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
`
`________________
`
`Case IPR2017-00786
`Patent No. 8,122,141
`
`Issue Date: February 21, 2012
`
`Title: STREAMING MEDIA BUFFERING SYSTEM
`________________
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER
`
`
`
`________________
`
`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
`
`________________
`
`Case IPR2017-00786
`Patent No. 8,122,141
`
`Issue Date: February 21, 2012
`
`Title: STREAMING MEDIA BUFFERING SYSTEM
`________________
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER
`
`
`
`U.S. Patent No. 8,122,141; Case IPR2017-00786
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s sole argument against institution of Trial involving U.S.
`
`Patent No. 8,122,141 (the “‘141 Patent”) and joinder of it with IPR2016-01238
`
`(“the WebPower IPR”) is that the present Petition is a “second bite at the apple.”
`
`Paper 8 at 1. This is incorrect because the Petition is not based on the prior IPR
`
`(IPR2015-01037) given the main prior art references relied on here (Chen and
`
`Carmel) are different than in the prior IPR (Hollfelder and Su). Put another way,
`
`Petitioners copied verbatim the challenges presented in the WebPower IPR.
`
`Patent Owner did not file a Preliminary Response for the present Petition.
`
`Thus, Trial should be instituted at least for the same reasons as in the WebPower
`
`IPR because the Petition is based on the same grounds and combinations of prior
`
`art that the Board considered in deciding to institute the WebPower IPR. Paper 3
`
`at 8-9.
`
`The only issue before the Board then is whether to grant joinder, which is
`
`evaluated under four factors. Id. at 8-9. In opposition, Patent Owner did not
`address any of the factors and Petitioners’ arguments. Id. at 7-12. Thus, it is
`
`undisputed that no new substantive issues are introduced, and the present
`
`proceeding will not impact the trial schedule. Id. at 9-10. Nor does Patent Owner
`
`contest that joinder will promote efficiency. For example, it is more efficient now
`
`for the Board to grant joinder and avoid parallel review at the district court given
`
`the estoppel effect and the almost complete overlap of instituted and asserted
`claims. Id. at 8-9.
`
`Accordingly, Trial should be instituted and joined with the WebPower IPR.
`1
`
`
`
`U.S. Patent No. 8,122,141; Case IPR2017-00786
`
`II.
`
`JOINDER IS FAVORED, APPROPRIATE, AND EFFICIENT
`Patent Owner does not refute any of the four factors (also known as the Dell
`
`factors) outlined by Petitioners in favor of joinder. Paper 3 at 8-9. This includes
`
`that the present Petition does not introduce any new substantive issues as compared
`to the WebPower IPR. Id. at 9-10. Under these circumstances, the Board is
`“mindful of a policy preference for joining a party that does not present new
`issues.” Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc. IPR2014-00556,
`
`Paper 19 at 6 (July 9, 2014) (emphasis added). Joinder will also have no impact on
`
`the trial schedule and briefing as well as discovery will be simplified. Paper 3 at
`
`10. Patent Owner concedes this by failing to respond.
`
`Efficiency further weighs heavily in favor of granting joinder. In the district
`
`court actions, WAG has asserted against Petitioners claims 10, 14, 15, 17, 18, 19,
`
`20, 21, and 24 of the ’141 Patent, while in the WebPower IPR the Board has
`instituted on claims 10-23 of the ’141 Patent. Id. at 8-9. Thus, it is more efficient
`
`for Petitioners and Patent Owner to hash this out now at the Board than burden the
`
`district court given Petitioners will be estopped at the district court on the grounds
`decided in the Final Written Decision in the WebPower IPR. Baker Hughes Inc. v.
`
`Packers Plus Energy Servs, IPR2016-01506, Paper No. 19 at 10-11 (Feb. 9, 2017)
`
`(“we seek to achieve finality of review at the Board and avoid parallel or serial
`
`review at the district court”).
`
`III. THE PETITION IS NOT A SECOND BITE
`
`A “second bite at the apple” is when the petitioner uses a previous institution
`
`decision as a “as a guide to remedy deficiencies in the earlier filed petition.”
`2
`
`
`
`U.S. Patent No. 8,122,141; Case IPR2017-00786
`
`Samsung Elec. Co., Ltd. V. Affinity Labs of Texas, LLC, IPR2015-00820, Paper 12
`at 4; see also LG Elecs. Inc. v. ATI Techs., IPR2015-01620, Paper 10 at 8. This is
`
`not the case here. Petitioners did not use the prior institution decision to craft new
`
`arguments – the arguments were crafted by WebPower. Nor could Petitioners have
`
`the arguments (and supporting expert declaration) used in the WebPower IPR as
`
`they did not exist until the WebPower IPR was filed.
`Oracle Corp. v. Crossroads Sys, Inc. IPR2015-00854, Paper No. 14 (Sept.
`
`15, 2015) is instructive. There, the patent owner argued that Oracle was
`
`attempting to address deficiencies in its earlier petition, and that the petition was
`“nothing more than a second bite at the apple .” Id. at 3. This is the identical
`argument that Patent Owner is making here (see Paper 8 at 4), and it was squarely
`
`rejected by four judges. The Board held that Oracle “did not base the Petition on
`
`the . . . [prior] IPR Petition, nor did it tailor the present Petition specifically to
`
`address issues raised in the institution decision in that earlier case. Rather, it copied
`
`verbatim the challenges presented in the . . . [instituted] IPR Petition[.]” Id. at 4.
`
`The same is true here. Petitioners did not base the Petition on the prior
`
`petition in IPR2015-01037 and did not tailor the Petition to address issues raised in
`
`IPR2015-01037 because completely different primary references are relied on here
`(Chen and Carmel) as compared to the prior IPR (Hollfelder and Su). Compare
`IPR2017-00786, Paper 2, 5-6 with IPR2015-01037, Paper 2, at 3-4; Baker Hughes
`
`Inc. v. Packers Plus Energy Servs, IPR2016-01506, Paper No. 19 at 8-9 n.6. (Feb.
`
`9, 2017) (no “second bite at the apple” where “primary references are different”);
`Oxford Nanopore Techs. Ltd. v. Univ. of Washington, IPR2015-00057, Paper 10 at
`3
`
`
`
`U.S. Patent No. 8,122,141; Case IPR2017-00786
`
`20-21 (Apr. 27, 2015) (granting joinder over “second bite at the apple” argument
`because different prior art); Weatherford v. Packers Plus Energy Servs, Inc.,
`
`IPR2016-01514, Paper No. 23 at 16-17 n.4 (Feb. 22, 2017) (no “multiple bites at
`
`the invalidity apple” when only one reference different from the prior petition).
`
`Rather, Petitioners substantively copied the petition drafted by WebPower.
`
`Additionally, the Board in IPR2015-01037 found that Su was not established
`
`to be prior art and did not reach the merits for any of the challenged claims but
`
`one. IPR2015-01037, Paper 8 at 12. As such, the present Petition cannot be
`
`considered a “second bite at the apple.” See e.g., CBM2014-00180, Paper 14 at 13
`
`(“[W]e would not exercise our discretion to deny the Petition, given that the Board
`
`did not reach the merits of the unpatentability arguments[.]”) (Jefferson, T.).
`
`The cases cited by Patent Owner are not relevant to the question before the
`
`Board. In two of those cases, joinder was denied because the earlier proceeding
`was no longer pending, in other words there could be no joinder. See IPR2016-
`
`00414, Paper 16 at 5; IPR2015-00262, Paper 10 at 5. The remaining cases were
`
`same party joinder issues in which the same party that filed the first petition sought
`
`joinder of their second petition; the petitions sought to add grounds of patentability
`
`and did not present substantively identical issues – none of which are present here.
`See IPR2015-01620, Paper 10 at 2, 9; IPR2015-00820, Paper 12 at 2; IPR2014-
`
`00950, Paper 12 at 1, 2, 4-5; IPR2015-00760, Paper 14 at 3, 8. Even one case
`
`cited by Patent Owner when the second petition presented identical issues and
`sought to join a proceeding brought by another party, joinder was granted. See
`Par Pharm. V. Novartis AG, IPR2016-01059, Paper 19 at 14.
`4
`
`
`
`U.S. Patent No. 8,122,141; Case IPR2017-00786
`
`IV. PETITIONERS WILL BE PREJUDICED WITHOUT JOINDER
`
`A denial of joinder will prejudice Petitioners. Petitioners’ interests may not
`
`be adequately protected in the WebPower IPR if WebPower settles with 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. Petitioners
`
`otherwise would be forced to litigate the same prior art on the same claims in the
`
`district court when those issues could be resolved in the first instance at the Board.
`
`Granting joinder, on the other hand, will not unduly burden the Patent
`
`Owner or Board; it will streamline the issues between the parties by ensuring that
`
`IPR2016-01238 will reach a Final Decision; and it will estop Petitioners from
`
`asserting those issues resolved in the Final Written Decision in the district court.
`
`In sum, because joinder will not add any new substantive issues, not affect
`
`the trial schedule, not burden Patent Owner, and improve efficiency, joinder is
`
`appropriate.
`
`Accordingly, Petitioners respectfully request joinder be granted.
`
`Dated: February 27, 2017
`
`Respectfully submitted,
`By: /Frank M. Gasparo/
`Frank M. Gasparo
`Registration No. 44,700
`
`5
`
`
`
`U.S. Patent No. 8,122,141; Case IPR2017-00786
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 27, 2017, I caused a true and correct copy
`of the foregoing materials:
`
`• Reply in Support of Motion for Joinder
`
`to be served via:
`
`Via Email
`
`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
`
`6
`
`
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