Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: December 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS
`NETWORK SERVICESINC., VERIZON SERVICES CORP., TIME
`WARNERCABLEINC., ICONTROL NETWORKS,INC., and
`COXCOM, LLC
`Petitioner,
`
`V.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01486
`Patent 6,549,130 B1
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE,and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper 10
`Entered: December 28, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS
`NETWORK SERVICESINC., VERIZON SERVICES CORP., TIME
`WARNERCABLEINC., ICONTROL NETWORKS,INC., and
`COXCOM, LLC
`Petitioner,
`
`V.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner.
`
`Case IPR2015-01486
`Patent 6,549,130 B1
`
`Before HOWARD B. BLANKENSHIP, STACEY G. WHITE,and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG,Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`I.
`
`INTRODUCTION
`
`Petitioner, Terremark North America LLC, Verizon Business
`
`Network Services Inc., Verizon Services Corp., Time Warner Cable Inc.,
`
`iControl Networks, Inc., and Coxcom, LLC,filed a Petition requesting an
`inter partes review of claims 1, 8, 10, 12, 15, 17, 98, 119, 124, 145, and 149
`
`of U.S. Patent No. 6,549,130 B1 (Ex. 1001, “the ?130 patent”). Paper 1
`|
`(“Pet.”). In addition, on August 5, 2015, Petitioner filed a Motion to
`Recognize June 23, 2015, as the filing date. Paper 6 (“Motion”). On August
`
`19, 2015, in response to Petitioner’s Motion, Patent Owner, Joao Control &
`
`Monitoring Systems, LLC,filed Patent Owner’s Opposition to Motion to
`
`Recognize June'23 as the filing date. Paper 7. Patent Ownerfiled a
`
`Preliminary Response. Paper 9 (“Prelim. Resp.”). We havejurisdiction
`
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`
`be instituted “unless .
`
`.
`
`. the information presented in the petition .
`
`.
`
`. shows
`
`that there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challengedin the petition.”
`
`For the reasonsset forth below, we determinethat the Petition was not
`
`filed timely within the statutory period of 35 U.S.C. § 315(b). We, thus,
`
`deny inter partes review ofthe ’130 patent.
`
`A. Identifying the Petitioner
`Petitioner presents variouslists of petitioning parties throughout the
`Petition. The Petition lists Terremark North America LLC, Verizon
`
`Business Network Services Inc., Verizon Services Corp., Time Warner
`
`Cable Inc., iControl Networks, Inc., and Coxcom, LLC in the caption of the
`
`2
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`‘Petition andin the “[rJeal party-in-interest” section. Pet. 1. Five entities,
`
`CoxCom, LLC, Terremark North America LLC, Verizon Communications
`
`Inc., Time Warner Cable, Inc., and iControl Networks, Inc. are identified in
`
`the Petition as Petitioners in the “[l]ead and back-up counsel”section. Pet.
`
`4-5.
`
`Verizon Communications Inc., Verizon Corporate Resources Group
`
`LLC, and Verizon Data Services LLC are identified in the Petition as real
`
`parties-in-interest. Pet. 2. Petitioner notes that Verizon Communications
`
`Inc. has more than 500affiliated entities and states that “each of these
`
`entities agrees to be estopped underthe provisions of 35 U.S.C. §§ 315
`and/or 325 asaresult of any final written decision in the requested IPR to
`
`the same extent that the Petitioners are estopped.” On this record, we
`construe any mismatch between the namedVerizonentities to bea
`typographicalerror.
`
`BecausePetitioner identifies five entities, CoxCom, LLC, Terremark
`
`North America LLC, Verizon Communications Inc., Time Warner Cable,
`Inc., and iControl Networks,Inc. as Petitioners in the “[lJead and back-up
`
`counsel”section (id.), and, as stated supra, any mismatch between the
`
`named Verizon entities (e.g., Verizon Communications Inc., Verizon
`
`Business Network Services, and Verizon Services Corp.) is a typographical
`
`error, we construe any mismatch betweenthe caption of the Petition, the
`“[rjeal party-in-interest” section, and the “[l]ead and back-up counsel”
`section to be a typographicalerror.
`
`We,thus, identify Petitioner as Terremark North America LLC,
`
`Verizon CommunicationsInc., Verizon Services Corp., Verizon Business
`
`3
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`Network Services, Time Warner Cable Inc., iControl Networks, Inc., and
`Coxcom, LLC.
`
`B. Related Matters
`
`Petitioner indicates that the ’130 patent has been asserted in the
`
`following proceedings:
`
`(1) Joao v. LifeShield, Inc., No. 2-15-cv-02772
`
`(E.D.Pa.); (2) Joao v. Slomin’s Inc., No. 2-14-cv-02598 (E.D.N.Y.);
`(3) Joao v. Cox Communications, Inc., No. 1-14-cv-00520 (D. Del.);
`(4) Joao v. Volkswagen Group ofAmerica, Inc., No. 1-14-cv-00517 (D.
`Del.); (5) Joao v. DISH Network Corp., No. 1-14-cv-00522 (D. Del.);
`
`(6) Joao v. Cablevision Systems Corp., No 1-14-cv-00518 (D. Del.);
`
`(7) Joao v. Consolidated Edison, Inc., No. 1-14-cv-00519 (D. Del.); (8) Joao
`
`v. Verizon Communications, Inc., No. 1-14-cv-00525 (D. Del.); (9) Joao v.
`
`Time Warner Cable, Inc., No. 1-14-cv-00524 (D. Del.); (10) Joao v.
`
`DirecTV, No. 1-14-cv-00521 (D. Del.); (11) Joao v. Nissan North America,
`
`Inc., No. 1-14-cv-00523 (D. Del.); (12) Alarm.com Inc. v. Joao, No. 1-14-
`cv-00284 (D. Del.); (13) Joao v. Protect America, Inc., No. 1-14-cv-00134
`(W.D. Tex.); (14) Joao v. FrontPoint Security Solutions LLC, No. 1-13-cv-
`01760 (D. Del.); (15) Joao v. Chrysler Corp., No. 4-13-cv-13957 (E.D.
`
`Mich.); (16) Joao v. Ford Motor Co., No. 4-13-cv-13615 (E.D. Mich.);
`
`(17) Joao v. Mazda Motor ofAmerica Inc., No. 1-13-cv-00728 (D. Del.);
`
`(18) Joao v. Mitsubishi Motors North America Inc., No. 1-13-cv-00614 (D.
`
`Del.); (19) Joao v. Lowe’s Cos., Inc., No. 5-13-cv-00056 (W.D.N.C.);
`
`(20) Joao v. Jaguar Land Rover North America LLC, No. 1-13-cv-00507 (D.
`Del.); (21) Joao v. Vivint Inc., No. 1-13-cv-00508 (D.Del.); (22) Joao v.
`
`4
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`Chrysler Corp., No. 1-13-cv-00053 (S.D.N.Y.); (23) Joao v. Ford Motor
`
`Co., No. 1-12-cv-01479 (D. Del.); (24) Joao v. City of Yonkers, No. 1-12-cv-
`
`07734 (S.D.N.Y.); (25) Joao v. Ford Motor Co., No. 4-12-cv-14004 (E.D.
`Mich.); (26) Joao v. Hyundai Motor America, No. 8-12-cv-00007 (C.D.
`
`Cal.); (27) Joao v. Ford Motor Co., No. 2-12-cv-00033 (C.D. Cal.);
`
`(28) Joao of California, LLC v. Sling Media, Inc., No. 3-11-cv-06277 (C.D.
`
`Cal.); (29) Xanboo Inc. v. Joao of California, No. 8-11-cv-00604 (C.D.
`
`Cal.); (30) Joao of California, LLC v. ACTI Corp., No. 8-10-cv-01909 (C.D.
`
`Cal.); and (31) Joao v. Cenuco, Inc., No. 7-05-cv-01037 (S.D.N.Y.). Pet. 2—
`
`4; Paper5.
`
`According to Patent Owner, the ’130 patentalso is the subject of four
`
`ex parte reexaminations, Reexamination Control Nos.: (1) 90/013,303;
`
`(2) 90/013,301; (3) 90/013,302; and (4) 90/013,300. Paper 5, 5. Petitioner
`
`concurrently filed petitions requesting an inter partes review ofthe
`
`following U.S. Patent Nos.: (1) 6,549,130 (Case IPR2015-01509);
`(2) 6,542,077 B2 (Case IPR2015-01466); (3) 6,587,046 (Case IPR2015-
`
`01477); (4) 7,277,010 (Case IPR2015-01484); (5) 6,542,076 (Case
`
`IPR2015-01478); (6) 7,397,363 (Case IPR2015-01482); (7) 7,397,363 (Case
`
`IPR2015-01485); and (8) 6,542,076 (Case IPR2015-01508). Jd. at 4—S.
`
`Il. ANALYSIS
`
`Becauseat least one of the petitioning parties was served with a
`
`complaint on June 23, 2014 (Exs. 2002-2005), the statutory bar date for
`
`IPR2015-01486 is June 23, 2015. 35 U.S.C. § 315(b); 37 C.F.R.
`
`§ 42.101(b). Petitioner, however, was accordeda filing date of June 24,
`
`5
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`2015. Paper 3. Petitioner filed, served, and paid the fee for IPR2015-01486
`
`on June 24, 2015, whichis one day after the statutory bar date. Motion 2-5:
`(citing Ex. 1 § 1-12).!
`
`Petitioner contendsthatit is not barred or estopped from requesting an
`
`inter partes review ofthe ’130 patent, thus, satisfying the requirements of
`
`§ 315(b) for the following five reasons: (1) the Patent Review Processing
`System (“PRPS”) “was apparently malfunctioning” whenPetitioner
`repeatedly attempted to upload documents the night of June 23, 2015; (2) the
`
`three petitions (i-e., IPR2015-01482, IPR2015-01485, and IPR2015-01486)
`
`werefiled serially, beginning with IPR2015-01482, to avoid having to
`
`reload any previously submitted exhibits, which caused Petitioner to
`
`complete the filing ofall three cases after June 23, 2015; (3) the Board has
`
`the authority, as demonstrated in past decisions, to recognize thefiling date
`
`for this inter partes review as June 23, 2015; (4) there is no prejudice to
`Patent Ownerbecause immediate remedial measures were taken right away
`by Petitioner; and (5) one of the petitioning parties, CoxCom, LLC, was not
`
`served with a complaint until August 18, 2014 andis, thus, not time barred
`
`' Exhibits 1-4,filed by Petitioner with the Motion, do not comply with
`37 C.F.R. § 42.63(c), requiring all exhibits to be separately and uniquely
`numbered within the range of 1001-1999, or 37 C.F.R. § 42.63(d)(1)(ii),
`requiring exhibits not filed with the petition to include “the party’s name,
`followed by a unique exhibit number, the namesofthe parties, and thetrial
`number.” Motion. Petitioner, instead, filed their motion, declarations, and
`all supporting exhibits together as the Motion. To avoid potential for further
`confusion, wetreat the citations to Exhibits 1-4 as though Petitioner had
`identified and filed correct exhibits. We note that Petitioner’s non-
`compliance with these rules is mootin light of our denial of the Motion and
`the Petition.
`
`6
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`from filing a petition. Motion 2-9. Wedisagree that Petitioner is not time
`
`barred or estopped. Weaddress Petitioner’s argumentsin turn.
`
`A.
`
`Petitioner has not Shown that PRPS was “Apparently
`Malfunctioning”’
`
`Petitions for inter partes review mustbefiled within one yearafter
`
`Petitioner was served with a complaint alleging infringement. 35 U.S.C.
`
`§ 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a
`
`filing date once (1) a petition has beenfiled; (2) payment has been made;
`
`and (3) the complete petition is served on the patent owner. 35 U.S.C.
`
`§ 312(a); 37 C.F.R. § 42.106(a). The Board hasdiscretion to waive non-
`
`statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit
`
`a party to file a motionto correct a “clerical or typographical mistake.”
`
`37 C.F.R. § 42.104(c). The burden of proof rests with the movingparty,
`
`whichis, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.
`
`It is undisputed that at least two of the petitioning parties were served
`
`with a complaint alleging infringement of the ’130 patent on June 23, 2014.
`
`Ex. 2001 9§ 1-4; Exs. 2002-2005. On June 23, 2015, Petitioner failed to
`
`comply with the statutory requirements of 35 U.S.C. § 312(a) by not paying
`
`the required fee and failing to meet the requirements of 37 C.F.R.
`§ 42.106(a) by notfiling and serving the Petition and its supporting
`
`evidence. Motion 2—S (citing Ex. 1 Jf 1-12). On June 24, 2015, one day
`
`after the one year statutory deadline, Petitioner completed filing of the
`
`Petitions at issue. /d. at 3—5 (citing Ex. 1 ff 1-12).
`
`
`
`IPR2015-01486
`Patent 6,549,130 B1
`
`Petitioner alleges that the filings were one day late because of PRPS
`
`“apparently malfunctioning.” Motion 2~S. The burdenofproof, as stated
`
`supra, rests with Petitioner. Petitioner has not shown persuasively how a
`
`series of screenshots illustrating a “pending”status (id. at 3-4 (citing Ex. 1
`
`{| 1-12)) demonstrates that PRPS was “apparently malfunctioning.” Put
`
`another way,“pending”is a normal status message that shows the document
`is being uploaded. In addition, there are other possible reasons, besides
`PRPSallegedly malfunctioning, why Petitioner was unable to upload their
`documents at the required time such as Petitioner’s network malfunctioning,
`Petitioner’s computer malfunctioning, etc. Moreover, our internal
`
`|
`
`investigation confirms that PRPS access on June 23, 2015 was functioning
`
`properly.
`Evenif Petitioner was able to show that PRPS was malfunctioning
`with respect to uploading documents, whichit did not, Petitioner has not
`
`shown persuasively why it was unable to serve to Patent Owner and whyit
`
`did not pay the filing fee on time. In addition, an alleged PRPS malfunction
`
`whenfiling IPR2015-01482 would not prevent having one employee, using
`
`a different computer, from uploading the IPR2015-01486 Petition and
`
`supporting documents while another employee troubleshot the alleged PRPS
`
`malfunction with filing IPR2015-01482.
`
`Petitioner, thus, has not shown persuasively howaseries of screen
`
`shots and a statement that PRPS was “apparently malfunctioning”justifies
`
`.
`
`the relief requested.
`
`
`
`IPR2015-01486
`Patent 6,549,130 B1
`
`B.
`
`Petitioner’s Serial Filings did not Prevent Timely Filing
`
`AlthoughPetitioner alleges the three petitions (i-e., IPR2015-01482,
`
`IPR2015-01485, and IPR2015-01486) were filed in series “to avoid having
`
`to reload any previously submitted exhibits” (Motion 4 (citing Ex. 1 § 7)),
`
`this argument is not persuasive because PRPSrequires separate uploading
`
`and filing of documents for each petition. Petitioner’s filings additionally
`
`undermineits position because Petitioner did not cross-reference earlier-
`
`filed documentsin later-filed petitions, but instead, re-filed numerous
`
`duplicative exhibits in each of the three petitions at issue. See, e.g., Ex.
`
`1003 in IPR2015-01482, -01485, and -01486; Ex. 1004 in IPR2015-01482, -
`
`01485, and 01486. Thus, Petitioner’s argumentthat “the second. .
`
`. and
`
`third petition .
`
`.
`
`. could notbefiled until the first filing was completed”
`
`(Motion 4) is not persuasive.
`
`Petitioneralso alleges but for PRPS malfunctioning, their counsel
`would have “serve[d] the three petitions and accompanying documents.”
`Ex. 194. Service andfiling, however, are independent events, as
`demonstrated by the fact that Petitioner printed the documents for service
`
`before completing the electronic filing. Jd. 43. Petitioner acknowledges
`
`that there was more than one employeein the office at the time offiling. Jd.
`
`q 4.
`
`Petitioner, thus, has not shown persuasively how the combination of
`
`serial filings, a series of screen shots, and a statement that PRPS was
`apparently malfunctioningjustifies the relief requested.
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`The Board’s Prior Decisions are Distinguishable |
`C.
`Petitioner cites a numberof non-precedential Board decisions to
`
`support its arguments. These cases, however, are distinguishable because
`
`none of them addressed the combinationofa failure to file, serve, and pay
`
`the required fee as set out in our Rules and governingstatute.
`
`In E*Trade Financial Corp. v. Droplets, Inc., Case IPR2015-00470
`
`(PTAB Apr. 20, 2015) (Paper 17), the Board addressed a Motion to Change
`
`the Filing Date. In E*Trade, the petitioner received a notice from PRPSthat
`
`the system was “currently down” whenthe petitioner attemptedto file the
`
`petition. Moreover, in E*Trade, a Board employee, acting with the authority
`
`of the Board, instructed the petitioner to email its petition and supporting
`
`documents as an attachment. Thepetitioner in E*Trade paid timely the
`
`filing fee, and served timely the petition on the patent owner. The petitioner
`
`in E*Traderefiled the petition and supporting documents when PRPS
`
`functioned properly. The Board granted the motion becauseall three filing
`requirements were met;in particular, the documents were emailed timely,
`fees were paid timely, and the documents were served timely. E*Trade, slip
`
`op. at 3-4.
`
`Regarding ConMed Corp. v. Bonutti Skeletel Innovations LLC, Case
`
`IPR2013-00624 (PTAB Mar. 14, 2014) (Paper 22), the Board addressed a
`
`Motion to Correct Filing Date. The petitioner in ConMedpaid timely the
`
`filing fee, and served timely the petition on the patent owner. The petitioner
`
`in ConMedfiled the petition and supporting documents, but because the
`
`petitioner failed to click “Submit” whenfiling those documents, the
`
`proceeding was accordeda filing date after the statutory bar. The petitioner
`
`10
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`in ConMeddid nothit the submit button until several days after the statutory
`
`bar date whenit refiled exhibits with the corrected labels. The Board,
`
`however, granted the motion primarily becauseall three filing requirements
`
`were met; in particular, the documents were uploadedandfiled timely but
`
`for an omissionto click a “Submit” button, fees were paid timely, and the
`
`documents were served timely. ConMed,slip op. at 2-6.
`
`Asfor Oracle Corp. v. Maz Encryption Techs. LLC, Case IPR2014-
`
`00472 (PTAB May1, 2014) (Paper 9), the Board addressed a Motion to
`Recognize March 1, 2014 as Filing Date. The petitioner in Oracle paid
`
`timely the filing fee, and served timely the petition on the patent owner. The
`
`petitioner in Oracle was unableto timely file the petition because PRPS was
`
`malfunctioning. The Board, however, granted the motion becauseits
`
`“internal investigation confirm[ed] that PRPS access .
`
`.
`
`. was indeed
`
`compromised.” Oracle, slip op. at 2.
`
`.
`
`In 2Wire, Inc. v. TQ Delta, LLC, Case IPR2015-00239 (PTAB Jan.
`
`15, 2015) (Paper 10), the Board addressed a Motion to Correct Filing Date.
`
`In 2Wire, counsel pressed the “submit” button after midnight. The Board,
`
`however, granted the motion becauseall three filing requirements were met;
`
`in particular, the documents were uploaded timely, fees were paid timely,
`
`and the documents were served timely. 2Wire, slip op. at 4-8.
`
`Regarding Micron Tech., Inc. v. e.Digital Corp., Case IPR2015-00519
`
`(PTAB Mar. 24, 2015) (Paper 14), the Board addressed a Motion to Deny a
`
`Petition a Filing Date based on Improper Service. The petitioner in Micron
`
`filed timely the petition, and paid timely the filing fee. In addition, in
`
`Micron,the petitioner served a copy ofthe petition and supporting
`
`11
`
`
`
`IPR2015-01486
`‘Patent 6,549,130 Bl
`
`documents on the patent owner’s litigation counsel via email more than two
`weeksprior to expiration of the statutory bar date, and email correspondence
`
`betweenthe parties indicated that the patent owner’s litigation counsel was
`
`in receipt of the documents priorto the statutory bar date. The petitioner in
`
`Micronfailed to timely serve the patent ownerat the correspondence address
`
`of record. The Board, however, denied the patent owner’s motion because
`
`the patent owner, throughits litigation counsel, actually received the petition
`
`prior to the one year statutory bar date. Micron,slip op. at 4-6.
`
`Asfor ABB Inc. v. Roy-G-Biv Corp., Case IPR2013-00063 (PTAB
`
`Jan. 16, 2013) (Paper 21), the Board addressed a Motion to Correct Petition.
`
`The petitioner in ABB served timely the petition, and paid timely the filing
`
`fee. The petitioner in ABB failed to timely file the correct exhibits. The
`
`Board, however, granted the motion based on a finding that although the
`
`petitioner filed the wrong exhibits, the petitioner served timely the correct
`
`exhibits on the patent owner. ABB,slip op. at 2, 5-11.
`
`In Schott Gemtron Corp. v. SSW Holding Co. Inc., Case IPR2014-
`
`00367 (PTAB Sept. 22, 2014) (Paper 30), the Board addressed a Motion to
`
`Correct Filing Date. The petitioner in Schott served timely the petition, and
`
`paid timely the filing fee. In Schott, the petitionerfiled timely an incorrect
`
`exhibit. The Board, however, granted the motion becausethe petitioner
`
`served timely the petition and supporting documents, which the patent owner
`
`acknowledged during a conferencecall. Schott, slip op. at 2-4.
`
`Regarding Syntroleum Corp. v. Neste Oil OYJ, Case IPR2013-00178
`
`(PTAB July 22, 2013) (Paper 21), the Board addressed a Motion to Correct
`
`Petition. The petitioner in Syntroleum paid timely the filing fee. In
`
`12
`
`
`
`\
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`Syntroleum,the petitionerfiled timely and served timely the petition, but
`
`filed an incorrect reference and served the same incorrect reference. The
`
`petitioner in Syntroleum intended to file a published European application,
`
`but instead, the petitioner filed inadvertently and served inadvertently a
`
`patent that issued from the publication. The Board, however, granted the
`
`motion becauseboth thepetitioner’s original petition and declaration cited
`
`the published European application. Syntroleum, slip op. at 2-6.
`
`Thus, as described above,all of these cases are distinguishable from
`
`the facts currently before us. Petitioner has not directed us to any case
`
`wherethe petitioning party failed to file, serve, and pay the required fee by
`
`the statutory bar date.
`
`D._Petitioner’s Arguments Pertaining to a Prejudice to Patent Owneris
`Misplaced
`
`Petitioner contendsthere is no prejudice to Patent Owner because
`
`immediate remedial measures were taken right away by Petitioner. Motion
`
`9. Petitioner’s argument, however, is misplaced because the standard for
`permitting a late filing is not dependent solely on whether there was
`
`prejudice to Patent Owner.
`
`We,therefore, decline to grant the relief requested.
`
`E.
`
`The Presence of CoxCom, LLC does not Remove the Statutory Bar
`
`Petitioner contendsthat one of the petitioning parties, CoxCom, LLC,
`
`was not served with a complaint until August 18, 2014, andis, thus, not time
`
`barred from filing the Petition. Motion 9. We disagree that Petitioner is not
`
`time barred.
`
`13
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`“An inter partes review may notbeinstituted if the petition requesting
`
`the proceedingis filed more than | year after the date on which the
`
`petitioner, real party in interest, or privy ofthe petitioner is served with a
`
`complaint alleging infringement of the patent” (emphasis added). 35 U.S.C.
`
`§ 315(b).
`
`Petitioner acknowledges that Terremark North America LLC, Verizon
`
`Business NetworkServices Inc., Verizon Services Corp., Time Warner
`
`Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon
`
`Communications Inc., Verizon Corporate Resources Group, LLC, and
`
`Verizon Data Services LLC arereal-parties-in-interest. Pet. 1-2. Petitioner
`
`also acknowledges that Terremark North America LLC, Verizon
`
`Communications Inc., and Time Warner Cable Inc. were served with a
`
`complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is
`
`precludedfor at least the reasons that Terremark North America LLC and
`
`Verizon CommunicationsInc. are real parties-in-interest and were served
`
`with a complaint on June 23, 2014. 35 U.S.C. § 315(b).
`
`CoxCom, LLC,is precluded additionally from filing the Petition for
`
`other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc.,
`Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board
`
`addressed a Motion of Adverse Judgement against PNC. In PNC Bank,
`
`PNC,one ofthree petitioners, violated 35 U.S.C. § 325(a)(1) byfiling the
`
`petition for covered business method review (“CBM”)after it had filed a
`
`district court suit challenging the validity of the patent challengedin the
`
`CBM.In an attemptto eliminate the statutory bar against PNC, PNC moved
`
`for entry of adverse judgmentagainst it in the CBM proceeding and
`
`14
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`contendedthat other petitioners could proceed with the petition without
`
`further involvement by PNC. The Boarddeniedinstitution on the CBM
`
`petition and dismissed the motion because PNCalready had exerted
`
`substantial control over the case, and granting PNC’s request for adverse
`
`judgment would not obviate the control that PNC already had exerted. Jd.,
`
`slip op.at 4.
`
`Similarly, Terremark North America LLC and the named Verizon
`
`entities in this case already have exerted substantial control over the case by
`
`participating in filing the Petition, appointing counsel, etc. The presence of
`
`CoxCom, LLC, therefore, does not removethe statutory bar.
`
`Il. CONCLUSION
`
`For the foregoing reasons,the Petition falls outside the one-year time
`
`bar set forth in 35 U.S.C. § 315(b). We, thus, deny inter partes review of
`
`the °130 patent.
`
`IV. ORDER
`
`Forthe foregoing reasons,it is
`ORDEREDthatthe Petition is denied as to all challenged claims and
`
`notrial is instituted.
`
`
`
`IPR2015-01486
`Patent 6,549,130 Bl
`
`PETITIONER:
`
`Vaibhav P. Kadaba
`D. Clay Holloway
`Kilpatrick Townsend & Stockton LLP
`wkadaba@kilpatricktownsend.com
`cholloway@kilpatricktownsend.com
`
`Frank C. Cimino,Jr.
`Megan S. Woodworth
`Venable LLP
`FCCimino@venable.com
`MSWoodworth@venable.com
`
`Jackson Ho
`K&L Gates LLP
`jackson.ho@klgates.com
`
`PATENT OWNER:
`
`Raymond Joao
`rayjoao@optonline.net
`
`René A. Vazquez
`HENINGER GARRISON DAVIS, LLC
`rvazquez@hgdlawfirm.com
`
`16
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
