int’l Ltd. et al, No. 2:15-cv-3416 (D.N.J.); and WAG Acquisition,
`
`LLC v. WebPower, Inc., No. 2:15-cv-3581 (D.N.J.).
`
`One other litigation, WAG Acquisition, LLC v. MFCXY, Inc., No. 2:14-cv-
`
`03196 (D. N.J.), settled and has been dismissed.
`
`4
`
`
`
`The IPRs. IPR petitions have been filed against the ’141 Patent. On April
`
`14, 2015, the Petitioners with Duodecad IT Services Luxembourg S.à r.l.
`
`filed a
`
`petition for Inter Partes Review on the ’141 Patent in FriendFinder Networks, Inc.
`
`et al. v. WAG Acquisition, LLC, IPR2015-01037. The Board declined to institute trial
`
`because it determined that a primary reference was not established as “accessible to
`
`one of ordinary skill exercising reasonable diligence.” IPR2015-01037, Paper 8 at
`
`8-95; id., at Paper 10.
`
`On June 21, 2016, WebPower, Inc. filed a petition for Inter Partes Review on
`
`the ’141 Patent in IPR2016-01238, and the Board instituted trial on January 4, 2017.
`
`See IPR2016-01238, Paper 7. The instant motion and concurrently filed Petition seek
`
`to join this IPR petition filed by WebPower, Inc.
`
`Additionally, on August 22, 2016, I.M.L. SLU, filed a petition for Inter Partes
`
`Review on the ’141 Patent in IPR2016-01656, which petition currently is pending.
`
`Finally, there have been IPR petitions filed against the related patents (’011
`
`Patent,’611 Patent, and ’839 Patent).
`
`5 The Board also found that another reference was insufficient for claim 19 of the
`
`’141 Patent. IPR2015-01037, Paper 8 at 12.
`
`5
`
`
`
`• ’011 Patent – IPR2015-01033 and IPR2016-01161, neither of which
`
`were instituted; and IPR2016-01655, which petition currently is
`
`pending;
`
`• ’611 Patent – IPR2015-01035 and IPR2016-01162, neither of which
`
`were instituted,6 and IPR2016-01657, which currently is pending; and
`
`•
`
`’839 Patent – IPR2015-01036, which was instituted and reached final
`
`decision on October 20, 2016 (Paper 17);7 IPR2016-01239, which was
`
`instituted on December 27, 2016 (Paper 7);8 and IPR2016-01658,
`
`which currently is pending.
`
`III.
`
`Statement of Reasons for Requested Relief
`
`A.
`
`Legal Standard.
`
`The time limitation set forth in 35 U.S.C. § 315(b) does not apply to a request
`
`for joinder. 35 U.S.C. §§ 315(b)-(c); 37 C.F.R. § 42.122(b). Accordingly, the instant
`
`Motion for Joinder and the accompanying Petition are appropriate, because they are
`
`6 IPR2015-01035 has a motion for reconsideration pending.
`
`7 No party appealed the Board’s Final Decision.
`
`8 Petitioners are concurrently filing a Motion for Joinder (and petition) to this
`
`recently instituted Inter Partes Review.
`
`6
`
`
`
`being timely submitted within one month of the January 4, 2017 institution date of
`
`the WebPower IPR.
`
`The Board has discretion to join a properly filed IPR petition to a previously
`
`instituted IPR proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). “The Board
`
`will determine whether to grant joinder on a case-by-case basis, taking into account
`
`the particular facts of each case, substantive and procedural issues, and other
`
`considerations.” Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper
`
`17, at 3. The movants bear the burden of proof in establishing 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 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.
`
`Dell, IPR2013-00385, Paper 17, at 4. All of the above four factors heavily favor
`
`joinder, as outlined below.
`
`1.
`
`Joinder is appropriate.
`
`The Board previously has explained that it “takes into account the policy
`
`preference for joining a party that does not present new issues that might complicate
`
`7
`
`
`
`or delay an existing proceeding.” Dell, IPR2013-00385, Paper 17 at 10 (citing 157
`
`CONG. REC. S1376 (Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates
`
`that joinder will be allowed as of right – if an inter partes review is instituted on the
`
`basis of a petition . . . .”)).
`
`Here, because Petitioners are filing a petition and declaration materially
`
`identical
`
`to the already-instituted WebPower IPR,
`
`institution and joinder are
`
`warranted under 35 U.S.C. §§ 314 and 315(c). Moreover, as explained below, no
`
`new grounds of unpatentability are asserted, the WebPower IPR trial schedule will
`
`not be affected i.e., the WebPower IPR trial schedule will remain the same, and
`
`Petitioners’ understudy role (and accompanying provisions) demonstrate that
`
`briefing and discovery will be simplified.
`
`A denial of joinder would prejudice Petitioners. Petitioners’ interests, as
`
`parties against whom the ’141 Patent has been asserted in multiple district court
`
`actions, may not be adequately represented if the WebPower IPR is terminated prior
`
`to a final written decision. WAG has asserted in total claims 10, 14, 15, 17, 18, 19,
`
`20, 21, and 24 of the ’141 Patent against Petitioners, and the Board in the WebPower
`
`IPR has instituted on claims 10-23 of the ’141 Patent. Thus, except for one claim,9
`
`9 Moreover, given the overlap between claims 10-23 and claim 24, any invalidity
`
`findings as to those claims will be informative as to the remaining claim.
`
`8
`
`
`
`joinder could resolve the dispute relating to the ’141 Patent between the parties.
`
`Accordingly, Petitioners have an interest that the WebPower IPR reaches a final
`
`determination in order to facilitate a timely and efficient resolution to the
`
`controversy between Petitioners and Patent Owner. Addressing the ’141 Patent’s
`
`validity in this proceeding serves the interests of justice.
`
`And, there is no prejudice to any party. The WebPower IPR petitioner has
`
`consented to Petitioners’ joinder, and because Petitioners are relying on the same
`
`prior art, same arguments, and same evidence as that in the WebPower IPR,
`
`Petitioners’ joinder in an understudy role (discussed below) will not impact Patent
`
`Owner, create any additional expense, or cause any delay. Addressing patent
`
`validity in this proceeding serves the parties’ and Board’s interest.
`
`2.
`
`No new grounds of unpatentability are being asserted.
`
`In this case,
`
`the accompanying Petition is materially identical
`
`to the
`
`WebPower IPR petition and Petitioners seek institution solely on the grounds,
`
`evidence, and arguments advanced, or that will be advanced, in the already-instituted
`
`WebPower IPR. No new issues will be presented, no new claims will be challenged
`
`and no new grounds will be added to the WebPower IPR proceeding if joinder is
`
`allowed. Nor will any claim constructions be submitted.
`
`Petitioners have retained the same expert, Nathaniel Polish, Ph.D., who is
`
`submitting a declaration materially identical to that which he submitted in the
`
`9
`
`
`
`WebPower IPR. The Petition does not seek to broaden the scope of the WebPower
`
`IPR in any way. Thus, joinder will not affect the substance of the WebPower IPR,
`
`or result in any enlargement of the scope or grounds of it.
`
`3.
`
`Joinder will have no impact on the trial schedule.
`
`Petitioners will adhere to all applicable deadlines in the trial schedule in the
`
`WebPower IPR. Thus, the WebPower IPR trial schedule will not be disrupted or
`
`changed by granting joinder.
`
`4.
`
`Briefing and discovery will be simplified.
`
`To simplify briefing and discovery, Petitioners agree to:
`
`1.
`
`Adhere to the Scheduling Order issued in the WebPower IPR, including
`
`all applicable deadlines.
`
`2.
`
`Submit all papers as “consolidated” filings with the WebPower IPR
`
`petitioner. Petitioners would not submit any separate filings to the
`
`Board unless WebPower settles with Patent Owner.
`
`3.
`
`Refrain from requesting or
`
`reserving any additional discovery,
`
`including any depositions or deposition time;
`
`4. Will not seek to submit any new expert declarations from those entered
`
`by WebPower unless WebPower settles with Patent Owner and that
`
`settlement contractually prevents WebPower’s expert from continuing
`
`to support Petitioners.
`
`10
`
`
`
`5.
`
`Refrain from requesting or reserving additional oral argument hearing
`
`time.
`
`6.
`
`Take an “understudy” role as long as the WebPower IPR petitioner
`
`remains in the proceeding.
`
`Given the foregoing provisions, briefing and discovery will be simplified.
`
`These provisions are also consistent with previously granted joinder motions.10
`
`B.
`
`Joinder will promote efficiency and conserve resources.
`
`Because the claims instituted in the WebPower IPR almost completely
`
`overlap with the claims asserted against Petitioners in the district court litigation,
`
`joinder will efficiently resolve the dispute relating to the ’141 Patent between the
`
`parties.
`
`10 See Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19, at 8 (July 9,
`
`2014); Gillette Co. v. Zond, IPR2014-01016, Paper 13, at 4 (Nov. 10, 2014);
`
`Nintendo of Am. et al. v. Babbage Holdings, LLC, IPR2015-00568, Paper No. 12, at
`
`3 (Mar. 18, 2015); Innopharma Licensing, Inc. et al. v. Senju Pharm. Co., IPR2016-
`
`00089, Paper No. 13, at 7 (Feb. 25, 2016); Vizio, Inc. v. Innovative Display Techs.,
`
`LLC, IPR2016-00910, Paper No. 8, at 6 (Oct. 4, 2016); Amerigen Pharm. Ltd. v.
`
`UCB Pharma GMBH, IPR2016-01665, Paper No. 8, at 5-6 (Dec. 7, 2016).
`
`11
`
`
`
`Moreover, Petitioners present arguments and supporting evidence that are
`
`materially identical to the WebPower IPR, the Board can efficiently resolve all
`
`grounds in both the instant Petition and WebPower IPR in a single proceeding. And,
`
`this single proceeding will allow for consolidated submissions and discovery, further
`
`conserving resources.
`
`Thus, joinder will conserve resources and promote efficiencies not only for
`
`the Board, but also for the district court.
`
`IV. Conclusion
`
`For the foregoing reasons, Petitioners respectfully request that the Board
`
`institute the Petition for Inter Partes Review of U.S. Patent No. 8,122,141 and
`
`joinder with IPR2016-01238. Although it is believed that no fee is required for this
`
`Motion, the Commissioner is hereby authorized to charge any additional fees which
`
`may be required for this Motion to Deposit Account of Venable LLP, Deposit
`
`Account No. 220261.
`
`Dated: January 27, 2017
`
`Respectfully submitted,
`By: /Frank M. Gasparo/
`Frank M. Gasparo
`Registration No. 44,700
`Venable LLP
`Rockefeller Center
`1270 Avenue of the Americas, 24th Flr
`New York, NY 10020
`
`12
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 27, 2017, I caused a true and correct copy of
`the foregoing materials:
`
`• Petitioners’ Motion for Joinder
`
`to be served via:
`
`Via Federal Express (and email addresses below)
`
`Ernest D. Buff & Associates, LLC
`ebuff@edbuff.com
`231 Somerville Road
`Bedminster, NJ 07921
`
`Ronald Abramson
`ronald.abramson@lewisbaach.com
`Lewis Baach PLLC
`The Chrysler Building
`405 Lexington Avenue, 62nd Floor
`New York, NY 10174
`
`By: /Frank M. Gasparo/
`Frank M. Gasparo
`Registration No. 44,700
`Venable LLP
`Rockefeller Center
`1270 Avenue of the Americas
`Twenty-Fourth Floor
`New York, NY 10020
`
`
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