UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ORACLE CORP.
`Petitioner
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner
`
`Case IPR2020-00598
`Patent No. 7,231,379
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C. 31 UNDER 35
`U.S.C. 315(c) AND 37 C.F.R §§42.22 AND 42.122(b)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ORACLE CORP.
`Petitioner
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner
`
`Case IPR2020-00598
`Patent No. 7,231,379
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C. 31 UNDER 35
`U.S.C. 315(c) AND 37 C.F.R §§42.22 AND 42.122(b)
`
`
`
`Contents
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................. 1
`
`BACKGROUND ............................................................................................... 2
`
`III. LEGAL STANDARD ....................................................................................... 2
`
`IV. ANALYSIS ....................................................................................................... 3
`
`A. This Joinder Motion is Timely ...................................................................................... 4
`B.
`Joinder is Appropriate...................................................................................................... 4
`C. Consolidated Filings and Discovery ............................................................................ 5
`D. No New Grounds of Unpatentability ........................................................................... 6
`E. No Impact on IPR Trial Schedule ................................................................................. 6
`F.
`Joinder Will Streamline the Proceedings and Results in No Prejudice to
`
`Patent Owner ...................................................................................................................... 7
`G. Joinder Will Streamline the Proceedings and Results in No Prejudice to
`
`Patent Owner ...................................................................................................................... 7
`V.
`PROPOSED ORDER ........................................................................................ 8
`
`VI. CONCLUSION ............................................................................................... 10
`
`i
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`
`Petitioner moves the Patent Trial and Appeal Board (“Board”) for joinder of
`
`this inter partes review (Case No. IPR2020-0598, “Oracle IPR”) to an earlier inter
`
`partes review filed by BloomReach, Inc. (Case No. IPR2019-01304, “BloomReach
`
`IPR”). The Oracle IPR is intentionally identical to the BloomReach IPR in all
`
`substantive aspects. Both seek inter partes review of claims 1-7 (the “Challenged
`
`claims”) of U.S. Patent No. 7,231,379 (Ex. 1001, “the ’379 patent”). Further, the
`
`Oracle IPR and BloomReach IPR rely upon the same analytical framework (e.g.,
`
`same expert declarant, prior art, claim charts, and claim constructions) in
`
`addressing the Challenged Claims. Accordingly, resolving the Oracle IPR and
`
`BloomReach IPR will necessarily involve considering the same issues by all
`
`parties and the Board.
`
`Petitioner is filing this petition and joinder motion to ensure that the
`
`instituted trial is completed in the event that the petitioner in the BloomReach IPR
`
`reaches a settlement with the Patent Owner. As discussed further herein, to ensure
`
`that joinder does not result in any delay or additional burden on the Board or the
`
`patent owner, Oracle agrees to a strict understudy role if joinder is granted unless
`
`and until the joined IPR is terminated with respect to the petitioner in the
`
`BloomReach IPR. If the BloomReach IPR is terminated prior to a decision on this
`
`motion, Oracle respectfully requests that the BloomReach IPR be terminated with
`1
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`respect to petitioner in that proceeding but be kept open until this motion is
`
`decided to allow joinder of the Oracle and BloomReach IPRs for the reasons
`
`discussed below.
`
`II. BACKGROUND
`
`BloomReach filed a petition requesting inter partes review of the ’379 patent
`
`on July 11, 2019. BloomReach IPR, Paper 1. A decision granting institution of
`
`that petition was granted on January 23, 2020.
`
`The BloomReach IPR and Oracle IPR involve different petitioners and
`
`different real parties-in-interest. Compare BloomReach IPR, Paper 3 at 3 with
`
`Oracle IPR, Paper 2 at 6 (identifying real parties-in-interest).
`
`III. LEGAL STANDARD
`
`When more than one petition for inter partes review of the same patent is
`
`properly filed and those petitions warrant institution, the Board has the authority
`
`and discretion to join the proceedings. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
`
`Joinder of one inter partes review with another inter partes review is appropriate
`
`where it secures the just, speedy, and inexpensive resolution of the inter partes
`
`review proceedings. See 37 C.F.R. § 42.1(b).
`
`A petitioner may request joinder, without prior authorization, up to one
`
`month after the institution date of the proceeding to which joinder is requested. 37
`
`2
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`C.F.R. § 42.122(b) (addressing timing to request joinder); Taiwan Semiconductor
`
`Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and IPR2014-782, Paper 5 at 3 (May
`
`29, 2014) (prior authorization not required before one month deadline). Typically,
`
`such a joinder request: (1) sets forth the reasons why joinder is appropriate; (2)
`
`identifies any new grounds of unpatentability asserted in the petition; and (3)
`
`explains what impact (if any) joinder would have on the trial schedule for the
`
`existing review. See, e.g., Microsoft Corp. v. IPR Licensing, Inc., IPR2015-00074,
`
`Paper 21 at 4 (PTAB Mar. 4, 2015). A joinder request can additionally address
`
`specifically how briefing and discovery may be simplified. See, e.g., Sony Corp. of
`
`Am. v. Network-1 Security Solutions, Inc., IPR2013-00495, Paper 13 at 3 (PTAB
`
`Sep. 16, 2013); Fujitsu Semiconductor Ltd. v. Zond, LLC, IPR2014-00845, Paper
`
`14 at 304 (PTAB Oct. 2, 2014). Petitioner addresses each of these points below.
`
`IV. ANALYSIS
`
`Petitioner respectfully requests that the Board grant this motion for joinder
`
`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) and enter an order
`
`consistent with the proposed order provided below.
`
`3
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`A.
`
`This Joinder Motion is Timely
`
`This motion is timely. Under 37 C.F.R. § 42.122(b), joinder can be
`
`requested without prior authorization no later than one month after the institution
`
`date of the proceeding to which joinder is requested. Taiwan Semiconductor,
`
`IPR2014-00781 and IPR2014-782, Paper 5 at 3. Because this motion is being filed
`
`within one month of the Board’s decision instituting trial in the BloomReach IPR
`
`on January 23, 2020, it meets the requirements of § 42.122(b). See, e.g., Biotronik,
`
`Inc. v. Atlas IP LLC, IPR2015-00534, Paper 10 (PTAB Feb. 25, 2015) (granting
`
`motion for joinder filed concurrently with institution of IPR review).
`
`B.
`
`Joinder is Appropriate
`
`Joinder of the BloomReach IPR and the Oracle IPR is the most practical way
`
`to secure the just, speedy, and inexpensive resolution of these related proceedings.
`
`See 37 C.F.R. § 42.1(b). The petition in the Oracle IPR is intentionally identical to
`
`the petition in the BloomReach IPR in all substantive aspects. That is, the same
`
`claims are challenged (1-7 of the ’379 patent) based on the same prior art, same
`
`claim charts, and same claim constructions. The same expert declarant is used, and
`
`the expert’s declarations in the two cases are identical. Further, unity of exhibits
`
`and exhibit numbering (particularly with respect to prior art) with the BloomReach
`
`IPR have also been maintained. Accordingly, resolving the Oracle IPR and
`
`4
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`BloomReach IPR will necessarily involve considering the same issues and same
`
`papers. Joining these inter partes reviews thus presents an opportunity to
`
`streamline review of the ’379 patent’s Challenged Claims and eliminate
`
`unnecessary duplication of filings, papers, and efforts of the Petitioners, the Patent
`
`Owner, and the Board. On the other hand, if the Oracle IPR and BloomReach IPR
`
`proceed separately, there would undoubtedly be needless duplicate effort.
`
`C.
`
`Consolidated Filings and Discovery
`
`To further ensure a streamlined process, and because the grounds of
`
`unpatentability in the BloomReach and Oracle IPRs are the same, Oracle agrees to
`
`a strict understudy role in a joined IPR until such time as a joined proceeding is
`
`terminated with the petitioner in the BloomReach IPR. Specifically, so as to avoid
`
`lengthy and duplicative briefing, Oracle will agree to:
`
`
`
`incorporate its filings with those of BloomReach in a consolidated
`
`filing, subject to the ordinary rules for one party on page limits;
`
`and
`
`
`
`
`
`be jointly responsible with BloomReach for the consolidated filings;
`
`not be permitted to make arguments separately from those advanced
`
`by BloomReach in the consolidated filings.
`
`5
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`Oracle will also agree to consolidated discovery. This is appropriate given
`
`that Oracle and BloomReach are using the same expert declarant who has
`
`submitted an identical declaration in the two proceedings. Additionally, Oracle will
`
`agree to designate a single attorney to conduct, on behalf of Oracle and
`
`BloomReach, the cross-examination of any witness produced by Patent Owner and
`
`the redirect of any witness produced by Petitioners or Patent Owner, and to limit
`
`such cross-examinations and redirect to the time normally allotted for one party.
`
`Oracle will not receive any separate cross-examination or redirect time.
`
`D.
`
`No New Grounds of Unpatentability
`
`The Oracle IPR raises no new grounds of unpatentability from those raised
`
`in the BloomReach IPR. This is because, as noted above, the petitions in the
`
`BloomReach IPR and Oracle IPR are substantively identical.
`
`E.
`
`No Impact on IPR Trial Schedule
`
`This motion is being filed within one month of institution of the
`
`BloomReach IPR, and Oracle agrees to adhere to all applicable deadlines set forth
`
`in the BloomReach IPR Scheduling Order. Accordingly, the trial schedule for the
`
`BloomReach IPR need not be adversely affected.
`
`6
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`F.
`
`Joinder Will Streamline the Proceedings and Results in No
`Prejudice to Patent Owner
`
`Joinder will streamline the proceedings and reduce the costs and burden on
`
`Petitioners, Patent Owner, and the Board. Joining these proceedings will eliminate
`
`duplicate papers that must be filed, reviewed, and managed in each proceeding if
`
`the proceedings are not joined. Joinder will therefore also create case management
`
`efficiencies for the Board and all parties. Further, because Oracle will assume an
`
`understudy role, joinder will also reduce by half the time and expense for
`
`depositions and other discovery that would otherwise accompany separate IPR
`
`proceedings. As such, joinder will simplify briefing and discovery, without any
`
`foreseeable prejudice to Patent Owner.
`
`G.
`
`Joinder Will Streamline the Proceedings and Results in No
`Prejudice to Patent Owner
`In the event that a settlement is reached in the BloomReach IPR prior to the
`
`Board’s decision on this Motion, Oracle respectfully requests that the BloomReach
`
`IPR be kept open until this motion is decided even if the BloomReach IPR is
`
`terminated with respect to the petitioner in that IPR. The Board has the authority
`
`to maintain an IPR even when no petitioner remains in that IPR while a joinder
`
`motion is pending. 35 U.S.C. ¶ 317(a); MediaTek Inc. v. Bandspeed, Inc.,
`
`IPR2015-00314, Paper 20 at 2 (PTAB September 17, 2015) (maintaining IPR with
`
`7
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`respect to patent owner after terminating with respect to all petitioners in view of
`
`pending joinder motion); IPR2018-01467, Paper 18 at 4 (PTAB June 18, 2019)
`
`(same). While Oracle’s petition in the Oracle IPR is not subject to any time bar
`
`issue, Oracle respectfully submits that maintaining the BloomReach IPR to allow
`
`for joinder of the Oracle IPR may provide the opportunity for this panel of the
`
`Board, which has invested significant resources in order to issue its Institution
`
`Decision in the BloomReach IPR, to continue to preside over the issues raised in
`
`the identical petitions of the BloomReach and Oracle IPRs.
`
`V.
`
`PROPOSED ORDER
`
`In light of the benefits of joinder described above, Petitioner proposes an
`
`order joining the Oracle IPR with the BloomReach IPR consistent with the
`
`following:
`
`
`
`If inter partes review is instituted on any ground in the Oracle IPR,
`
`the Oracle IPR will be joined to the BloomReach IPR;
`
`
`
`The scheduling order entered for the BloomReach IPR will apply to
`
`the joined proceedings;
`
`
`
`Throughout the joined proceedings, Oracle and BloomReach will file
`
`papers as consolidated filings, except for motions that do not involve the other
`
`party, in accordance with the Board’s established rules regarding page limits. So
`
`8
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`long as they both continue to participate in the merged proceedings, Oracle and
`
`BloomReach will identify each such filing as a Consolidated Filing and will be
`
`responsible for completing all consolidated filings;
`
`
`
`Oracle and BloomReach will designate an attorney to conduct the
`
`cross examination of any witness produced by Patent Owner and the redirect of
`
`any given witness produced by Oracle and BloomReach within the timeframe
`
`normally allotted by the rules for one party. Oracle and BloomReach will not
`
`receive any separate cross-examination or redirect time; and
`
`Patent Owner will conduct any cross examination of any given witness
`
`jointly produced by Oracle and BloomReach and the redirect of any given witness
`
`produced by Patent Owner within the timeframe normally allotted by the rules for
`
`one cross-examination or redirect examination.
`
`9
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`VI. CONCLUSION
`
`For the foregoing reasons, Oracle respectfully requests institution of Inter
`
`Partes Review of claims 1-7 of the ’379 patent and grant joinder of the
`
`BloomReach IPR and Oracle IPR.
`
`Dated: February 20, 2020
`
`Respectfully Submitted,
` /James M. Heintz 41,828/
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`jim.heintz@dlapiper.com
`Phone: 703-773-4148
`Fax: 703-773-5200
`
`Attorney for Petitioner
`
`10
`
`
`
`IPR2020-00598
`Petition for Inter Partes Review
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(4) and 42.105, lead counsel for Petitioner
`
`hereby certifies that on February 20, 2020, copies of this Motion for Joinder
`
`were sent via Priority Mail Express to the correspondence address of record
`
`for the ’379 Patent:
`
`Morgan & Finnegan Transition Team
`c/o Locke Lord LLP
`P.O. BOX 55874
`Boston, MA 02205
`
`Dated: February 20, 2020
`
`Respectfully Submitted,
`
` /James M. Heintz/
`James M. Heintz (Reg. No. 41,828)
`
`11
`
`
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