Trials @uspto. gov
`571-272-7822
`
`Paper 15
`Date: October 7, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`V.
`
`EXPRESS MOBILEINC.,
`Patent Owner.
`
`IPR2022-0079 1
`Patent 9,928,044 B2
`
`Before JEFFREY S. SMITH, AARON W. MOORE,and
`RUSSELLE.CASS, Administrative Patent Judges.
`
`CASS, 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.LR. § 42.122
`
`
`571-272-7822
`
`Paper 15
`Date: October 7, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`V.
`
`EXPRESS MOBILEINC.,
`Patent Owner.
`
`IPR2022-0079 1
`Patent 9,928,044 B2
`
`Before JEFFREY S. SMITH, AARON W. MOORE,and
`RUSSELLE.CASS, Administrative Patent Judges.
`
`CASS, 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.LR. § 42.122
`
`
`
`IPR2022-0079 1
`Patent 9,928,044 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Google LLC (‘Petitioner’) filed a Petition requesting interpartes
`
`review of claims 1,2, 5—7, 11, and 12 of U.S. Patent No. 9,928,044 B2 (“the
`
`°044 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. , IPR2021-01457 (“the Facebook IPR”), which involves the same claims
`
`of the ’044 patent. Paper 3 “Motion”or “Mot.”).
`
`Express Mobile, Inc. (“Patent Owner’’) opposed the Motion (Paper7,
`
`“Opposition” or “Opp.”’), and Petitionerfiled a reply in support of the
`
`Motion (Paper8).
`
`Patent Owneralso filed a Preliminary Response. Paper 9 (Prelim.
`
`Resp.”).
`
`For the reasons explained below, we determinethatinstitution of inter
`
`partes review is warranted on the samegroundsinstituted in the Facebook
`
`IPR, and wegrant Petitioner’s Motion for Jomder.
`
`B. Real Parties in Interest
`
`The parties identify themselvesasthe real parties in interest. Pet. 1;
`
`Paper 5, 1.
`
`C. Related Matters
`
`Asrequired by 37 C.F.R. § 42.8(b)(2), the parties identify various
`
`related matters, including numerousdistrict court proceedings involving the
`
`’044 patent, its parent patent, U.S. Patent No. 9,063,755 (“the ’755 patent”),
`
`and/or a continuation of the ’755 patent, U.S. Patent No. 9,47,287 (the ’287
`
`patent”). Pet. 1-5; Paper 5, 1-6. Amongtheidentified related matters are
`
`several interpartes matters involving the ’044 patent: IPR2021-01457 (“the
`
`2
`
`
`
`IPR2022-0079 1
`Patent 9,928,044 B2
`
`Facebook IPR”) and IPR2022-00247 (“the Booking IPR”) (both instituted);
`
`IPR2022-00789 (“the Google IPR”) (co-pending); and IPR2021-00711,
`
`IPR2021-01146, and IPR2021-01225 (all denied). Pet. 1, 5; Paper5, 4.
`
`D. Asserted Grounds of Unpatentability
`
`Petitionerasserts that claims 1, 2, 5—7, 11, and 12 are unpatentable on
`
`the following grounds:
`
`Witkowski’
`
`1, 2,5-7, 12
`
`11
`
`103(a)
`
`103(a)
`
`Anderson,! Bowers,’ Jacobs,*
`Ambrose-Haynes,’ and Geary”
`Anderson, Bowers, Jacobs,
`Ambrose-Haynes, Geary, and NFS
`Administration®
`
`1, 2,5-7, 12
`
`103
`
`Anderson, Bowers, Jacobs,
`Ambrose-Haynes, Geary,
`
`'G. Anderson & P. Anderson, JAVA Studio Creator Field Guide, 2™ed.
`(Prentice Hall 2006) (Ex. 1003, “Anderson’’).
`> B. Bowers & S. Lane, Advanced FileMaker Pro 6 Web Development
`(Wordware Pub. 2003) (Ex. 1004, “Bowers”).
`3S. Jacobs, Foundation XMLfor Flash (Springer-Verlag 2006) (Ex. 1005,
`Jacobs”).
`4N. Ambrose-Hayneset al., Professional ColdFusion 5.0 (WroxPress. Ltd.
`2001) (Ex. 1006, “Ambrose-Haynes’”’).
`> D. Geary & C. Horstmann, Core JavaServer Faces (Sun Microsystems
`Press, Prentice Hall 2004) (Ex. 1011, “Geary”).
`© Unix System V NFS Administration (D. Herman,ed., Prentice Hall 1993)
`(Ex. 1007, “NFS Admunistration’’).
`7 Witkowski et al., U.S. Patent No. 6,125,360, issued Sept. 26, 2000 (Ex.
`1013, “Witkowskr’).
`
`
`
`IPR2022-0079 1
`Patent 9,928,044 B2
`
`Administration, Witkowski
`
`Anderson, Bowers, Jacobs,
`Ambrose-Haynes, Geary, NFS
`
`As further support, Petitioner offers the Declarations of Vijay K.
`
`Madisetti, Ph.D. and Sylvia Hall-Ellis, Ph.D., and the Affidavit of Duncan
`
`Hall. Exs. 1002, 1015, 1010.
`
`Il. ANALYSIS
`
`Joinder for purposesof an interpartes review is governed by 35
`
`U.S.C. § 315(c), whichstates:
`
`Joinder.--If the Directorinstitutes an inter partes review, the
`Director, in his or her discretion, may jom asa party to that
`inter partes review any person whoproperly files a petition
`undersection 311 that the Director, after receiving a
`preliminary response undersection 313 or the expiration of the
`time for filmg sucha response, determines warrants the
`institution of an inter partes review undersection 314.
`
`“To join a party to an instituted [interpartes 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
`
`jomnder, § 315(c) requires the Director to exercise [her] discretion to decide
`
`whetherto “join as a party’ the jomnder applicant.” Jd.
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`A. Whether the Petition Warrants Institution
`
`The standardforinstituting an interpartes review is set forth in
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`35 U.S.C. § 314(a), which providesthat an interpartes review may not be
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`
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`IPR2022-0079 1
`Patent 9,928,044 B2
`
`instituted unless the information presentedin the Petition and the
`
`Preliminary Response shows“there is a reasonablelikelihood 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 metthe “reasonable
`
`likelihood” standard of § 314(a). IPR2021-01457, Paper 10 at 2, 67-68.
`
`There is no dispute that the Petition presents the samepatentability
`
`challenges as those for whicha trial wasinstituted in the Facebook IPR.
`
`See Mot. | (asserting that the “Google petition and the petition in the
`
`Facebook IPR Proceeding are substantively identical’); Prelim. Resp. 8
`
`(“Google proposed the same groundsas Facebook in the instituted IPR2021 -
`
`01457”), 9 (stating that the Google IPR “is a ‘me-too’ petition” with respect
`
`to “Facebook’s instituted [PR2021-01457”). In the present proceeding,
`
`Patent Ownerdoesnotdispute the patentability merits of Petitioner’s
`
`challenges. See Prelim. Resp. 9 n.2.
`
`Weconcludethat Petitioner has demonstrated a reasonablelikelihood
`
`of prevailing with respect to the challenged claimsof the ’044 patent for the
`
`reasonsset forth in the Facebook IPR. See IPR2021-01457, Paper 10 at 27—
`
`67.
`
`Even if a petition meets the “reasonable likelihood” standard,
`
`institution of interpartes review is still discretionary. See Harmonic Inc.v.
`
`Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTOis
`
`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 determinesthat the information presented in
`
`the petition filed undersection 311 and any responsefiled undersection 313
`
`5
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`
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`IPR2022-0079 1
`Patent 9,928,044 B2
`
`showsthat 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 Ownercontendsthat we should denyinstitution based on the
`
`factors set forth in the Board’s precedential decision in General Plastic
`
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, 1PR2016-01357, Paper 19
`
`(PTAB Sept. 6, 2017) (designated precedential in relevant part) and Apple
`
`Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020)
`
`(precedential). Prelim. Resp. 13-26. General Plastic sets forth a list of
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`factors to be considered by the Board in evaluating whetherto exercise
`
`discretion under 35 U.S.C. § 314(a) to denya petition that challenges a
`
`patent that was previously challenged before the Board. General Plastic,
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`Paper 19 at 15-18.
`
`Thesefactors are as follows:
`
`1. whether the samepetitioner previously filed a petition
`directed to the sameclaims of the samepatent;
`
`2. whetherat the time offilmg ofthefirst petition the petitioner
`knewofthe prior art asserted in the second petition or should
`have knownofit;
`
`3. whetherat the time offiling of the secondpetition the
`petitioner already received the patent owner’s preliminary
`responseto thefirst petition or recetved the Board’s decision on
`whetherto institute review in the first petition;
`
`4. the length of time that elapsed betweenthe timethe petitioner
`learned ofthe prior art asserted in the secondpetition and the
`filmg of the second petition;
`
`5. whetherthe petitioner provides adequate explanation for the
`time elapsed betweenthe filmgs of multiple petitions directed
`to the same claimsof the samepatent;
`
`6. the finite resources of the Board; and
`
`6
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`
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`IPR2022-0079 1
`Patent 9,928,044 B2
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`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination notlater than | year after the date on which the
`Director notices institution of review.
`
`Id. at 16. These factors are “a non-exhaustivelist,” and “additional factors
`
`may arise in other cases for consideration, where appropriate.” Jd. at 16, 18.
`
`In Uniloc, the petitioner (Apple) sought to join an instituted inter
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`partes review byfiling a petition that was substantially the sameas the
`
`petition on whicha trial had beeninstituted. Uniloc, Paper 9 at 2—3. In that
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`case, it was the petitioner’s secondpetition challenging the patent, and the
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`panel applied the General Plastic factors and denied the petition.
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`Uniloc, Paper 9 at 8-13.
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`Patent Ownerarguesthat the presentsituation is similar to the
`
`circumstances in Uniloc that favored denial under General Plastic and,
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`therefore, that the Petition should be denied. Prelim. Resp. 14—26. For the
`
`reasons explained below,wefind the present circumstancesdistinguishable
`
`from those in Uniloc, and we decline to denythe Petition based on the
`
`GeneralPlastic factors.
`
`This is Petitioner’s secondpetition challenging claims ofthe ’044
`
`patent; Petitionerfiled its first petition on March 31, 2021. IPR2021-00711,
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`Paper | (“the ’711 IPR”); Pet. 5; Prelim. Resp. 2, 15. Thus, the first General
`
`Plastic factor favors denial. See Uniloc, Paper 9 at 8.
`
`In Uniloc, the panel found that the second General Plastic factor
`
`favored denial because “Apple ha[d] failed to set forth facts or offer an
`
`explanation concerning its knowledge,at the timeit filed the first petition, of
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`the prior art asserted tn” the second petition. Uniloc, Paper9 at 9. In
`
`contrast to the situation in Uniloc, Petitioner “represents that, at the time of
`
`
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`IPR2022-0079 1
`Patent 9,928,044 B2
`
`filmg ofthe first petition IPR2021-00711, Paper 1), counsel for Google in
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`any of the actions involving Express Mobile did not identify or consider the
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`prior art used in the Facebook IPR proceeding and in the presentPetition,
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`despite extensive prior art search.” Pet. 7—8.° Patent Ownerarguesthat
`
`“this narrow and carefully worded statement leaves open the possibility that
`
`Google or its counsel were awareoftheart after all, and simply did not
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`concludethatit was the best art to bring against the challenged claim.”
`
`Prelim. Resp. 16. Regardless, Petitioner’s representation distinguishes the
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`presentsituation from Uniloc, in which there was no explanation ofthe facts
`
`relevant to the second General Plastic factor. See Uniloc, Paper 9 at 9.
`
`Patent Owneralso arguesthat “the question is not whether Petitioner
`
`knew ofthe art in Facebook’s case. The question is whetherit should have
`
`known oftt.” Prelim. Resp. 16. Nothing in the record, however,indicates
`
`that Petitioner “should have knownof”the prior art asserted in the Facebook
`
`IPR whenPetitionerfiled its first petition. Given Petitioner’s representation
`
`about its lack of knowledge ofthe priorart at issue in the Facebook IPR, we
`
`do notfind that Petitioner knew or should have knownofthe art whenit
`
`filed its first petition. Thus, the second General Plastic factor does not favor
`
`denial.
`
`The third factor requires us to consider whether,at the trme of the
`
`filmg of this petition, Petitioner had receivedthe preliminary response or
`
`the Board’s institution decision in the first petition.
`
`8 As explained below,Petitioner received the Andersonreferenceusedin the
`Facebook IPR on March 13, 2021, but was “unableto identify [it] by the
`time of filmg ofthe first petition on March 31, 2021, particularly given that
`it was produced amongoverthree thousand other documents.” Pet. 8.
`
`8
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`
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`IPR2022-0079 1
`Patent 9,928,044 B2
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`Theinstant Petition wasfiled on April 1, 2022, which wasafter
`
`institution was denied in the 711 IPR. However,this factor is concerned
`
`with whetherPetitioner was holding backtheprior art, or used the
`
`preliminary responseto gain an advantage in the secondpetition.
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`See General Plastic, Paper 19 at9 n.13. Neither is a concern here, because
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`(a) Petitionerasserts that it had not identified the prior art at the time of the
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`earlier Petition, and (b) this Petition is a copy of the Petition in the Facebook
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`IPR, which wasfiled before the denial in the °711 IPR. See Pet. 7-8.
`
`Although Petitioner might, in the end, benefit from the filing of the
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`FacebookIPR,there is no reason to concludethat Petitioner usedthefilings
`
`or decision in the ’711 IPR to obtain an unfair advantagein this Petition,
`
`whichwasessentially prepared by someoneelse.
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`Patent Owneralsolists the other IPRsthat have beenfiled against the
`
`°044 patent and arguesthat this Petition is “exactly “the kind ofserial attack
`
`that General Plastic was intended to address.’” Prelim. Resp. 20 (quoting
`
`Uniloc, Paper 9 at 4). Wedo not agree. This “me-too”Petition is nota new
`
`“serial attack,” but rather an attempt to jom a proceedingthat has already
`
`beeninstituted.’
`
`For these reasons, we conclude that General Plastic factor three does
`
`not favor denial.
`
`Wealso considerthe fourth andfifth General Plastic factors “to
`
`assess and weigh whethera petitioner should have or could haveraised the
`
`newchallengesearlier.” General Plastic, Paper 19 at 18. In Uniloc, the
`
`° In the Facebook IPR,we considered Patent Owner’s serial petition
`argumentin detail, but were not convinced that a discretionary denial was
`warranted. See IPR2021—01457, Paper 10 at 8—14.
`
`9
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`
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`IPR2022-0079 1
`Patent 9,928,044 B2
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`panel determinedthat the petitioner’s lack of explanation ofits knowledge of
`
`the prior art favored denial based on the fourth andfifth General Plastic
`
`factors. Uniloc, Paper 9 at 10-11. As discussed above, Petitioner explains
`
`its lack of knowledge ofthe prior art as of the filing ofits first petition
`
`(March 31, 2021), and the Facebook IPRpetition wasfiled several months
`
`later (September 1, 2021), about a month before Petitioner’s first petition
`
`wasdenied on October 4, 2021. Pet. 8. Patent Ownerfiled its preliminary
`
`response in the Facebook IPR on December22, 2021, over two monthsafter
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`Petitioner’s first petition was denied. IPR2021-01457, Paper 6.
`
`Even if Petitioner learned ofthe art on the daythe petition in the
`
`Facebook IPR wasfiled (September 1, 2021), we do not view this as a
`
`situation in which Petitioner should have filed its joinder petition earlier than
`
`it did. Petitionerfiled the Petition and the Motion within the time allowed
`
`by our Rules. Pet. 1; Prelim. Resp. 20.
`
`Here,Petitioner was suedfor infringement of the ’044 patent and
`
`served on September 3, 2020. See Ex. 2002. Petitioner thenfiled the
`
`petition for the °711 IPR on March 31, 2021, the petition for the Facebook
`
`IPR wasfiled on September 1, 2021, the 711 IPR petition was denied on
`
`October 4, 2021, the Facebook IPR wasinstituted on March 18, 2022, and
`
`Petitionerfiled the instant Petition with the joinder motion on April 1, 2022.
`
`Petitioner asserts that “[w]hile the primary referenceat issue in the
`
`Facebook IPR proceeding andin the present Petition... was produced by
`
`Express Mobile in the [parallel] district court litigation on March 13, 2021,
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`[Petitioner] was unable to identify this reference by the timeoffiling of the
`
`first petition on March 31, 2021, particularly given that it was produced
`
`10
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`
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`IPR2022-0079 1
`Patent 9,928,044 B2
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`amongoverthree thousand other documents.” Pet. 8. The “primary
`
`reference” is Anderson, Exhibit 1003.
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`Thus, although Petitioner admits that it had received Anderson in mid-
`
`March 2021, Petitioner also representsthat it was not aware of the
`
`significance of Anderson whentt filed the petition for the ’711 IPR eighteen
`
`dayslater.
`
`Petitioner does not identify when it recognized that Anderson might
`
`bear on the patentability of claims of the ’044 patent, but if that realization
`
`came more than a dayafter the September1, 2001 filing of the Facebook
`
`IPR, Petitioner would have been barred from filing its own IPR using
`
`Anderson,dueto service of the complaint on September 2, 2020. It cannot
`
`have been unreasonable for Petitioner to not have filed an IPR using
`
`Anderson whenit wasbarred from doing so under 35 U.S.C. § 315(b). But
`
`wealso find that it would not have been unreasonable for Petitioner to not
`
`havefiled its own IPR using Anderson earlier than the bar date, because
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`Petitioner’s ’711 IPR was then pending.
`
`After the ’711 IPR was denied, Petitioner was unabletofile this
`
`Petition until the Facebook IPR wasinstituted,!° and then did so within the
`
`time provided by our rules. See 37 C.F.R. § 42.122(b).
`
`Wefind that it was not unreasonable for Petitioner to not havefiled an
`
`IPR using Anderson before the bar date because Petitioner had another
`
`petition pending, and that it was not unreasonablefor Petitionerto notfile
`
`‘© Section 3 15(d) provides for joinder“[i]f the Directorinstitutes an inter
`partes review.” 35 U.S.C. §315(d).
`
`11
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`
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`IPR2022-0079 1
`Patent 9,928,044 B2
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`betweenthe bar date andthe institution of the Facebook IPR because sucha
`
`filmg would have been prohibited by § 315(b).
`
`Underthese unique circumstances, we cannot concludethatthe
`
`amountof time that elapsed betweenPetitioner learning of the Facebook IPR
`
`prior art and filing of this Petition was unreasonable and,thus, wefind that
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`the fourth andfifth General Plastic factors do not favor denial.
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`Patent Owner’s remaining argumentsfail to persuadeusthat
`
`discretionary denial is appropriate underthe circumstancesofthis case.
`
`Relying on Uniloc, Patent Ownerarguesthat the sixth General Plastic factor
`
`favors denial because, in case of a settlement with Facebook,this case will
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`continue with Petitioner. Prelim. Resp. 21—24. The presentcaseis
`
`distinguishable from the situation in Uniloc, in which the proceeding that
`
`Apple soughtto join had only onepetitioner, namely, the original petitioner.
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`Uniloc, Paper 9 at 11-12. By contrast, in this case Petitioner seeks to jom a
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`proceeding in which multiple petitioners in addition to Facebook already
`
`exist,'! so the Facebook IPR will likely continue even if Facebook wereto
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`settle. Therefore, adding Petitioner as one more party along with multiple
`
`pre-existing petitioners does not have the same potential impact on the
`
`proceeding that adding Apple asa petitioner in Uniloc would have had.
`
`And, in any event, we find that Board resourcesare not a concern here
`
`becausethis panel has the capacity to see the Facebook IPR to its conclusion
`
`regardless of the constitution of the petitioner. Thus, the sixth factor, “the
`
`finite resources of the Board,” does not favor denial in these circumstances.
`
`'! Thepetitioners in the recently-instituted IPR2022-00783 have been joined
`to the Facebook IPR. See IPR2022-00784, Paper 16.
`
`12
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`IPR2022-0079 1
`Patent 9,928,044 B2
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`The seventh General Plastic factor doesnot favor discretionary denial
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`because Petitioner merely seeks to join an ongoing proceeding, and we
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`discern no difficulty in timely issuing a final written decision in that
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`proceeding.
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`Basedon the foregoing, we determinethat the Petition warrants
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`institution, and weturn to Petitioner’s request forjoinder.
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`B. Whether the Motion Should Be Granted
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`As the moving party, Petitioner has the burden of proofin establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`
`Petitioner arguesthat its Motion 1s timely and should be granted becausethe
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`Facebook IPR will not be impactedif it were to join that proceeding.
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`Mot. 1—2. Petitioner also agrees to take an “understudy”role in the
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`Facebook IPR.
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`/d. at 2, 6, 9-10.
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`Patent Ownerarguesthat the fact that the Petition “is .
`
`.
`
`. time-barred”
`
`under 35 U.S.C. § 315(b) (albeit “absent a grant ofjomder”) weighs against
`
`jomder. Opp. 9-11. Wedisagree because,as discussed above, § 315(b)
`
`states that the one-year time bar “shall not apply to a request forjoinder
`
`under subsection (c).”
`
`Patent Owneralso arguesthat “Petitioner already had the opportunity
`
`to take—andindeed took—onefull and fair bite of the apple, i.e., one
`
`challenge to the claims of the Patent before the Office, [and] Petitioner has
`
`not shown any reason the Office should exercise discretion to grant it yet
`
`anotherbite.” Opp. 1. PatentOwnerfurther arguesthat “Petitioner,
`
`although subject to a duty of candor,did not disclose to the Board, or serve
`
`on the party, any acknowledgementthatit 1s subject to the time bar under
`
`§ 315(b) unless joinderis granted.” Opp. 11.
`
`13
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`IPR2022-0079 1
`Patent 9,928,044 B2
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`Although we are sympathetic to Patent Owner’s argument about a
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`second bite at the apple, the Facebook IPRhasalready been instituted and
`
`(as discussed above)there is no indication that Petitioner was aware of the
`
`significance of the prior art beforeit filed the petition in the ’711 IPR, or
`
`before the Facebook IPR. Weare also not persuadedthat Petitioner violated
`
`its duty of candor becauseit is apparent from the Petition, which identified
`
`Express Mobile, Inc. v. Google LLC, No. 6-20-cv-00804 (W.D. Tex.), that
`
`Petitioner had been suedfor infringement. Petitioner did not highlight the
`
`statutory bar, but it was not hidden.
`
`Patent Owneralso arguesthat granting jomder would complicate the
`
`proceedings becausePetitioner reservesthe right to participate in the
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`Facebook IPR undercertain conditions. Opp. 11—13. We disagree because
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`Facebookhasalreadyfiled its reply in the Facebook IPR,and, therefore, the
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`petitioner-side briefing on the merits in the Facebook IPR is complete.
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`Petitioner has agreed to act as an understudy, and thus will not havea
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`material role proceeding unless it becomesthe sole petitioning entity.
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`Having consideredthe parties’ arguments, we determinethatit 1s
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`appropriate under these circumstancesto join Petitioneras a party to the
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`Facebook IPR. Petitioner will be subject to the estoppel provisions of 35
`
`U.S.C. § 315(e).
`
`14
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`IPR2022-0079 1
`Patent 9,928,044 B2
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`Ill. ORDER
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`Accordingly, it 1s
`
`ORDEREDthat, pursuant to 35 U.S.C. §314(a) and 37 C.F.R. § 42.4,
`
`an interpartes review is hereby instituted on the challenges raised in the
`
`Petition; and
`
`FURTHER ORDEREDthatPetitioner’s Motion for Joinder with Case
`
`IPR2021-01457 is granted, and Petitioner is hereby joined as a petitioner in
`
`Case IPR2021-01457;
`
`FURTHER ORDEREDthatthe grounds on whichtrial in Case
`
`IPR2021-01457 wereinstituted are unchanged,and no other groundsare
`
`added in Case IPR2021-01457;
`
`FURTHER ORDEREDthat the Scheduling Orderentered in Case
`
`IPR2021-01457 (Paper 11) and schedule changes agreed bythe parties in
`
`Case IPR2021-01457 (pursuantto the Scheduling Order) shall govern the
`
`trial schedule in Case IPR2021-01457;
`
`FURTHER ORDEREDthatPetitioner’s role in Case [PR2021-01457
`
`shall be limited as stated by Petitioner in the Motion for Joinder (Paper 3, 9—
`
`10) unless and until Facebookis terminated from that proceeding;
`
`FURTHER ORDEREDthata copyof this Decision be entered into
`
`the record of Case IPR2021-01457; and
`
`FURTHER ORDEREDthatall furtherfilings shall be made in Case
`
`IPR2021-01457.
`
`15
`
`
`
`IPR2022-0079 1
`Patent 9,928,044 B2
`
`PETITIONER:
`
`Naveen Modi
`Joseph Palys
`Daniel Zeilberger
`PAUL HASTINGS LLP
`naveenmodi@ paulhastings.com
`josephpalys @ apulhastings.com
`danielzeilberger @ paulhastings.com
`
`PATENT OWNER:
`
`Sal Lim
`Robert F. Kramer
`David L. Alberti
`Jerry Tice
`KRAMER DAY ALBERTILIM TONKOVICH & BELLOLI LLP
`slim @kramerday.com
`rkramer@kramerday.com
`dalberti@kramerday.com
`jtice@kramerday.com
`
`Kenneth J. Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`
`16
`
`
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