IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Aristocrat Technologies, Inc.,
`
`Petitioner,
`
`v.
`
`NEXRF Corp.,
`
`Patent Owner.
`
`Case No. IPR2022-00408
`U.S. Patent No. 8,747,229
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2021-00951
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Aristocrat Technologies, Inc.,
`
`Petitioner,
`
`v.
`
`NEXRF Corp.,
`
`Patent Owner.
`
`Case No. IPR2022-00408
`U.S. Patent No. 8,747,229
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2021-00951
`
`
`
`Table of Contents
`
`I.
`II.
`III.
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND AND RELATED PROCEEDINGS ................................... 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`Aristocrat’s Motion for Joinder Is Timely ............................................ 3
`C.
`The Four Factors Favor Joinder ............................................................ 4
`1.
`Joinder of Aristocrat is Appropriate Because it Will Promote an
`Efficient Determination of the Validity of the ’229 Patent
`Without Prejudice to Any Party .................................................. 4
`Aristocrat is Not Proposing New Grounds of Unpatentability ... 6
`Joinder Will Not Affect the Schedule in the 951 Proceeding ..... 7
`Joinder Will Simplify Briefing and Discovery Because
`Aristocrat Has Agreed to Consolidated Filings and an
`Understudy Role ......................................................................... 7
`IV. CONCLUSION ................................................................................................ 9
`
`2.
`3.
`4.
`
`- i -
`
`
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Aristocrat
`
`Technologies, Inc. (“Petitioner” or “Aristocrat”) respectfully submits this Motion
`
`for Joinder, concurrently with a Petition (“Aristocrat’s Petition”) for inter partes
`
`review of U.S. Patent No. 8,747,229 (“the ’229 Patent”). An inter partes review was
`
`instituted against the ’229 Patent on December 6, 2021, in Playtika Ltd. and Playtika
`
`Holding Corp. v. NEXRF Corp., IPR2021-00951 (“the 951 Proceeding”).
`
`Aristocrat’s Petition is substantively identical to the petition that Playtika Ltd.
`
`and Playtika Holding Corp. (collectively, “Playtika”) filed in the 951 Proceeding. It
`
`challenges the same claims, on the same grounds, and relies on the same prior art
`
`and evidence, including a declaration from the same expert that is identical to the
`
`declaration filed in the 951 Proceeding. Aristocrat’s Petition and Motion for Joinder
`
`are being filed to ensure that a petitioner remains to complete the trial if Playtika
`
`reaches a settlement with the Patent Owner or is otherwise terminated from the
`
`proceeding. In the event that Aristocrat is permitted to join the proceedings, it will
`
`act in a limited “silent understudy” role and will not assume an active role unless
`
`Playtika ceases to participate.
`
`Allowing Aristocrat to join the proceedings will promote judicial efficiency
`
`in determining the patentability of the ’229 Patent and will not prejudice Patent
`
`Owner. Joinder will have no impact on the current schedule, will not add any new
`
`- 1 -
`
`
`
`substantive issues, will not increase the burden on any deponents, and will avoid the
`
`need for duplicative proceedings.
`
`Aristocrat notified counsel for Playtika and counsel for Patent Owner
`
`regarding the subject of this motion. Counsel for Playtika indicated that Playtika
`
`will not oppose this motion. Counsel for Patent Owner responded that “we will need
`
`to see the final petitions and motions before we can confer with our client to reach
`
`an informed decision about whether to oppose.”
`
`Given the similarities in the proceedings, the lack of undue prejudice to Patent
`
`Owner, and the potential benefit to the public and the Board that would accrue by
`
`Aristocrat’s participation in the 951 Proceeding in the event that Playtika’s
`
`participation terminates, the Board should institute Aristocrat’s IPR and grant the
`
`Motion for Joinder.
`
`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`The ’229 Patent is involved in at least each of the following litigations:
`
`Name
`NEXRF Corp. v. Playtika Ltd.,
`Playtika Holding Corp., and
`Caesars Interactive
`Entertainment LLC
`NEXRF Corp. v. DoubleU
`Games Co., Ltd., DoubleDown
`Interactive Co., Ltd., and
`DoubleDown Interactive, LLC
`NEXRF Corp. v. Aristocrat Int’l
`Pty Ltd., Product Madness, Inc.,
`and Big Fish Games, Inc.
`
`Court and Case No.
`D. Nev.
`3:20-cv-00603
`
`Filed
`Oct. 26, 2020
`
`Dec. 31, 2020
`
`June 11, 2021
`
`W.D. Wash.
`2:20-cv-01875
`
`W.D. Wash.
`2:21-cv-00798
`
`- 2 -
`
`
`
`Name
`NEXRF Corp. v. Paytika Ltd.,
`Playtika Holding Corp., and
`Caesars Interactive
`Entertainment
`NEXRF Corp. v. Aristocrat Int’l
`Pty Ltd., Product Madness, Inc.,
`and Big Fish Games, Inc.
`
`Court and Case No.
`Fed. Cir.
`21-2147
`
`Filed
`July 19, 2021
`
`Fed. Cir.
`21-2219
`
`Aug. 17, 2021
`
`According to the face of the ’229 Patent, it is assigned to NexRF Corporation.
`
`Aristocrat has not previously filed an inter partes review petition with respect
`
`to the ’229 Patent.
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`Legal Standard
`The Board has discretion to join a petition for inter partes review to another
`
`inter partes review proceeding. See 35 U.S.C. § 315(c). Joinder is evaluated “on a
`
`case-by-case basis, taking into account the particular facts of each case, substantive
`
`and procedural issues, and other considerations.” Dell Inc. v. Network-1 Sec.
`
`Solutions, Inc., IPR2103-00385, Paper 19, at 3 (July 29, 2013). The Board considers:
`
`(1) reasons why joinder is appropriate; (2) any new grounds of unpatentability
`
`asserted in the petition; (3) the impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) specifically how briefing and discovery
`
`may be simplified. See id.
`
`Aristocrat’s Motion for Joinder Is Timely
`B.
`A petitioner may request joinder, without prior authorization, up to one month
`
`- 3 -
`
`
`
`after the institution date of the proceedings to which joinder is requested. 37 C.F.R.
`
`§ 42.122(b); Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781
`
`and IPR2014-00872, Paper 5, at 3 (May 29, 2014). The 951 Proceeding was
`
`instituted on December 6, 2021. IPR2021-00951, Paper 14. Aristocrat’s Motion for
`
`Joinder is timely, as it is being filed within one month of the institution date.
`
`The Four Factors Favor Joinder
`C.
`Each of the four factors weigh in favor of granting Aristocrat’s Motion for
`
`Joinder. Aristocrat’s Petition is substantively identical to Playtika’s petition in the
`
`951 Proceeding; it presents no new grounds of unpatentability. Because Aristocrat
`
`agrees to take on a “silent understudy” role in the 951 Proceeding, joinder will have
`
`no impact on the pending schedule for the 951 Proceeding. Moreover, the briefing
`
`and discovery will be simplified be resolving all issues in a single proceeding.
`
`1.
`
`Joinder of Aristocrat is Appropriate Because it Will
`Promote an Efficient Determination of the Validity of the
`’229 Patent Without Prejudice to Any Party
`Aristocrat seeks to join the 951 Proceeding in order to ensure that an accused
`
`infringer1 with an active interest in the proceeding remains a party to the trial if
`
`1 Patent Owner has accused Aristocrat International Pty Ltd., Product Madness,
`
`Inc., and Big Fish Games, Inc. of infringing the ’229 Patent in a lawsuit filed in the
`
`- 4 -
`
`
`
`Playtika’s participation is terminated prior to completion. Accordingly, joining
`
`Aristocrat to the 951 Proceeding is the most practical way to secure the just, speedy,
`
`and inexpensive resolution of the challenge to the ’229 Patent. See 37 C.F.R.
`
`§ 42.1(b).
`
`If Aristocrat is joined as a party, the validity of the grounds raised in the 951
`
`Proceeding can be determined in a single proceeding. Joinder is also appropriate
`
`because Aristocrat’s petition challenges the validity of the same claims of the ’229
`
`Patent on identical grounds to those in the 951 Proceeding. There are no substantive
`
`differences between the unpatentability arguments in Aristocrat’s and Playtika’s
`
`Petitions. Aristocrat relies on the same prior art and evidence as Playtika, including
`
`a declaration from the same expert that is identical to the declaration filed in the 951
`
`Proceeding. A consolidated proceeding, including Aristocrat and Playtika, will
`
`therefore be more efficient and less wasteful, as only a single trial on these common
`
`grounds would be required. See, e.g., Oracle America Inc. v. Realtime Data LLC,
`
`IPR2016-01672, Paper 13 at 7 (March 7, 2017) (noting that “joining Oracle’s identical
`
`challenges to those in the 1002 IPR will lead to greater efficiency while reducing the
`
`Western District of Washington, see NexRF Corp. v. Aristocrat Int’l Pty Ltd. et al.,
`
`Case No. 2:21-cv-00798 (W.D. Wash).
`
`- 5 -
`
`
`
`resources necessary from both Realtime and the Board”). The Board “routinely
`
`grants motions for joinder where the party seeking joinder introduces identical
`
`arguments and the same grounds raised in the existing proceeding.” Samsung Elecs.
`
`Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper No. 12, at 9 (Aug. 24, 2016)
`
`(internal quotations and citations omitted).
`
`Joining Aristocrat as a party to the 951 Proceeding also would promote the
`
`public interest relating to the unpatentability of the ’229 Patent and not cause any
`
`undue prejudice to Patent Owner, who must respond to the same unpatentability
`
`grounds regardless of joinder.
`
`The factors outlined by the Board in General Plastics are not particularly
`
`relevant here “where a different petitioner filed a ‘me-too’ or ‘copycat’ petition in
`
`conjunction with a timely motion to join.” Celltrion, Inc. v. Genentech, Inc.,
`
`IPR2018-01019, Paper 11, at 9-11 (Oct. 30, 2018). Moreover, unlike in other
`
`proceedings where joinder has been denied, here the petitioner seeking joinder
`
`(Aristocrat) has not previously petitioned for inter partes review of the same patent.
`
`This is Aristocrat’s first challenge to the ’229 Patent at the PTAB.
`
`2.
`
`Aristocrat Is Not Proposing New Grounds of
`Unpatentability
`Aristocrat’s Petition is substantially identical to the petition in the 951
`
`Proceeding. Aristocrat challenges the same claims of the ’229 Patent, based on the
`
`same grounds, the same arguments, and the same evidence. Aristocrat is using the
`
`- 6 -
`
`
`
`same expert declaration from the same declarant (Stacy Friedman) that Playtika is
`
`using in the 951 Proceeding. Aristocrat also is maintaining unity of exhibits and
`
`exhibit numbering as used in the 951 Proceeding.
`
`Accordingly, consolidation of this proceeding with the 951 Proceeding via
`
`joinder of Aristocrat’s Petition will not raise any new issues of unpatentability, will
`
`not add additional complexity to the proceeding, and will not impose any additional
`
`burden on the Board or the Patent Owner.
`
`Joinder Will Not Affect the Schedule in the 951 Proceeding
`3.
`Joinder of Aristocrat will not affect the schedule of the 951 Proceeding.
`
`Aristocrat agrees to adhere to all applicable deadlines set forth in the 951 Proceeding
`
`Scheduling order. There are no new issues for the Board to address, and Patent
`
`Owner should not be required to present any additional responses or arguments.
`
`4.
`
`Joinder Will Simplify Briefing and Discovery Because
`Aristocrat Has Agreed to Consolidated Filings and an
`Understudy Role
`To further prevent joinder from imposing any burden on Patent Owner or
`
`Playtika, and to further ensure that there are no changes in the potential trial schedule,
`
`Aristocrat agrees to take an understudy role (as long as Playtika remains a party to
`
`the 951 Proceeding), which will simplify briefing and discovery. In this role,
`
`Aristocrat agrees to the following conditions:
`
`a) Aristocrat shall not make any substantive filing and shall be bound by
`
`- 7 -
`
`
`
`the filings of Playtika, unless a filing concerns termination and settlement, or issues
`
`solely involving Aristocrat;
`
`b) Aristocrat shall not present any argument or make any presentation at
`
`oral hearing on issues not solely involving Aristocrat, except when addressing
`
`Board-approved motions that do not affect Playtika;
`
`c) Aristocrat shall not seek to cross-examine or defend the cross-
`
`examination of any witness, unless the topic of cross-examination concerns issues
`
`solely involving Aristocrat; and
`
`d) Aristocrat shall not seek discovery from Patent Owner on issues not
`
`solely involving Aristocrat.
`
`Unless and until Playtika ceases to participate in the 951 Proceeding, Aristocrat will
`
`not assume an active role therein.2
`
`Accordingly, due to Aristocrat taking only an “understudy” role, Patent Owner
`
`will only need to respond to one principal set of papers, will not require additional
`
`time to address additional arguments, and can thus proceed with the existing trial
`
`schedule. These steps will minimize or eliminate any potential complications or delay
`
`2 For clarity, should Playtika’s participation in this IPR proceeding terminate,
`
`Aristocrat would take over primary responsibility for subsequent filings and
`
`discovery.
`
`- 8 -
`
`
`
`that could potentially result from joinder. See Sony Corp. v. Memory Integrity, LLC.,
`
`IPR2015-01353, Paper No. 11 at 6-7 (Oct. 5, 2015) (granting motion because
`
`“joinder would increase efficiency by eliminating duplicative filings and discovery,
`
`and would reduce costs and burdens on the parties as well as the Board” where
`
`second petitioner agreed to “understudy” role). Aristocrat will also abide by any
`
`additional conditions the Board deems appropriate for an “understudy” role.
`
`IV. CONCLUSION
`For the reasons given above, Aristocrat respectfully requests that its Petition
`
`for Inter Partes review of certain claims of the ’229 Patent be instituted and that
`
`Aristocrat be joined to the 951 Proceeding.
`
`Date: January 6, 2022
`
`Respectfully submitted,
`
`By: /David A. Garr/
`David A. Garr
` Registration No.: 74,932
`David J. Cho
` Registration No.: 72,457
`COVINGTON & BURLING LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Counsel for Petitioner
`
`- 9 -
`
`
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