`571-272-7822
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`Paper 16
`Date: October 3, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ATLASSIAN CORP. PLC, ATLASSIAN, INC., EXPEDIA, INC.,
`HOMEAWAY.COM, INC., PINTEREST, INC., SQUARESPACE, INC.,
`WIX.COM, LTD., AND WIX.COM, INC.,
`Petitioners,
`
`v.
`
`EXPRESS MOBILE INC.,
`Patent Owner.
`_______________
`
`IPR2022-00784
`Patent 9,471,287 B2
`_______________
`
`
`
`Before JEFFREY S. SMITH, AMBER L. HAGY, and
`AARON W. MOORE, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`IPR2022-00784
`Patent 9,471,287 B2
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`
`INTRODUCTION
`I.
`A. Background and Summary
`Atlassian Corp. PLC., Atlassian, Inc., Expedia, Inc., Homeaway.com,
`Inc., Pinterest, Inc., Squarespace, Inc., Wix.com, Ltd., and Wix.com, Inc.
`(collectively, “Petitioner”) filed a Petition requesting inter partes review of
`claims 1, 2, 5–7, 11, and 12 of U.S. Patent No. 9,471,287 B2 (“the ’287
`patent,” Ex. 1001). Paper 1 (“Pet.”). Petitioner also filed a Motion for
`Joinder seeking to be joined as a party to Facebook, Inc. v. Express Mobile
`Inc., IPR2021-01456 (“the Facebook IPR”), which involves the same claims
`of the ’287 patent. Paper 3 (“Motion” or “Mot.”).
`Express Mobile, Inc. (“Patent Owner”) opposed the Motion (Paper 7
`(“Opposition” or “Opp.”)), and Petitioner filed a reply in support of the
`Motion (Paper 8).
`Patent Owner also filed a Preliminary Response. Paper 9 (“Prelim.
`Resp.”).
`For the reasons explained below, we determine that institution of inter
`partes review is warranted on the same grounds instituted in the Facebook
`IPR, and we grant Petitioner’s Motion for Joinder.
`B. Real Parties in Interest
`The parties identify themselves as the real parties in interest. Pet. 1;
`Paper 5, 1.
`
`C. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), the parties identify various
`related matters, including numerous district court proceedings involving the
`’287 patent and/or its parent patent, U.S. Patent No. 9,063,755 (“the ’755
`patent”). Pet. 1–5; Paper 5, 1–6. Among the identified related matters are
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`Patent 9,471,287 B2
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`several inter partes matters involving the ’287 patent: IPR2021-01456 (“the
`Facebook IPR”) and IPR2022-00248 (“the Booking IPR”) (both instituted);
`IPR2022-00789 (“the Google IPR”) (co-pending); and IPR2021-00710,
`IPR2021-01145, and IPR2021-01227 (all denied). Pet. 1, 3; Paper 5, 5.
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1, 2, 5–7, 11, and 12 are unpatentable on
`the following grounds:
`
`Claim(s) Challenged 35 U.S.C. §
`
`1, 2, 5–7, 12
`
`11
`
`103(a)
`
`103(a)
`
`Reference(s)/Basis
`Anderson,1 Bowers,2 Jacobs,3
`Ambrose-Haynes,4 and Geary5
`Anderson, Bowers, Jacobs,
`Ambrose-Haynes, Geary, and NFS
`Administration6
`
`As further support, Petitioner offers the Declaration of Kevin Jeffay,
`Ph.D. Ex. 1019.
`
`
`
`1 G. Anderson & P. Anderson, JAVA Studio Creator Field Guide, 2d ed.
`(Prentice Hall 2006) (Ex. 1003, “Anderson”).
`2 B. Bowers & S. Lane, Advanced FileMaker Pro 6 Web Development
`(Wordware Pub. 2003) (Ex. 1004, “Bowers”).
`3 S. Jacobs, Foundation XML for Flash (Springer-Verlag 2006) (Ex. 1005,
`“Jacobs”).
`4 N. Ambrose-Haynes et al., Professional ColdFusion 5.0 (Wrox Press. Ltd.
`2001) (Ex. 1006, “Ambrose-Haynes”).
`5 D. Geary & C. Horstmann, Core JavaServer Faces (Sun Microsystems
`Press, Prentice Hall 2004) (Ex. 1011, “Geary”).
`6 Unix System V NFS Administration (D. Herman, ed., Prentice Hall 1993)
`(Ex. 1007, “NFS Administration”).
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`3
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`II. ANALYSIS
`Joinder for purposes of an inter partes review is governed by 35
`U.S.C. § 315(c), which states:
`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 parties review under section 314.
`“To join a party to an instituted [inter partes review (IPR)], the plain
`language of § 315(c) requires two different decisions.” Facebook, Inc. v.
`Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First,
`the statute requires that the Director (or the Board acting through a
`delegation of authority . . . ) determine whether the joinder applicant’s
`petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect
`joinder, § 315(c) requires the Director to exercise his discretion to decide
`whether to ‘join as a party’ the joinder applicant.” Id.
`A. Whether the Petition Warrants Institution
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition and the
`Preliminary Response shows “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.”
`The patentability challenges in the Facebook IPR met the “reasonable
`likelihood” standard of § 314(a). IPR2021-01456, Paper 10, 2, 70, 72.
`There is no dispute that the Petition presents the same patentability
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`challenges as those for which a trial was instituted in the Facebook IPR.
`See Mot. 2 (asserting that the Petition is “identical in substance to the
`instituted Facebook IPR”); Prelim. Resp. 14 (“[T]his petition is a copy of
`Facebook’s petition.”). In the present proceeding, Patent Owner does not
`dispute the patentability merits of Petitioner’s challenges. See Prelim.
`Resp. 9, n.1.
`We conclude that Petitioner has demonstrated a reasonable likelihood
`of prevailing with respect to the challenged claims of the ’287 patent for the
`reasons set forth in the Facebook IPR. See IPR2021-01456, Paper 10, 31–
`72.
`
`Even if a petition meets the “reasonable likelihood” standard,
`institution of inter partes review is still discretionary. See Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
`§ 314(a) (“The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information presented in
`the petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” (emphasis
`added)).
`Patent Owner contends that we should deny institution based on the
`factors set forth in the Board’s precedential decision in General Plastic
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
`(PTAB Sept. 6, 2017) (designated precedential in relevant part). Prelim.
`Resp. 11–28. General Plastic sets forth a series of factors to be considered
`by the Board in evaluating whether to exercise discretion under 35 U.S.C.
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`§ 314(a) to deny a petition that challenges a patent that was previously
`challenged before the Board. General Plastic, Paper 19 at 15–18.
`These factors are as follows:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`Id. at 16. These factors are “a non-exhaustive list,” and “additional factors
`may arise in other cases for consideration, where appropriate.” Id. at 16, 18.
`Petitioner has not previously filed a petition challenging the ’287
`patent, so the Petition does not present the same situation as in General
`Plastic. We recognize, however, that General Plastic has not been limited
`to instances in which multiple petitions are filed by the same petitioner.
`See, e.g., Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper
`11 (PTAB Apr. 2, 2019) (precedential). Rather, “when different petitioners
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`challenge the same patent, we consider any relationship between those
`petitioners when weighing the General Plastic factors.” Valve, Paper 11 at
`9. Patent Owner argues that there is a “significant relationship” between
`Petitioner and Facebook, the petitioner in the Facebook IPR, because both
`“were sued for infringing the ’287 patent” and because Petitioner copied
`Facebook’s petition. Prelim. Resp. 13–14 (citing Valve, Paper 11 at 2, 9–
`10).
`
`We disagree with Patent Owner’s assertion that there is a Valve-type
`relationship between Petitioner and Facebook that warrants denial. In Valve,
`the Board noted that “Valve and HTC were co-defendants in the District
`Court litigation and were accused of infringing the [challenged] patent based
`on HTC’s VIVE devices that incorporate technology licensed from Valve.”
`Valve, Paper 11 at 10. Based on those facts, the Board determined that there
`was “a significant relationship between Valve and HTC with respect to
`Patent Owner’s assertion of the [challenged] patent.” Id. Nothing in the
`record before us indicates any such relationship between Petitioner and
`Facebook. Rather, Petitioner and Facebook are individual entities among
`dozens of entities that Patent Owner has sued for allegedly infringing the
`’287 patent. See Paper 5, 1–5 (Patent Owner’s Mandatory Notices listing
`more than 50 lawsuits involving the ’287 patent filed by Patent Owner).
`We also do not agree with Patent Owner’s assertion that Petitioner’s
`copying the petition from the Facebook IPR created a “significant
`relationship” between Petitioner and Facebook. See Prelim. Resp. 14–15
`(citing Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8, 12
`(Mar. 17, 2020); Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC,
`IPR2017-01305, Paper 11, 18-19 (Oct. 17, 2017)). The Board decisions on
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`which Patent Owner relies are not precedential and are readily
`distinguishable from the present situation because they did not involve
`joinder, unlike the case here. See Ericsson, Paper 8; Samsung, Paper 11.
`Copying a previously-instituted petition is common in the joinder context
`because it is an efficient mechanism by which to satisfy the requirement of
`35 U.S.C. § 315(c) to file a petition that “warrants the institution of an inter
`partes review.”
`Patent Owner also argues that Petitioner is “gaming . . . the system
`with a time-barred petition” and “should not get a second bite at the apple.”
`Prelim. Resp. 2 (citing Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854,
`Paper 9 (PTAB Oct. 28, 2020) (precedential)). Patent Owner’s reliance on
`Uniloc is misplaced because that case involved a petitioner that had
`previously filed a petition against the challenged patent. See Uniloc, Paper 9
`at 8 (“[T]his is the second petition Apple has filed challenging the claims of
`the ’088 patent.”). As discussed above, Petitioner has not previously filed a
`petition challenging the ’287 patent. Furthermore, joinder based on a time-
`barred petition is expressly authorized by statute. See 35 U.S.C. § 315(b)
`(“An inter partes review may not be instituted if the petition requesting the
`proceeding is filed more than 1 year after the date on which the petitioner,
`real party in interest, or privy of the petitioner is served with a complaint
`alleging infringement of the patent. The time limitation set forth in the
`preceding sentence shall not apply to a request for joinder under subsection
`(c).”). Thus, we disagree with Patent Owner’s characterization of
`Petitioner’s filing as “gaming of the system with a time-barred petition.”
`See Prelim. Resp. 2.
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`Patent Owner’s remaining arguments fail to persuade us that
`discretionary denial is appropriate under the circumstances of this case. For
`example, in addressing the third General Plastic factor, Patent Owner argues
`that Petitioner had the opportunity to study prior filings from other
`proceedings involving the ’287 patent. Prelim. Resp. 18–20. There is no
`question Petitioner studied prior filings. Indeed, Petitioner states that the
`Petition is “intentionally identical in substance” to Facebook’s instituted
`petition. Mot. 2. As noted above, copying a previously-instituted petition is
`an efficient mechanism by which to satisfy the requirement of 35 U.S.C.
`§ 315(c) to file a petition that “warrants the institution of an inter partes
`review.” Furthermore, Petitioner timely filed the Petition and Motion under
`our Rules, as Patent Owner acknowledges. See Prelim. Resp. 18–19 (noting
`that “Petitioner filed this Petition and Motion for Joinder to IPR2021-01456
`. . . two days before the one-month deadline under 37 C.F.R. § 42.122(b)”).
`The second, fourth, and fifth General Plastic factors are “to assess
`and weigh whether a petitioner should have or could have raised the new
`challenges earlier.” General Plastic, Paper 19 at 18. In this case, as noted
`above, Petitioner is not raising new challenges but merely presents the same
`challenges that previously resulted in institution, and Petitioner acted within
`the time frame set forth under our Rules. Moreover, in contrast to the
`situation in Uniloc, Petitioner represents that, prior to the Facebook IPR, it
`“was not aware of the majority of the prior art references, or the specific
`combinations, raised in the grounds” (Reply 4) and there is no evidence to
`rebut that assertion. Thus, the second, fourth, and fifth factors do not favor
`discretionary denial.
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`Relying on Uniloc, Patent Owner argues that the sixth General Plastic
`factor favors denial because, in case of a settlement with Facebook, this case
`will continue with Petitioner. Prelim. Resp. 23–25. In Uniloc, the panel
`determined that the sixth General Plastic factor favored denial because it
`was the petitioner’s second petition, which is not the case here. Uniloc,
`Paper 9 at 12. Indeed, Uniloc expressly acknowledges that “a joinder
`request is usually an efficient mechanism by which to become a petitioner in
`an IPR.” Uniloc, Paper 9 at 12. We find this to be the case here where
`Petitioner merely seeks to join an existing proceeding rather than have a
`separate inter partes review. By arguing that the Petition and the Motion
`should be denied because “Petitioner already had a full opportunity to
`challenge these claims after being alleged to infringe upon them, and
`forfeited that opportunity” (Prelim. Resp. 11), Patent Owner suggests, in
`effect, that joinder based on a time-barred petition should never be granted.
`But this contravenes the express statutory authorization for granting a
`request for joinder after the one-year time bar. See 35 U.S.C. § 315(b).
`Patent Owner’s arguments also suggest that every defendant should file a
`separate petition rather than take advantage of the efficient joinder
`mechanism authorized by statute. Such an approach would be particularly
`inefficient here, where Patent Owner has asserted the ’287 patent against
`over 50 entities. See Paper 5, 1–5. And, in any event, we find that “board
`resources” are not a concern here because this panel has the capacity to see
`the Facebook IPR to its conclusion regardless of the constitution of the
`Petitioner.
`Finally, the seventh General Plastic factor does not favor
`discretionary denial because Petitioner merely seeks to join an ongoing
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`proceeding, and we discern no difficulty in timely issuing a final written
`decision in that proceeding.
`Based on the foregoing, we find that no General Plastic factor weighs
`in favor of not instituting, we see no reason for a discretionary denial. We
`accordingly determine that the Petition warrants institution under § 314, and
`turn to Petitioner’s request for joinder.
`B. Whether the Motion Should Be Granted
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`Petitioner argues that its Motion is timely and should be granted because the
`Facebook IPR will not be impacted if it were to join that proceeding.
`Mot. 2–4. Petitioner also agrees to take an “understudy” role in the
`Facebook IPR. Id. at 5–6.
`Patent Owner argues that the fact that Petitioner “is time-barred”
`under 35 U.S.C. § 315(b) (albeit “absent a grant of joinder”) weighs against
`joinder. Opp. 8–12. We disagree because, as discussed above, § 315(b)
`states that the one-year time bar “shall not apply to a request for joinder
`under subsection (c).”
`Patent Owner also argues that granting joinder would complicate the
`proceedings because Petitioner reserves the right to participate in the
`Facebook IPR under certain conditions. Opp. 13–14. We disagree because
`Facebook has already filed its reply in the Facebook IPR, and, therefore, the
`petitioner-side briefing on the merits in the Facebook IPR is complete.
`Moreover, Petitioner has agreed to act as a understudy and thus will not have
`a material role in this proceeding unless it becomes the sole petitioning
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`entity. Consistent with our normal practice, all petitioning entities will
`speak with one voice.
`Patent Owner further argues that “Petitioner, although subject to a
`duty of candor, did not disclose to the Board, or serve on the party, any
`acknowledgement that it is subject to the time bar under § 315(b) unless
`joinder is granted.” Opp. 12. We are not persuaded that Petitioner violated
`its duty of candor because it is apparent from the Petition, which identified
`the litigations filed against the Petitioner entities (see Pet. 1–2), that they had
`been sued for infringement. Petitioner did not highlight the statutory bar,
`but it was not hidden.
`We also are not persuaded by Patent Owner’s argument that granting
`the Motion would increase complexity because Petitioner “adds a new
`expert . . . who can only complicate, not simplify, matters if Petitioner
`participates actively in the case.” Opp. 13; see Ex. 1019 (Declaration of
`Kevin Jeffay, Ph.D.). Although Petitioner does identify a new expert, it
`states that “Dr. Jeffay agrees with Dr. Madisetti’s opinions and adopts them
`as his own” and that “the declaration of Dr. Jeffay is substantively identical
`to the declaration of Dr. Madisetti and does not expand on the scope of
`expert opinions provided by Dr. Madisetti in the Facebook IPR.” Mot. 3,
`n.1. We understand that Dr. Jeffay will have no active role in the proceeding
`unless and until Facebook settles and Dr. Madisetti withdraws, in which case
`Dr. Jeffay will be limited to the positions previously taken by Dr. Madisetti.
`Having considered the parties’ arguments, we determine that it is
`appropriate under these circumstances to join Petitioner as a party to the
`Facebook IPR.
`
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`III. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`an inter partes review is hereby instituted on the challenges raised in the
`Petition; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder with Case
`IPR2021-01456 is granted, and Petitioner is hereby joined as a petitioner in
`Case IPR2021-01456;
`FURTHER ORDERED that the grounds on which trial in Case
`IPR2021-01456 were instituted are unchanged, and no other grounds are
`added in Case IPR2021-01456;
`FURTHER ORDERED that the Scheduling Order entered in Case
`IPR2021-01456 (Paper 11) and schedule changes agreed by the parties in
`Case IPR2021-01456 (pursuant to the Scheduling Order) shall govern the
`trial schedule in Case IPR2021-01456;
`FURTHER ORDERED that Petitioner’s role in Case IPR2021-01456
`shall be limited as stated by Petitioner in the Motion for Joinder (Paper 3, 5–
`6) unless and until Facebook is terminated from that proceeding;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of Case IPR2021-01456; and
`FURTHER ORDERED that all further filings shall be made in Case
`IPR2021-01456.
`
`
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`PETITIONER:
`
`Adam R. Brausa
`Annie Lee
`DURIE TANGRI LLP
`abrausa@durietangri.com
`alee@durietangri.com
`
`Troy Smith
`David Knapp
`FREEBORN & PETERS LLP
`tsmith@freeborn.com
`dknapp@freeborn.com
`
`
`PATENT OWNER:
`
`Sal Lim
`Robert F. Kramer
`David L. Alberti
`Jerry Tice
`KRAMER DAY ALBERTI LIM TONKOVICH & BELLOLI LLP
`slim@kramerday.com
`rkramer@kramerday.com
`dalberti@kramerday.com
`jtice@kramerday.com
`
`Kenneth J. Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`
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