Trials@uspto.gov
`571-272-7822
`
`Paper No. 8
`Entered: September 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VALVE CORPORATION,
`Petitioner,
`
`Vv.
`
`PALTALK HOLDINGS,INC.,
`Patent Owner.
`
`Case IPR2018-01238
`Patent 6,226,686 & 6,226,686 Cl
`
`Before THU A. DANG, KARL D. EASTHOM,and
`NEIL T. POWELL, Administrative Patent Judges.
`
`POWELL,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 CFR. § 42.108; 37 CFR. § 42.122(b)
`
`
`571-272-7822
`
`Paper No. 8
`Entered: September 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VALVE CORPORATION,
`Petitioner,
`
`Vv.
`
`PALTALK HOLDINGS,INC.,
`Patent Owner.
`
`Case IPR2018-01238
`Patent 6,226,686 & 6,226,686 Cl
`
`Before THU A. DANG, KARL D. EASTHOM,and
`NEIL T. POWELL, Administrative Patent Judges.
`
`POWELL,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 CFR. § 42.108; 37 CFR. § 42.122(b)
`
`
`
`IPR2018-01238
`Patent 6,226,686 & 6,226,686 Cl
`
`I.
`
`INTRODUCTION
`
`On June 14, 2018, Valve Corporation (“Petitioner”) filed a
`
`Petition, seeking inter partes review of claims 1-4, 7-21, 28-35, 39,
`
`40, 47-54, 56, 57, and 64-70 of U.S. Patent No. 6,226,686 (“the ’686
`
`patent”). Paper 2 (“Pet.”). Paltalk Holdings, Inc. (“Patent Owner’)
`
`waivedits preliminary response. Paper7.
`
`Along with the Petition, Petitioner filed a Motion for Joinder to
`
`join this proceeding with IPR2018-00131. Paper 3 (“Mot.”). Patent
`
`Owner does not oppose the Motion.
`
`Asexplained further below, weinstitute an inter partes review
`
`on the same groundsasinstituted in IPR2018-00131 and grant
`
`Petitioner’s Motion for Joinder.
`
`“II.
`
`DISCUSSION
`
`In IPR2018-00131, Riot Games,Inc. challenged claims 1-4, 7—
`
`21, 28-35, 39, 40, 47-54, 56, 57, and 64—70 ofthe ’686 patent based
`
`on the following grounds:
`References|Basis|Claims
`Aldred' and RFC 1692?|§ 103|1-4, 7-21, 28-30, 34, 35, 39, 40, 47—
`49, 53, 54, 56, 57, 64-66, and 70
`Aldred, RFC 1692, and|§ 103|31-33, 50-52, and 67-69
`RFC 1459?
`
`
`
`On May15, 2018, we instituted an inter partes review to
`
`review the patentability of those claims. Riot Games, Inc. v. Paltalk
`
`Holdings, Inc., YPR2018-00131, Paper 11.
`
`' WO 94/11814 (May 26, 1994) (“Aldred”; Ex. 1009).
`Request for Comments (RFC) 1692 (Aug. 1994) (“RFC 1692”; Ex. 1010).
`3 Request for Comments (RFC) 1459 (May 1993) (“RFC 1459”; Ex. 1025).
`2
`
`
`
`IPR2018-01238
`Patent 6,226,686 & 6,226,686 Cl
`
`The Petition in this case is substantively identical to the one in
`
`IPR2018-00131. Compare IPR2018-00131, Paper 1 with IPR2018-
`
`01238, Paper 2. For the samereasonsstated in our Decision on
`
`Institution in IPR2018-00131, we institute an inter partes review in
`
`this proceeding on the same grounds. See IPR2018-00131, Paper 11.
`
`Having determinedthat institution is appropriate, we now turn
`
`to Petitioner’s Motion for Joinder. Underthestatute,“[i]f the
`
`Directorinstitutes 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.” 35 U.S.C. § 315(c).
`
`Whendetermining whetherto grant a motion for joinder we consider
`
`factors such as timing and impact ofjoinder onthetrial schedule, cost,
`
`discovery, and potential simplification of briefing. Kyocera Corp.v.
`
`SoftView, LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24,
`
`2013) (Paper 15).
`
`Under the circumstancesof this case, we determine that joinder
`
`is appropriate. Petitioner filed the Petition and Motion for Joinder in
`the present proceeding within one month ofourinstitution of an inter
`
`partes review in IPR2017-00131, and thus, satisfies the requirement
`
`of 37 C.F.R. § 42.122(b). Petitioner represents that the Petition in this
`
`case is “substantially identical to the petition, filed by Riot Games,
`
`Inc. (‘Riot’), on which the Board instituted IPR2018-00131.” Mot. 1.
`
`According to Petitioner, the Petition “challenges the same claims of
`
`the 686 patent based on the same grounds and the same evidence as
`
`Riot’s petition in IPR2018-00131.” Jd. Petitioner asserts that it will
`
`“take an understudy role in the proceedings for as long as Riot
`
`3
`
`
`
`IPR2018-01238
`Patent 6,226,686 & 6,226,686 Cl
`
`remains a party.” Jd. Asa result, Petitioner avers that joinder “does
`
`not raise any new groundsandwill not impact the schedule or impose
`
`substantial costs on the parties to IPR2018-00131 or the Board."
`
`Jd.
`
`Therefore, Petitioner asserts, joinder will result in no prejudice to
`
`either Riot or Paltalk.
`
`/d. at 6. Petitioner also asserts that joinder will
`
`not affect the schedule, and will simplify discovery and briefing. Jd.
`
`.
`at 7-8.
`Where,as in the present case, a party seeks to take a secondary
`
`role in an on-going IPR, joinder promotes economyandefficiency,
`
`thereby reducing the burden on the Patent Ownerandonthe limited
`resources of the Board, as comparedto distinct, parallel proceedings.
`See 37 C.F.R. § 42.1(b) (instructing that an inter partes review must
`
`|
`
`be conducted to “secure the just, speedy, and inexpensive resolution’’).
`
`In view of the foregoing, we find that joinder based upon the
`
`conditions stated by Petitioner in its Motion for Joinder will havelittle
`
`or no impact on the timing, cost, or presentation ofthetrial on the
`
`instituted ground. Discovery and briefing will be simplified if the
`
`proceedings are joined. Having considered Petitioner’s Motion, the
`
`Motionis granted.
`
`HI.
`
`ORDER
`
`Accordingly,it is
`
`ORDEREDthattrial is instituted in IPR2018-01238 on the following
`
`grounds:
`
`1. claims 1-4, 7-21, 28-30, 34, 35, 39, 40, 47-49, 53, 54, 56, 57, 64-
`
`66, and 70 as obvious over Aldred and RFC 1692;
`
`
`
`IPR2018-01238
`Patent 6,226,686 & 6,226,686 Cl
`
`2. claims 31-33, 50-52, and 67-69 as obvious over Aldred, RFC
`
`1692, and RFC 1459;
`
`FURTHER ORDEREDthat Petitioner’s Motion for Joinder
`
`with IPR2018-00131 is granted;
`
`FURTHER ORDEREDthat IPR2018-01238 is terminated and
`
`joined to IPR2018-00131, pursuant to 37 C.F.R. §§ 42.72, 42.122;
`
`FURTHER ORDEREDthat absent leave of the Board, Valve
`
`Corporation shall maintain an understudy role with respect to Riot,
`Inc., coordinate filings with Riot, Inc., not submit separate substantive
`filings, not participate substantively in oral argument, and not actively
`
`participate in deposition questioning except with the assent ofall
`
`parties;
`
`FURTHER ORDEREDthat the Scheduling Orderin place for
`
`IPR2018-00131 shall govern the joined proceedings;
`
`FURTHER ORDEREDthatall future filings in the joined
`
`proceeding are to be made only in IPR2018-00131;
`
`FURTHER ORDEREDthat the case caption in IPR2018-00131
`
`for all further submissions shall be changed to add Valve Corporation
`
`as a namedPetitioner after Riot, Inc., and to indicate by footnote the
`
`joinder of IPR2018-00131 to that proceeding,as indicated in the
`
`attached sample caption;
`
`FURTHER ORDEREDthat a copy ofthis Decision shall be
`
`entered into the record of IPR2018-00131.
`
`
`
`IPR2018-01238
`Patent 6,226,686 & 6,226,686 Cl
`
`FOR PETITIONER VALVE:
`
`Sharon A. Israel
`Parick A. Lujin
`Keith E. Friesen
`SHOOK, HARDY & BACON L.L.P.
`sisrael@shb.com
`plujin@shb.com
`kfriesen@shb.com
`
`Reynaldo C. Barcelo
`BARCELO, HARRISON & WALKER, LLP
`rey@bhiplaw.com
`
`FOR PATENT OWNER:
`
`Gregory M. Howison
`Keith D. Harden
`Brian D. Walker
`MUNCK, WILSON, MANDALA, LLP
`ghowison@munckwilson.com
`kharden@munckwilson.com
`bwalker@munckwilson.com
`
`FOR PETITIONER RIOT (IPR2018-00131):
`
`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper No. 8
`Entered: September 25, 2018
`
`Sample Case Caption
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RIOT, INC., and
`VALVE CORPORATION,
`Petitioners,
`
`Vv.
`
`PALTALK HOLDINGS,INC,
`Patent Owner.
`
`Case IPR2018-00131!
`Patent 6,226,686 & 6,226,686 Cl
`
`' Case IPR2018-01238 has been joined with this proceeding.
`
`
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