Snap’s Motion for Joinder
`Filed: August 22, 2019
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`Filed on behalf of: Snap Inc.
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`By: Yar Chaikovsky (Snap-Blackberry-PH-IPR@paulhastings.com)
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`Chad Peterman (Snap-Blackberry-PH-IPR@paulhastings.com)
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`Paul Hastings LLP
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SNAP INC.,
`Petitioner
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`v.
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`BLACKBERRY LIMITED
`Patent Owner
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`U.S. Patent No. 8,209,634
`IPR2019-00938
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`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2019-00925
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`Filed: August 22, 2019
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`Filed on behalf of: Snap Inc.
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`By: Yar Chaikovsky (Snap-Blackberry-PH-IPR@paulhastings.com)
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`Chad Peterman (Snap-Blackberry-PH-IPR@paulhastings.com)
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`Paul Hastings LLP
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SNAP INC.,
`Petitioner
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`v.
`
`BLACKBERRY LIMITED
`Patent Owner
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`
`
`U.S. Patent No. 8,209,634
`IPR2019-00938
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`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2019-00925
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`TABLE OF CONTENTS
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`Case IPR2019-00938
`Snap’s Motion for Joinder
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`Page
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`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`I.
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`A.
`Legal Standard ...................................................................................... 3
`B.
`Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder ................................................................................. 3
`1.
`Joinder with the Facebook Petition is Appropriate ..................... 4
`2.
`Petitioner Does Not Propose New Grounds of
`Unpatentability ............................................................................ 5
`Joinder Will Not Negatively Impact the Facebook
`Proceeding Trial Schedule .......................................................... 5
`Procedures to Simplify Briefing and Discovery ......................... 6
`4.
`IV. CONCLUSION ................................................................................................ 8
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`3.
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`- i -
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`Case IPR2019-00938
`Snap’s Motion for Joinder
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`
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Dell, Inc. v. Network-1 Security Sols., Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013) ........................................................... 3
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`Facebook, Inc., Instagram, LLC and WhatsApp Inc. v. BlackBerry
`Limited,
`IPR2019-00925 ..................................................................................................... 1
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper No. 12 (June 1, 2017) ...................................................... 1
`LG v. Memory Integrity, LLC.,
`IPR2015-01353, Paper No. 11 (Oct. 5, 2015) .............................................. 3, 5, 7
`Noven Pharm., Inc. v. Novartis AG,
`IPR2014-00550, Paper No. 38 (Apr. 10, 2015) .................................................... 7
`Par Pharm., Inc. v. Novartis AG,
`IPR2016-01023, Paper No. 20 (Oct. 27, 2016) .................................................... 5
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (Aug. 24, 2016) ................................................... 4
`Statutes
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`Other Authorities
`37 C.F.R.
`§ 42.1(b) ............................................................................................................ 1, 4
`§ 42.22 ................................................................................................................... 1
`§ 42.53 ................................................................................................................... 7
`§ 42.122(b) ............................................................................................................ 1
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`- ii -
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`Case IPR2019-00938
`Snap’s Motion for Joinder
`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`I.
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`Pursuant to the Board’s Order (Paper 9), Snap Inc. (“Petitioner” or “Snap”)
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`respectfully submits this Motion for Joinder to join its previously filed petition in
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`the instant proceeding (Paper 2) (“the Snap petition”) with Facebook’s petition
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`(IPR2019-00925) (“the Facebook petition”) for inter partes review of U.S. Patent
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`U.S. Patent No. 8,209,634 (“the ’634 patent”).
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`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Snap
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`requests institution of the Snap petition and joinder with Facebook, Inc.,
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`Instagram, LLC and WhatsApp Inc. v. BlackBerry Limited, IPR2019-00925 (“the
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`Facebook proceeding”), which concerns the same claims 1, 4-7, 10-13, and 16-18
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`of the ’634 patent. This request is being submitted within the time set forth in 37
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`C.F.R. § 42.122(b).
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`Snap submits that the request for joinder is consistent with the policy
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`surrounding inter partes reviews, as it is the most expedient way to “secure the
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`just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. §
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`42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC., IPR2017-
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`00512, Paper No. 12 at 5–6 (June 1, 2017). The Snap petition and the Facebook
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`petition are substantially identical; they contain the same grounds (based on the
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`same prior art combinations and supporting evidence) against the same claims.
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`Further, upon joining the Facebook proceeding, Snap will act as an “understudy”
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`Case IPR2019-00938
`Snap’s Motion for Joinder
`and will not assume an active role unless the current petitioners cease to participate
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`in the instituted IPR. Accordingly, the proposed joinder will neither unduly
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`complicated the Facebook proceeding nor delay its schedule. As such, the joinder
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`will promote judicial efficiency in determining the patentability of the ’634 patent
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`without prejudice to Patent Owner.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`The ’634 patent is at issue in infringement actions against Snap and
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`Facebook in the Central District of California, Case No. 2:18-cv-01844.
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`2.
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`On April 4, 2019, Facebook filed a petition for inter partes review
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`(IPR2019-00925) requesting cancelation of claims 1, 4-7, 10-13, and 16-18 of the
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`’634 patent.
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`3.
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`On April 5, 2019, Facebook filed a petition for inter partes review
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`(IPR2019-00938) requesting cancelation of claims 1, 4-7, 10-13, and 16-18 of the
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`’634 patent.
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`4.
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`The Snap petition and the Facebook petition are substantially
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`identical; they contain the same grounds (based on the same prior art combinations
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`and supporting evidence) against the same claims. Paper 2, 2; Paper 9, 1.
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`Case IPR2019-00938
`Snap’s Motion for Joinder
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Legal Standard
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
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`inter partes review petition with another inter partes review proceeding. The
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`Board, in determining whether to exercise its discretion to grant joinder, considers
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`whether the joinder motion: (1) sets forth the reasons why joinder is appropriate;
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`(2) identifies any new grounds of unpatentability asserted in the petition; (3)
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`explains what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) addresses specifically how briefing and discovery may be
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`simplified. See Frequently Asked Question (“FAQ”) H5, available at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp (last visited Aug. 18, 2019); see also
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`Dell, Inc. v. Network-1 Security Sols., Inc., IPR2013-00385, Paper 17 at 3 (July 29,
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`2013).
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`B.
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`Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder
`All four factors weigh in favor of granting Petitioner’s motion for joinder.
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`The Snap petition is substantively identical to the Facebook petition. Snap does
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`not present any new grounds of unpatentability. Additionally, as all issues are
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`substantively identical and Snap will act as an “understudy,” joinder will have
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`minimal or no impact on the schedule of the Facebook proceeding. See LG v.
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`Memory Integrity, LLC., IPR2015-01353, Paper No. 11 at 6 (Oct. 5, 2015)
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`Snap’s Motion for Joinder
`(granting motion for joinder where petitioners requested an “understudy” role).
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`Moreover, briefing and discovery will be simplified by resolving all issues in a
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`single proceeding. Accordingly, joinder is appropriate.
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`Joinder with the Facebook Petition Is Appropriate
`1.
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`No. 12 at 9 (Aug. 24, 2016) (internal quotations and citations omitted). Here,
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`joinder with the Facebook petition is appropriate because the Snap petition
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`introduces identical arguments and the same grounds raised in the existing
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`Facebook petition (i.e., it challenges the same claims of the same patent, relies on
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`essentially the same expert declaration, and is based on the same grounds and
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`combinations of prior art submitted in the Facebook petition). Paper 2, 2. Other
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`than minor differences, such as differences related to formalities of a different
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`party filing the petition, there are no changes to the facts, citations, evidence, or
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`arguments introduced in the Facebook petition. Because these proceedings are
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`substantively identical, good cause exists for joining this proceeding with the
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`Facebook petition so that the Board, consistent with 37 C.F.R. § 42.1(b), can
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`efficiently “secure the just, speedy, and inexpensive resolution” of the Snap and
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`Facebook petitions in a single proceeding.
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`Case IPR2019-00938
`Snap’s Motion for Joinder
`Petitioner Does Not Propose New Grounds of
`Unpatentability
`The Snap petition is substantively identical to the Facebook petition (i.e.,
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`2.
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`challenging the same claims of the same patent, relying on essentially the same
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`expert declaration, and on the same grounds and combinations of prior art
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`submitted in the Facebook petition). See LG, IPR2015-01353, Paper No. 11 at 6
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`(granting institution of IPR and motion for joinder where petitioners relied “on the
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`same prior art, same arguments, and same evidence, including the same expert and
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`a substantively identical declaration”); see also Par Pharm., Inc. v. Novartis AG,
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`IPR2016-01023, Paper No. 20 at 14 (Oct. 27, 2016) (granting motion for joinder
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`where petitioners “do not assert any new ground of unpatentability that is not
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`already being considered in [an instituted IPR proceeding], rely on the same
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`arguments and evidence, and do not require any modification to the existing
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`schedule”).
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`3.
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`Joinder Will Not Negatively Impact the Facebook
`Proceeding Trial Schedule
`Joinder will have minimal impact, if any, on the Facebook proceeding
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`because the Snap petition presents no new issues or grounds of unpatentability.
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`See LG, IPR2015-01353, Paper No. 11 at 6 (granting IPR and motion for joinder
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`where “joinder should not necessitate any additional briefing or discovery from
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`Patent Owner beyond that already required in [the original IPR]”). Further,
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`Case IPR2019-00938
`Snap’s Motion for Joinder
`Petitioner explicitly consents to any trial schedule the Board issues in the Facebook
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`proceeding. There are no new issues for the Board to address, and Patent Owner
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`will not be required to present any additional responses or arguments.
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`Patent Owner’s Response will also not be negatively impacted because the
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`issues presented in the Snap petition are identical to the issues presented in the
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`Facebook petition. Patent Owner will not be required to provide any additional
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`analysis or arguments beyond what it will already provide in responding to the
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`petition in the Facebook proceeding. Also, because the Snap petition relies on the
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`same expert and the same declaration, only a single deposition is needed for the
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`proposed joined proceeding.
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`Accordingly, joinder with the Facebook proceeding would not unduly
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`burden or negatively impact the trial schedule the Board issues in the Facebook
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`proceeding.
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`Procedures to Simplify Briefing and Discovery
`4.
`Snap explicitly agrees to take an “understudy” role which will simplify
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`briefing and discovery. Specifically, Snap explicitly agrees, upon joining the
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`Facebook proceeding, that the following conditions, as previously approved by the
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`Board in similar circumstances, shall apply so long as the current petitioner in
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`IPR2019-00925 remains an active party:
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`Case IPR2019-00938
`Snap’s Motion for Joinder
`a) all filings by Snap in the joined proceeding be consolidated with the
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`filings of the current petitioner, unless a filing concerns issues solely involving
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`Snap;
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`b) Snap shall not be permitted to raise any new grounds not already
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`instituted by the Board in the Facebook proceeding, or introduce any argument or
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`discovery not already introduced by the current petitioners;
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`c) Snap shall be bound by any agreement between Patent Owner and the
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`current petitioners concerning discovery and/or depositions; and
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`d) at deposition, Snap shall not receive any direct, cross examination or
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`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or any
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`agreement between Patent Owner and the current petitioners.
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`See Noven Pharm., Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at 5 (Apr.
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`10, 2015). Unless and until the current petitioners cease to participate in the
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`Facebook proceeding, Snap will not assume an active role therein.
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`Thus, by Snap accepting an “understudy” role, Patent Owner and the current
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`petitioners can comply with any trial schedule issued by the Board without needing
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`any duplicative efforts by the Board or Patent Owner. These steps will minimize
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`any potential complications or delay that potentially may result by joinder. See
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`LG, IPR2015-01353, Paper No. 11 at 6–7 (granting IPR and motion for joinder
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`because “joinder would increase efficiency by eliminating duplicative filings and
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`Case IPR2019-00938
`Snap’s Motion for Joinder
`discovery, and would reduce costs and burdens on the parties as well as the Board”
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`where petitioners agreed to an “understudy” role). Snap is further willing to agree
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`to any other reasonable conditions the Board deems necessary.
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`IV. CONCLUSION
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`Based on the factors discussed above, Snap respectfully requests that the
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`Board grant the Snap petition and grant joinder with the Snap IPR.
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`Dated: August 22, 2019
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`Respectfully submitted,
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`By:
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`
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`/s/ Yar Chaikovsky
`Yar Chaikovsky (Reg. No. 39,625)
`Paul Hastings LLP
`Counsel for Petitioner, Snap Inc.
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`CERTIFICATE OF SERVICE
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`Case IPR2019-00938
`Snap’s Motion for Joinder
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Patent Owner a true and correct copy of the foregoing Motion for
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`Joinder by electronic means on August 22, 2019 at the following address of record:
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`Michael T. Hawkins
`Craig A. Deutsch
`Kim Leung
`Nicholas Stephens
`Kenneth W. Darby
`Fish & Richardson P.C.
`IPR21828-0043IP1@fr.com
`PTABInbound@fr.com
`
`James M. Glass
`Ogi Zivojnovic
`Quinn Emanuel Urquhart, & Sullivan, LLP
`qe-blackberry-ipr@quinnemanuel.com
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`
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`By: /Yar R. Chaikovsky/
`Yar R. Chaikovsky (Reg. No. 39,625)
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