Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 23
`Entered: September 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PAYPAL, INC., UPWORK GLOBAL INC., SHOPIFY, INC., SHOPIFY (USA),
`INC., STRAVA INC., VALASSIS COMMUNICATIONS, INC.,
`RETAILMENOT, INC., and DOLLAR SHAVE CLUB, INC.,
`Petitioner,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Cases
`IPR2019-01089 (Patent 8,099,420 B2)
`IPR2019-01091 (Patent 8,099,420 B2)
`IPR2019-01092 (Patent 6,928,442 B2)
`IPR2019-01093 (Patent 7,945,544 B2)
` IPR2019-01111 (Patent 7,802,310 B2)1
`____________
`
`Before JONI Y. CHANG, DENISE M. POTHIER, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`1 This Order addresses an issue that is identical in all five proceedings. We,
`therefore, exercise our discretion to issue one Order to be filed in each proceeding.
`The parties, however, are not authorized to use this style heading in any subsequent
`papers.
`
`

`

`IPR2019-01089 (Patent 8,099,420 B2) IPR2019-01093 (Patent 7,945,544 B2)
`IPR2019-01091 (Patent 8,099,420 B2) IPR2019-01111 (Patent 7,802,310 B2)
`IPR2019-01092 (Patent 6,928,442 B2)
`
`
`I. INTRODUCTION
`A conference call in these proceedings was held on September 24,
`2019, among respective counsel for the parties and Judges Chang, Pothier,
`and Zecher. The call was requested by the panel to discuss the privy and
`real party in interest issues raised by Patent Owner, PersonalWeb
`Technologies, LLC (“PersonalWeb”), in the Preliminary Responses filed in
`each proceeding. Petitioner, PayPal, Inc., Upwork Global Inc., Shopify,
`Inc., Shopify (USA), Inc., Strava Inc., Valassis Communications, Inc.,
`RetailMeNot, Inc., and Dollar Shave Club, Inc. (collectively, “Petitioner
`entities”), arranged for a court reporter and agreed to file a transcript of the
`conference call as a separate exhibit in each proceeding. 37 C.F.R.
`§ 42.63(a) (“All evidence must be filed in the form of an exhibit.”) We
`reiterate some of the discussion here, but we need not repeat all of the details
`because the complete discussion will be reflected in the transcript.
`
`
`II. DISCUSSION
`We began the conference call by discussing the following procedural
`history applicable to each proceeding: (1) on December 8, 2011,
`PersonalWeb filed a complaint against three parties, two of which were
`Amazon.com, Inc. and Amazon Web Service LLC (collectively,
`“Amazon”), asserting infringement of U.S. Patent Nos. 6,928,442 B2 (“the
`’442 patent”), 7,802,310 B2 (‘the ’310 patent”), and 7,945,544 B2 (“the ’544
`
`
`
`2
`
`

`

`IPR2019-01089 (Patent 8,099,420 B2) IPR2019-01093 (Patent 7,945,544 B2)
`IPR2019-01091 (Patent 8,099,420 B2) IPR2019-01111 (Patent 7,802,310 B2)
`IPR2019-01092 (Patent 6,928,442 B2)
`
`
`patent) (Ex. 2008,2 “the 2011 complaint”)—notably, PersonalWeb did not
`assert infringement of U.S. Patent No. 8,099,420 B2 (“the ’420 patent”) in
`the 2011 complaint; (2) on June 9, 2014, the 2011 complaint was dismissed
`with prejudice pursuant to a joint stipulation of dismissal by PersonalWeb
`and Amazon (Ex. 2009); (3) on February 5, 2018, Amazon filed a
`declaratory judgment action against PersonalWeb seeking a declaration of
`non-infringement of the ’442 patent, the ’310 patent, the ’544 patent, and the
`’420 patent, among other patents (Ex. 2011); (4) according to the parties, on
`May 25, 2018, PersonalWeb filed a counterclaim against Petitioner entities
`alleging infringement of certain patents, including the ’420 patent;3 (5)
`between August and October of 2018, PersonalWeb served Petitioner
`entities with complaints alleging infringement of the ’442 patent, the ’310
`patent, the ’544 patent, and the ’420 patent (see, e.g., Ex. 1011 (listing cases
`where PersonalWeb asserted the ’420 patent)); (6) on March 13, 2019, the
`U.S. District Court for the Northern District of California issued an Order
`Granting-in-Part and Denying-in-Part Amazon’s Motion for Summary
`Judgement, in which the court determined that, with respect to certain
`products, Amazon is in privy with its customers, including some of the
`Petitioner entities in these proceedings (Ex. 2012); and (7) on May 14 and
`20, 2019, Petitioner entities filed five Petitions challenging a certain subset
`
`
`2 For purposes of expediency, we refer to the exhibits filed in IPR2019-
`01089. Similar exhibits were filed in IPR2019-01091, IPR2019-01092,
`IPR2019-01093, and IPR2019-01111.
`3 As we indicated during the conference call, the panel underscores that
`filing PersonalWeb’s counterclaims, dated May 25, 2018, as an exhibit in
`these proceedings will be helpful to analyze the issues of privy and real party
`in interest and their applicability to 35 U.S.C. §§ 315(a)(1) and/or 315(b).
`
`
`
`3
`
`

`

`IPR2019-01089 (Patent 8,099,420 B2) IPR2019-01093 (Patent 7,945,544 B2)
`IPR2019-01091 (Patent 8,099,420 B2) IPR2019-01111 (Patent 7,802,310 B2)
`IPR2019-01092 (Patent 6,928,442 B2)
`
`
`of claims of the ’442 patent (IPR2019-01092), the ’310 patent (IPR2019-
`01111), the ’544 patent (IPR2019-01093), and the ’420 patent (IPR2019-
`01089 and IPR2019-01091). During the conference call, both parties
`confirmed the aforementioned procedural history.
`Upon inquiry from the panel, Petitioner entities and PersonalWeb
`expressed a desire to provide additional briefing in each proceeding
`regarding whether Amazon is a privy of at least one of Petitioner entities, or
`real party in interest for Petitioner entities, and whether the statutory bar set
`forth in 35 U.S.C. §§ 315(a)(1) and/or 315(b) applies. Based on the specific
`facts of these proceedings, the panel determined that it would benefit from
`additional briefing on the issues identified above. See Trial Practice Guide
`Update (July 2019) at 20, available at
`https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`update3.pdf (stating that “whether a petitioner will be afforded a reply and
`the appropriate scope of such a reply rests with the panel deciding the
`proceeding to take into account the specific facts of the particular case”).
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner entities are authorized to file a ten page
`reply in each proceeding no later than Tuesday, October 1, 2019, that is
`tailored narrowly to address whether Amazon is a privy of at least one of
`Petitioner entities, or real party in interest for Petitioner entities, and whether
`the statutory bar set forth in 35 U.S.C. §§ 315(a)(1) and/or 315(b) applies;
`
`
`
`4
`
`

`

`IPR2019-01089 (Patent 8,099,420 B2) IPR2019-01093 (Patent 7,945,544 B2)
`IPR2019-01091 (Patent 8,099,420 B2) IPR2019-01111 (Patent 7,802,310 B2)
`IPR2019-01092 (Patent 6,928,442 B2)
`
`
`FURTHER ORDERED that Petitioner entities are authorized to file
`new evidence with each reply, but the evidence must be pertinent to the
`issues identified above;
`FURTHER ORDERED that PersonalWeb is authorized to file a five
`page sur-reply in each proceeding no later than Tuesday, October 8, 2019,
`that is responsive to the issues addressed by Petitioner entities in each reply;
`and
`
`FURTHER ORDERED that PersonalWeb is authorized to file new
`evidence with each sur-reply, but it must be responsive to the issues
`addressed by Petitioner entities in each reply.
`
`
`
`5
`
`

`

`IPR2019-01089 (Patent 8,099,420 B2) IPR2019-01093 (Patent 7,945,544 B2)
`IPR2019-01091 (Patent 8,099,420 B2) IPR2019-01111 (Patent 7,802,310 B2)
`IPR2019-01092 (Patent 6,928,442 B2)
`
`
`For PETITIONER:
`Brent Ray
`KING & SPALDING LLP
`bray@kslaw.com
`
`Kourtney N. Baltzer
`Nikhil R. Krishnan
`KIRLAND & ELLIS LLP
`kourtney.baltzer@kirkland.com
`nikhil.krishnan@kirkland.com
`
`PATENT OWNER:
`
`Joseph A. Rhoa
`Jonathan A. Roberts
`Mark H. Henderson III
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`jr@nixonvan.com
`mhh@nixonvan.com
`
`
`
`
`
`
`
`
`6
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`