Filed on behalf of: Veritas Technologies LLC
`
`
`
`
`
`
`
`
`Entered: June 28, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`VERITAS TECHNOLOGIES LLC,
`Petitioner
`v.
`REALTIME DATA LLC,
`Patent Owner
`_______________________
`Case Unassigned
`U.S. Patent No. 7,161,506
`_______________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Entered: June 28, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`VERITAS TECHNOLOGIES LLC,
`Petitioner
`v.
`REALTIME DATA LLC,
`Patent Owner
`_______________________
`Case Unassigned
`U.S. Patent No. 7,161,506
`_______________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`
`
`
`
`
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`I.
`BACKGROUND AND RELATED PROCEEDINGS ................................... 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 4
`A.
`Legal Standard ....................................................................................... 4
`B.
`Joinder will not affect the Board’s ability to timely complete
`the review. ............................................................................................. 5
`Joinder will promote efficiency by consolidating issues,
`avoiding wasteful duplication, and preventing inconsistency. ............. 7
`D. Without joinder, Petitioner may be prejudiced. .................................... 7
`E.
`Joinder will not prejudice Realtime or Dell. ......................................... 8
`IV. CONCLUSION ................................................................................................ 8
`
`
`C.
`
`
`
`
`
`i
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`CASES
`Motorola Mobility LLC v. Softview LLC,
`IPR2013-00257, Paper 10 (P.T.A.B. June 20, 2013) ........................................... 4
`
`STATUTES
`35 U.S.C. § 315(c) ................................................................................................. 1, 4
`35 U.S.C. § 316(a)(11) ............................................................................................... 6
`Pub. L. No. 112-29, 125 Stat. 284 (2011) .................................................................. 4
`
`REGULATIONS
`37 C.F.R. § 42.22 ....................................................................................................... 1
`37 C.F.R. § 42.74 ....................................................................................................... 7
`37 C.F.R. § 42.100(c) ................................................................................................. 6
`37 C.F.R. § 42.122 ................................................................................................. 1, 4
`77 Fed. Reg. 48,680 (Aug. 14, 2012) ........................................................................ 4
`
`
`ii
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`Veritas Technologies LLC (“Veritas” or “Petitioner”) submits this Motion
`
`for Joinder concurrently with a Petition for Inter Partes Review (IPR) (“Petition”),
`
`under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b), of claims 104 and
`
`105 of U.S. Patent No. 7,161,506 (“the ’506 Patent”) (Ex. 1001).
`
`Petitioner requests institution of IPR and party joinder with the pending,
`
`instituted IPR titled, Dell, Inc. v. Realtime Data LLC d/b/a IXO, Case No.
`
`IPR2017-00176 (“the Dell IPR”), based on grounds identical to those in that
`
`proceeding. Dell Inc., EMC Corporation, Hewlett-Packard Enterprise Co., and HP
`
`Enterprise Services, LLC, initiated the Dell IPR proceeding by petitioning the
`
`Board on November 14, 2016. The Board instituted the Dell IPR on May 30,
`
`2017. Petitioner timely files the Petition and this motion within one month of the
`
`institution of the Dell IPR. 37 C.F.R. § 42.122(b).
`
`Joinder will efficiently resolve the challenges presented in the Petition and
`
`the instituted grounds of the Dell IPR and will not prejudice the patent owner or
`
`the first-petitioner Dell. Intentionally, the Petition is nearly word-for-word
`
`identical to the petition in the Dell IPR in an effort to avoid multiplication of issues
`
`1
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`before the Board.1 Further, the expert declarations submitted with the Petition are
`
`from the same declarants and are essentially identical to the declarations submitted
`
`in the Dell IPR.2
`
`Should the panel join the parties, Petitioner agrees to subordinate itself,
`
`allowing Dell to lead the joined proceedings absent settlement by Dell, in line with
`
`common Board practice. Joinder with the Dell IPR would minimally affect its
`
`procedure and substance. Lead petitioner Dell has stated to Petitioner that it does
`
`not oppose joinder.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`The ’506 patent is assigned on its face to Realtime Data LLC (“Realtime” or
`
`“Patent Owner”). Realtime has asserted the ’506 patent against Petitioner and
`
`numerous other parties in E.D. Tex.: Realtime Data LLC v. Packeteer, Inc., filed
`
`April 18, 2008 as 6:08-cv-00144 (terminated February 2, 2010); Realtime Data
`
`LLC v. Morgan Stanley, filed July 22, 2009 as 6:09-cv-00326 (terminated
`
`September 21, 2011); Realtime Data LLC v. CME Group Inc., filed July 22, 2009
`
`
`1 The only differences between the Dell IPR petition and the Petition are shown in
`
`redline in Ex. 1031.
`
`2 The only differences between the declarations supporting the Dell IPR petition
`
`and the declarations supporting the Petition are shown in redline in Exs. 1032–33.
`
`2
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`as 6:09-cv-00327 (terminated September 21, 2011); Realtime Data LLC v.
`
`Thomson Reuters, filed July 23, 2009 as 6:09-cv-00333 (terminated September 21,
`
`2011); Realtime Data LLC v. T-Mobile, USA, Inc., filed September 23, 2010 as
`
`6:10-cv-00493 (terminated March 28, 2013); Realtime Data LLC v. Hewlett
`
`Packard Enterprise Co., filed February 26, 2016 as 6:16-cv-00086; Realtime Data
`
`LLC v. Savvis Communications Corp., filed February 26, 2016 as 6:16-cv-00087;
`
`Realtime Data LLC v. Oracle America, Inc., filed February 26, 2016 as 6:16-cv-
`
`00088 (terminated May 15, 2017); Realtime Data LLC v. Dell Inc., filed February
`
`26, 2016 as 6:16-cv-00089; Realtime Data LLC v. Silver Peak Systems, Inc., filed
`
`February 26, 2016 as 6:17-cv-00071 (transferred April 25, 2017 to N.D. Cal. as
`
`4:17-cv-02373); Realtime Data LLC v. Rackspace US, Inc., filed June 29, 2016 as
`
`6:16-cv-00961; Realtime Data LLC v. Fujitsu America, Inc., filed July 21, 2016 as
`
`6:16-cv-01035 (transferred April 13, 2017 to N.D. Cal. as 3:17-cv-02109); and
`
`Realtime Data LLC v. Vembu Technologies, Inc., filed July 22, 2016 as 6:16-cv-
`
`01037 (terminated November 14, 2016). Motions to stay the proceedings pending
`
`inter partes review have been granted in at least the 6:16-cv-00086, -00087, and -
`
`00089 actions. In addition to the Dell IPR, the ’506 patent is currently also being
`
`challenged by Teradata Operations, Inc. in IPR2017-00806 (filed January 30,
`
`2017), and by NetApp, Inc. and Rackspace US, Inc. in IPR2017-01660 (filed June
`
`22, 2017).
`
`3
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`The Leahy-Smith America Invents Act (AIA) allows an IPR party to be
`
`joined with a preexisting IPR. See generally Pub. L. No. 112-29, 125 Stat. 284
`
`(2011). The statutory provision governing IPR joinder, 35 U.S.C. § 315(c), reads:
`
`(c) JOINDER. – If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
`
`Under its discretion, the Board considers how joinder will affect the
`
`substance and procedure of the preexisting proceeding. See, e.g., Decision on
`
`Motion for Joinder, Motorola Mobility LLC v. Softview LLC, IPR2013-00257,
`
`Paper 10 (P.T.A.B. June 20, 2013). In its response to comments on the Board’s
`
`proposed joinder rule, 37 C.F.R. § 42.122, the PTO indicated that “joinder would
`
`allow the Office to consolidate issues and to account for timing issues that may
`
`arise” when instituting multiple proceedings involving the same patent. Changes
`
`to Implement Inter Partes Review Proceedings, 77 Fed. Reg. 48,680, 48,707 (Aug.
`
`14, 2012). Here, joining Petitioner to the Dell IPR is appropriate.
`
`4
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`
`B.
`
`Joinder will not affect the Board’s ability to timely complete the
`review.
`Intentionally, the Petition is identical to the petition in the Dell IPR in an
`
`effort to avoid multiplication of issues. For simplicity and efficiency, Petitioner
`
`has essentially copied Dell’s IPR petition. See Ex. 1031 (redline comparison).
`
`Petitioner does not seek to reintroduce grounds or combinations of prior art or
`
`claims not instituted in the Dell IPR, and seeks only to join the proceeding as
`
`instituted. Petitioner is retaining the same experts as Dell, Drs. Charles D.
`
`Creusere and Scott Bennett. The supporting declarations of Drs. Creusere and
`
`Bennett are essentially identical to the declarations they previously submitted in
`
`the Dell IPR. See Exs. 1032-33 (redline comparisons).
`
`Realtime should not require any discovery beyond that which it may need in
`
`the Dell IPR—nor should the Board permit any. The Petition presents no new
`
`substantive issues relative to the Dell IPR and does not seek to broaden the scope
`
`of the Dell IPR or request additional discovery. Any new evidence merely
`
`supports arguments already before the Board. For efficiency’s sake, if joined,
`
`Petitioner and Dell have agreed that Dell’s counsel will act as the lead counsel as
`
`long as Dell remains in the proceeding.
`
`5
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`
`Joinder will not impact the Board’s ability to complete its review in a timely
`
`manner.3 Section 316(a)(11) provides that IPR proceedings should be completed
`
`and the Board’s final decision issued within one year of institution of the review.
`
`See also 37 C.F.R. § 42.100(c). Here, joinder will not affect the Board’s ability to
`
`issue its final determination within one year because Petitioner agrees to
`
`substantially the same arguments instituted in the Dell IPR, retains the same expert
`
`and submits an essentially identical declaration, and agrees to consolidated
`
`discovery. Indeed, the Petition includes only those grounds on which the Dell
`
`petitioned for IPR, and the invalidity grounds were largely copied verbatim from
`
`Dell’s IPR petition.
`
`In view of the above, Petitioner submits that the current schedule in the Dell
`
`IPR can stay unchanged. At most, the Board can add an additional deadline for
`
`Realtime to respond to this Motion, but this deadline will not impact other
`
`deadlines in the schedule.
`
`
`3 Petitioner notes that 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
`
`42.100(c) also grant the Board flexibility to extend the one-year period by up to six
`
`months in the case of joinder, if needed.
`
`6
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`
`C.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioner presents nearly identical supporting evidence as the Dell IPR and
`
`essentially identical arguments for patent invalidity as instituted in the Dell IPR.
`
`Joinder will simplify briefing and discovery. Given that the Dell IPR and the
`
`Petition address the same prior art and grounds for rejection of the same claims,
`
`joining these proceedings allows for joint submissions and discovery, further
`
`streamlining the proceedings. This should promote efficiency and conserve the
`
`Board’s and the parties’ resources. By contrast, the determination of the same
`
`patent validity questions for the ’506 patent in multiple proceedings would
`
`duplicate efforts, and create a risk of inconsistent results. Joinder avoids that.
`
`D. Without joinder, Petitioner may be prejudiced.
`Petitioner may be prejudiced if it is not permitted to join in the Dell IPR.
`
`Realtime has asserted the ’506 patent against Petitioner in pending litigation. See
`
`generally Realtime Data LLC v. Savvis Communications Corp., Case No. 6:16-cv-
`
`00087 (E.D. Tex.). Petitioner should be permitted to join the pending IPR to
`
`participate in proceedings affecting a patent asserted against it, and thereby
`
`allowed to continue the proceedings should Dell and Realtime settle under 37
`
`C.F.R. § 42.74 before a final written decision is issued.
`
`7
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`
`E.
`Joinder will not prejudice Realtime or Dell.
`Permitting joinder will not prejudice Realtime or Dell and will in fact
`
`streamline the proceedings and reduce the costs and burdens on the parties for
`
`several reasons. First, joinder will most certainly decrease the number of papers
`
`the parties must file by eliminating a duplicative proceeding. Second, joinder will
`
`also reduce by half the time and expense for depositions and other discovery
`
`required in separate proceedings. Third, joinder creates case management
`
`efficiencies for the Board and parties without any prejudice to Realtime. Fourth,
`
`Petitioner raises issues already before the Board and long known to Realtime.
`
`Fifth, lead petitioner Dell does not oppose joinder. Addressing the same patent
`
`validity questions in a single proceeding with a statutory deadline serves the
`
`parties’ and Board’s interests.
`
`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Dell
`
`IPR. Petitioner files under the statutory joinder provisions as contemplated by the
`
`AIA. Joinder will simplify the issues and promote efficiency, justice, and speed.
`
`8
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`
`Petitioner respectfully requests the accompanying IPR petition on U.S.
`
`Patent No. 7,161,506 be instituted and joinder be granted with Dell Inc. v. Realtime
`
`Data LLC d/b/a IXO, Case No. IPR2017-00176.4
`
`
`
`Dated: June 28, 2017
`
`
`
`Respectfully submitted,
`/Jonathan D. Link/
`Jonathan D. Link (Reg. No. 41,548)
`Jonathan.Link@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street NW, Suite 1000
`Washington, DC 20004
`T: (202) 637-2243, F: (202) 637-2201
`
`Lisa K. Nguyen (Reg. No. 58,018)
`Lisa.Nguyen@lw.com
`LATHAM & WATKINS LLP
`140 Scott Drive
`Menlo Park, CA 94025
`T: (650) 328-4848, F: (650) 463-2600
`
`Counsel for Petitioner Veritas
`Technologies LLC
`
`
`4 Although Petitioner believes no fee is required for this Motion, Petitioner
`
`authorizes the Commissioner to charge any additional fees required for this
`
`Motion, to Deposit Account No. 506269.
`
`9
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §42.6(e), I certify that on this 28th day of June,
`
`2017, a copy of Motion For Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. §§
`
`42.22, and 42.122(b) was served by FEDERAL EXPRESS overnight delivery on
`
`the Patent Owner at the official correspondence address for U.S. Patent No.
`
`7,161,506 shown on PAIR as follows:
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, DC 20005
`
`and at an additional address likely to effect service:
`
`William P. Rothwell
`NOROOZI PC
`2245 Texas Drive, Suite 300
`Sugar Land, TX 77479
`
`Courtesy copies of the foregoing were further served by FEDERAL
`
`EXPRESS overnight delivery on the Patent Owner’s litigation counsel as follows:
`
`Marc A. Fenster
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`
`Courtesy copies of the foregoing were further served by FEDERAL
`
`EXPRESS overnight delivery on the lead counsel of record for the Petitioners in
`
`Dell, Inc. v. Realtime Data LLC d/b/a IXO, Case No. IPR2017-00176, as follows:
`
`1
`
`
`
`Motion for Joinder
`U.S. Patent No. 7,161,506
`
`
`Andrew R. Sommer
`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, D.C. 20006-3817
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Jonathan D. Link/
`Jonathan D. Link (Reg. No. 41,548)
`Jonathan.Link@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street NW, Suite 1000
`Washington, DC 20004
`T: (202) 637-2243, F: (202) 637-2201
`
`Counsel for Petitioner Veritas
`Technologies LLC
`
`
`
`2
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
