`Trials@uspto.gov
`571-272-7822 Entered: November 20, 2024
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`PROXENSE, LLC,
`Patent Owner.
`
`IPR2024-01318
`Patent 8,646,042 B1
`
`
`Before THU A. DANG, DAVID C. MCKONE, and
`NORMAN H. BEAMER Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2024-01318
`Patent 8,646,042 B1
`
`
`Google LLC (“Petitioner”) filed a Petition for inter partes review of
`claims 1, 5, 6, 8–11, 13, and 14 of U.S. Patent No. 8,646,042 B1 (“the ’042
`patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join
`Microsoft’s instituted proceeding in IPR2024-00573 (“Microsoft IPR”),
`along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4).
`Petitioner also acknowledges that it previously filed a petition (“Original
`Petition”) for inter partes review of claims 1–6, 8–15, and 17–20 of the ’042
`patent in IPR2024-00782. Notice 1. Thus, Petitioner “requests that action
`on this motion be held in abeyance until, and only if, the Board declines to
`institute Petitioner’s Original Petition.” Id.; see also Motion 1.
`The Board has instituted an inter partes review of the ’042 patent in
`IPR2024-00782. See IPR2024-00782, Paper 13. That is, we have not
`declined to institute Petitioner’s Original Petition in IPR2024-00782. Id.
`Accordingly, the condition on which Petitioner’s Petition and Motion for
`Joinder is based, i.e., “in abeyance until, and only if, the Board declines to
`institute [in IPR2024-00782],” has not come to pass. Therefore, we deny the
`Petition and the Motion for Joinder.
`Here, Petitioner acknowledges that it “has two concurrent petitions
`challenging the validity of the same patent.” Notice 1. Although Petitioner
`provides “a ranking of the petitions in the order in which it wishes the Board
`to consider the merits” and “a succinct explanation of the differences” (id.),
`Petitioner requests that “should the Board decide to institute only a single
`petition against the ’042 patent, . . . the Board institute Petitioner’s Original
`Petition (in IPR2024-00782).” Id. Since, as discussed above, the Board has
`instituted an inter partes review of the ’042 patent in IPR2024-00782, we
`deny the Petition and the Motion for Joinder in the current IPR.
`
`
`
`IPR2024-01318
`Patent 8,646,042 B1
`
`
`ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is denied as to claims 1, 5, 6, 8–11, 13, and 14 of the ’042 patent; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder (Paper 3)
`is denied.
`
`
`
`
`3
`
`
`
`IPR2024-01318
`Patent 8,646,042 B1
`
`FOR PETITIONER:
`Erika Arner
`Kara Specht
`Cory Bell
`Shawn Chang
`Safiya Aguilar
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`erika.arner@finnegan.com
`kara.specht@finnegan.com
`cory.bell@finnegan.com
`shawn.chang@finnegan.com
`safiya.aguilar@finnegan.com
`
`FOR PATENT OWNER:
`David L Hecht
`James Zak
`Hecht Partners LLP
`dhecht@hechtpartners.com
`jzak@hechtpartners.com
`proxense@hechtpartners.com
`
`4
`
`
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