Trelscouspto gov
`571-on.7322
`
`Paper 18
`Entered: June 8, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CLOVER NETWORK,LLC,
`Petitioner,
`
`V.
`
`CLOUDOFCHANGE,LLC,
`Patent Owner
`
`IPR2023-00287
`Patent 11,226,793 B2
`
`Before HUBERT C. LORIN, JEREMY M. PLENZLER, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of/nter Partes Review
`35 U.S.C. $314
`Granting Motion for Joinder 35 U.S.C. § 315(c)
`37 CFR. § 42.122
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Clover Network, LLC (“Petitioner’’) filed a Petition requesting inter
`
`partes review of claims 1-4, 7-28, and 31—44 of U.S. Patent No. 11,226,793
`
`
`571-on.7322
`
`Paper 18
`Entered: June 8, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CLOVER NETWORK,LLC,
`Petitioner,
`
`V.
`
`CLOUDOFCHANGE,LLC,
`Patent Owner
`
`IPR2023-00287
`Patent 11,226,793 B2
`
`Before HUBERT C. LORIN, JEREMY M. PLENZLER, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of/nter Partes Review
`35 U.S.C. $314
`Granting Motion for Joinder 35 U.S.C. § 315(c)
`37 CFR. § 42.122
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Clover Network, LLC (“Petitioner’’) filed a Petition requesting inter
`
`partes review of claims 1-4, 7-28, and 31—44 of U.S. Patent No. 11,226,793
`
`
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`IPR2023-00287
`Patent 11,226,793 B2
`
`B2 (Ex. 1001, “the ’793 patent”). Paper 4 (“‘Pet.”). CloudofChange, LLC
`
`(“Patent Owner’) file a Preliminary Response. Paper 13 (Prelim. Resp.”).
`
`Concurrently with the Petition, Petitioner filed a Motion for Jomder in
`
`whichit sought to jom IPR2022-01143 (the “1143 IPR”) asa party. Paper 3
`
`(“Mot.” or “Motion’’). Patent Owner opposed the Motion. Paper 8 (“Opp.”
`
`or “Opposition’’). Petitionerfiled a reply in support ofthe Motion. Paper 9.
`
`Under 35 U.S.C. § 314(a), an interpartes review may notbe instituted
`
`unless the information presentedin the petition “showsthat there 1s a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” For the reasons stated below, we
`
`determinethat Petitioner has established a reasonable likelihood thatit
`
`would prevail with respect to at least one of the challenged claims. We
`
`hereby institute an interpartes review in this proceeding.
`
`Additionally, for the reasonsset forth below, we exercise our
`
`discretion to join Petitioner (Clover Network LLC) as a party to the 1143
`
`IPR. 35U.S.C. §315(c).
`
`B. RelatedMatters
`
`In addition to the 1143 IPR,the parties indicate that the *793 patentis
`
`involved in CloudofChange, LLC v. LightspeedPOSInc. , 6:21-cv-01102
`
`(W.D. Tex. Oct. 22, 2021) (“the Lightspeed Litigation’’). Pet. 1; Paper 6, 3.
`
`The parties also indicate that the °793 patent was previously involved in a
`
`lawsuit CloudofChange, LLC v. NCR Corporation, 6-19-cv-00513 (W.D.
`
`Tex. Aug. 30, 2019) (‘the NCRLitigation”), which resulted in a jury verdict
`
`for Patent Owner, butis still pending final judgment. Pet. 2; Paper6, 3.
`
`C. The ’793 Patent
`
`The ’793 patent relates to “a system and a method for online, web-
`
`based point of sale (POS) building and configuration.” Ex. 1001, Abstract.
`
`
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`IPR2023-00287
`Patent 11,226,793 B2
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`According to the ’793 patent, “[c]urrent practice in the field of assembling
`
`point of sale systemsincludes manually coding front-of-screen information,”
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`which “contains menuselections, page selections, and general answersto
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`business questions.” /d. at 1:33—37.
`
`The ’793 patent explains that “in the prior art, a specialized
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`programmerhad to design the layout and data for these POS touchkeys,”
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`but “[w]ith this invention, the store operator will be able to build his POS
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`screens online over the Internet.” Ex. 1001, 3:5—7, 13-14.
`
`The ’793 patent explains that its “POS builder system can be provided
`
`as a service or deployed within a corporation,” and notesthat “[fJor
`
`example, Software as a Service (SAAS)is a software distribution modelin
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`which applications are hosted by a vendoror service provider and made
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`available to customers over a network,typically the Internet.” Ex. 1001,
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`6:11-16.
`
`D. Illustrative Claim
`
`A web-based point of sale (POS) builder system
`
`1.
`comprising:
`at least one server configuredto:
`
`communicate with one or more POS terminals
`over a network comprising the Internet, wherein the one
`or more POS terminals are configured to display one or
`more POS screens;
`
`receive, over the network from a POS builder
`interface, information usedfor creating or modifying the
`one or more POS screensincluding creating or modifying
`one or moredisplay interfaces for display on the one or
`more POS screens,the one or moredisplay interfaces
`being associated with one or more items;
`receive, from at least one of the one or more POS
`terminals over the network, further information regarding
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`
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`IPR2023-00287
`Patent 11,226,793 B2
`
`one or more POS transactions corresponding to the one
`or more items;
`
`configure the one or more POS terminals with the
`information over the network to create or modify based
`on the further information regarding one or more POS
`transactions the one or more POS screensdisplayed on
`the one or more POS terminals; and
`
`wherein the further information regarding the one
`or more POS transactions, the information used for
`creating or modifying the one or more POS screens, ora
`combination thereof comprises one or more of employee
`clock information, customer add/update information,
`item add/update information, promotion information,
`loyalty pomt information, discount information, taxation
`information, item cost information, or inventory
`information;
`
`wherein said further information regarding the one
`or more POS transactionsrelate to one or more
`transactions by corresponding customersrespectively
`associated with at least one of said one or more POS
`terminals.
`
`Ex. 1001, 6:29-64.
`
`i. Evidence andAsserted Grounds
`
`Petitioner asserts that clams 1—4, 7-28, 31-44 would have been
`
`unpatentable on the following grounds:
`
` 4,728, 31-44
`
`-4, 7-28, 31-44
`
`| US Patent Pub. No. US 2007/0265935 A1, published Nov.15, 2007
`(Ex. 1004).
`2 US Patent Pub. No. US 2005/0049921 A1, published Mar. 3, 2005
`(Ex. 1005).
`
`
`
`IPR2023-00287
`Patent 11,226,793 B2
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`The groundslisted aboveare virtually identical to those at issue in the
`
`1143 IPR. Petitioner submits a declaration from Todd Mowry (Ex. 1002).
`
`Patent Ownersubmits a declaration from Alex Cheng. (Ex. 2008).
`
`Il. ANALYSIS
`
`A. Legal Standards
`
`Petitioner bears the burden of persuasion to prove unpatentability, by
`
`a preponderanceofthe evidence, of the claims challenged in the
`
`Petition. 35 U.S.C. § 316(e). This burden nevershifts to Patent
`
`Owner. Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375,
`
`1378 (Fed. Cir. 2015). The Board mayauthorize an inferpartes review if
`
`we determinethat the information presented in the Petition and Patent
`
`Owner’s Preliminary Response showsthat there is a reasonable likelihood
`
`that Petitioner will prevail with respect to at least one of the claims
`
`challenged in the Petition. 35 U.S.C. §314(a). “Wheninstituting inter
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`partes review,the Board will authorize the review to proceed onall of the
`
`challenged claims and onall grounds of unpatentability asserted for each
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`claim.”? 37C.F.R. § 42.108(a) (2021).
`
`B. Level ofOrdinary Skill in the Art
`
`Petitioner contendsthat “[a] “person of ordinary skill in theart’
`
`(POSITA)at the time ofthe effective filing date of the 793 patent would
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`have been someone with a working knowledge of designing, developing,
`
`and deploying web-basedsoftware and systems” and “would have had a
`
`Bachelor of Science in computerscienceora related field, and
`
`approximately two years of professional experience or equivalent study in
`
`the design and development of web-based software and systems, including
`
`3 Our discussion below focuses on claim 1.
`
`
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`IPR2023-00287
`Patent 11,226,793 B2
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`web-based POS systems.” Pet. 8. Petitioner contendsthat “[a]dditional
`
`graduate education could substitute for professional experience, or
`
`significant experience in the field could substitute for formal education.” /d.
`
`Patent Owner responds: “Petitioner’s proposed definition of a
`
`POSITAdoesnot require any experience with retail POS systems—let alone
`
`building POS screens—thatare the field ofthe ’793 Patent.” Prelim. Resp.
`
`16. According to Patent Owner,“Petitioner’s proposed definition of a
`
`POSITA makesexperiencein retail POS systemsoptional.” /d. Patent
`
`Ownercontendsthatits “proposed definition of a POSITAremediesthis
`
`deficiency by including experience or equivalent study in the field of the
`
`°793 Patent, retail point of sale (“POS”) systems, including experience with
`
`building POS screens.” /d.
`
`Wefail to see how the alleged differences in the level of ordinary skill
`
`in the art advanced by Patent Owneraffects our decision to institute in this
`
`proceeding. Accordingly, for purposes ofthis decision, we apply the level
`
`of skill set forth by Patent Owner.
`
`C. Claim Construction
`
`In an interpartes review, we construe a patent claim “using the same
`
`claim construction standard that would be used to construe the claim in a
`
`civil action under 35 U.S.C. §282(b).” 37 C.F.R. § 42.100(b) (2021).
`
`Underthis standard, the wordsof a claim generally are given their “ordinary
`
`and customary meaning,” which is the meaning the term would haveto a
`
`person of ordinary skill at the time of the invention, in the context of the
`
`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312-13 (Fed. Cir. 2005) (en banc).
`
`Petitioner proposesconstructions for several claim terms, similar to
`
`those proposed in IPR2022-01143. Pet. 9-11. Patent Owner reproducesthe
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`
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`IPR2023-00287
`Patent 11,226,793 B2
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`claim constructions from the Lightspeed Litigation (Prelim. Resp. 19) and
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`“proposesthat the PTAB adopt the Judge Albright’s constructions in the
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`Lightspeed Litigation and the final constructions in the NCRLitigation” (id.
`
`at 19-20).
`
`Wedo not need to construe any terms expressly to reach our decision.
`
`See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)
`
`(“The Boardis required to construe ‘only those terms.. . that are in
`
`controversy, and only to the extent necessary to resolve the controversy.’”
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,200 F.3d 795, 803
`
`(Fed. Cir. 1999))).
`
`D. Discretion on Whetherto Institute Trial
`
`1,
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`35 U.S.C. $ 325(d)
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`Patent Ownerasks that we exercise our discretion and deny institution
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`under 35 U.S.C. § 325(d). Prelim. Resp. 23-30.
`
`35 U.S.C. § 325(d) states, in relevant part: “In determining whether to
`
`institute or order a proceeding underthis chapter, chapter 30, or chapter 31,
`
`the Director may take into account whether, and reject the petition or request
`
`because, the sameor substantially the sameprior art or arguments previously
`
`were presented to the Office.” The Board uses a two-part framework for
`
`evaluating arguments under§ 325(d):
`
`(1) whether the same or substantially the same art
`previously waspresented to the Office or whether the same or
`substantially the same arguments previously were presented to
`the Office; and
`
`(2) if either condition of [the] first part of the framework
`is satisfied, whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of [the]
`challenged claims.
`
`
`
`IPR2023-00287
`Patent 11,226,793 B2
`
`AdvancedBionics, LLC v. MED-EL Elektromedizinische Gerdte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).
`
`“[T |he Becton, Dickinson factors provide useful insight into how to apply
`
`the framework under 35 U.S.C. § 325(d).” /d. at 9 (footnote omitted). The
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`non-exclusive Becton, Dickinson factorsare:
`
`(a) the similarities and material differences between the
`asserted art and the prior art involved during examination;
`
`(b) the cumulative nature of the asserted art and the prior
`art evaluated during examination;
`
`(c) the extent to which the asserted art was evaluated
`during examination, including whetherthe prior art wasthe basis
`for rejection;
`
`(d) the extent of the overlap between the arguments made
`during examination and the mannerin which Petitionerrelies on
`the prior art or Patent Ownerdistinguishes the priorart;
`
`(e) whetherPetitioner has pointed out sufficiently how the
`Examinererred in its evaluation of the asserted prior art; and
`
`(f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration ofthe prior art
`or arguments.
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
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`8 at 17-18 (PTAB Dec. 15, 2017) (precedential as to § II.C.5, first
`
`paragraph). Becton, Dickinsonfactors(a), (b), and (d) relate to the first part
`
`of the AdvancedBionics framework (whether the sameor substantially the
`
`same art or arguments previously were presentedto the Office), and Becton,
`
`Dickinsonfactors(c), (e), and (f) relate to the secondpart of that framework
`
`(previous Office error). AdvancedBionics, IPR2019-01469, Paper6 at
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`9-11.
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`Patent Owner’s request has already been considered and determined
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`unpersuasive in the 1143 IPR. Moreover, we also question the merit of
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`IPR2023-00287
`Patent 11,226,793 B2
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`exercising discretion to deny institution under § 325(d) in a proceeding that
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`simply seeksto have Petitionerjoined as a party to an already instituted
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`proceeding where the same art and arguments asserted in this proceeding are
`
`already being evaluated in the 1143 IPR. For the reasons explained in the
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`1143 IPR we decline Patent Owner’s invitation for us to apply our discretion
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`under 35 U.S.C. § 325(d) to deny the petition in this proceeding. See
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`IPR2022-01143, Paper 8 at 9-12.
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`2.
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`35 U.S.C. §314(a)
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`Patent Owneradditionally asks that we denyinstitution under 35
`
`U.S.C. §314(a) in view of the Lightspeed Litigation. Prelim. Resp. 30—44.
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`The recent guidance from the Director of the United States Patent and
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`Trademark Office regarding discretionary denials* requires that “the PTAB
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`will not discretionarily deny institution in view ofparallel district court
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`litigation where a petitioner presents a stipulation not to pursueinaparallel
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`proceeding the same groundsor any groundsthat could have reasonably
`
`been raised before the PTAB.” Guidance Memo3.
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`In this proceeding, Petitioner stipulates that “if this IPR is instituted
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`and intiv’’! remains precedential at the time ofinstitution, Petitioner
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`stipulates not to pursue in the district court any ground raised or that could
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`have reasonably beenraised in IPR (1.e., under §§ 102 or 103 based on prior
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`art patents or printed publications alone).” Paper 14, 2.
`
`+ USPTO, Memorandum onInterim Procedure for Discretionary Denials in
`AIAPost-grant Proceedings with Parallel District Court Litigation
`(June 21, 2022), available at uspto. gov/sites/default/files/documents/interm
`_procdiscretionarydenialsaiaparalleldistrictcourtlitigationmemo2
`0220621 _.pdf (“Guidance Memo”).
`> Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(designated precedential May 5, 2020).
`
`9
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`IPR2023-00287
`Patent 11,226,793 B2
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`Moreover, any timing issuesorinefficiencies are moot in view of our
`
`decision on Petitioner’s Joinder Motion.
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`Accordingly, we decline Patent Owner’s invitation for us to apply our
`
`discretion under 35 U.S.C. § 314(a) to deny thepetition.
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`FE. Secondary Considerations
`
`Patent Owneralleges that the “Petitioner’s failure to address known
`
`secondary considerations evidence makesthe Petition deficient.” Prelim.
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`Resp. 81. Based on the specific circumstancesofthis case, we decline
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`Patent Owner’s invitation to impose a requirementon Petitioner to predict
`
`and address, proactively in this proceeding, the particular evidence of
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`secondary considerations that Patent Owner mayor maynot assert based on
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`past proceedings, or that Patent Ownercurrently asserts in the 1143 IPR.
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`Patent Ownerfurther contends that even if we do not impose such a
`
`requirementon Petitioner, “here Petitioner failed to address secondary
`
`considerationsevidenceatall.” /d. at 81-82. Butit is unclear how this is
`
`any different than imposing the requirementthat Petitioner proactively
`
`addressparticular evidence of secondary considerationsthat Patent Owner
`
`may or maynotassert as noted above.
`
`Weappreciate that consideration of evidence of non-obviousness is
`
`part of the obviousnessanalysis. Because, as explained below, wegrant
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`Petitioner’s Motion, any evidence of secondary considerationswill be
`
`addressed in the 1143 IPR. Based on the record before us, consideration of
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`that evidencein this decision 1s premature.
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`FI. Asserted Grounds
`
`Basedon the specific circumstancesofthis case, we determineit
`
`appropriate to address only one ofthe asserted grounds presented by
`
`Petitioner and only one ofthe claims challenged in that ground. Because
`
`10
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`IPR2023-00287
`Patent 11,226,793 B2
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`Petitioner has established a reasonablelikelihood of success onatleast that
`
`claim, we are able to consider the Joinder Motion, which we grant as
`
`explained below. And ultimately, it is simply the party (Petitioner) that is
`
`joined to the 1143 IPR. Weseenoneedto provide any further guidance on
`
`the particular Petition in this proceeding. Further, the 1143 IPRis at an
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`advanced stage, wherevirtually all Papers have been submitted, other than
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`Patent Owner’s Sur-Reply, which is due shortly after this stitution
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`decision.
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`Weaddress claim 1 with respect to the Woycik ground below.
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`Petitionerasserts that claims 1—4, 7-28, and 31—44 are unpatentable under
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`35 U.S.C. § 103 as obvious over Woycik in view ofthe knowledge of a
`
`person of ordinary skill in the art. Pet. 15—71.
`
`1. Woycik
`
`Woycik “relates generally to computer-based systemsused for
`
`ordering goods andservices and, moreparticularly, to self-service terminals
`
`and software tools for administering self-service terminals.” Ex. 1004 4 4.
`
`Woycik explains that “Point of Sale (POS) systems provide a means by
`
`which ordering and purchasing transactions can be carried out electronically
`
`at the store or other venue where the goodsorservices are supplied.” /d.
`
`46. According to Woycik, “[s]elf-service POS systemstypically havea
`
`central computer acting as a server and one or more terminals which are the
`
`individual client units that are used by customersto input their orders.” /d.
`
`q 7.
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`Woycik describes an “administration tool application [that] includes a
`
`menueditor that enables the administrator to create and edit the interactive
`
`menu screensprovided bythe self-order application at the self-service client
`
`terminals.” Ex. 1004 416. “The menueditor enables the administratorto,
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`11
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`IPR2023-00287
`Patent 11,226,793 B2
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`during creation/editing of an interactive menuscreen, select a template for
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`the interactive menuscreen and associate functions with the buttons
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`included on the selected template.” /d. 419.
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`Woycik explains that “there are many possible arrangements and the
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`administrative tool application may be located at a variety of locations,
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`including .
`
`.
`
`. an offsite location provided that the administrative tool
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`application is able to communicate with the server.” Ex. 10049417. One
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`“approachis to have the administrative tool loaded on the central server 22
`
`and then provide the chain operator 20 with web access to the central server
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`22.” Id. 975.
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`With Woycik’s administration tool, “the store owner or chain operator
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`can carry out administration of the system using a simplified user interface
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`that requireslittle if any training or experience with computers.” Ex. 1004
`
`480. “Furthermore, the web services platform provided by .NET can be
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`used to provide remote administration by the chain operator from any
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`Internet-connected computer (such as a home office computer) so that
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`variousstore locations can be configured froma single computer.” /d.
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`According to Woycik, “[t]he programming needed to implementthis
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`software architecture strategy is knownto those skilled tn the art.” Jd.
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`2. Petitioner’s Challenge Based on Woycik
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`Initially, we note that there does not appearto be any dispute that
`
`Woycik’s administration tool would be understood as point of sale builder
`
`software by oneskilled in the art. Prelim. Resp. 45—64.° Indeed, based on
`
`° Patent Owner acknowledges that Woycik’s “administrative
`tool can ‘perform various administrate functions such as configuring kiosks,
`creating and editing menus andavailable food items, and specifying tax and
`paymentfeatures ofthe system.’” Prelim. Resp. 50 (citing Ex. 1004 { 73).
`
`12
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`the record before us, we do not see any less disclosure in Woycik regarding
`
`its administration tool than that disclosed in the ’793 patentfor its point of
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`sale builder software.
`
`Patent Ownerpresents a numberof contentionsthat do not appeartied
`
`to any particular claim requirement. For example, Patent Ownerpresents
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`contentions regarding the use ofa local server in addition to the web server
`
`in Woycik, without clearly explaining how those contentionsrelate to any
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`particular claim requirement. See, e.g., Prelim. Resp. 59—60(alleging that
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`Woycik’s “local server as the middleman for all communications”). The
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`actual dispute with respect to Woycik’s teachingsasrelated to claim 1,
`
`appears to be based on whether Woycik teachesits administration tool
`
`running on a webserver. /d. at 47-61. We have reviewed Petitioner’s
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`contentions regarding the other limitations recited in claim 1, which Patent
`
`Ownerdoesnot dispute at this time, and determinethat Petitioner has
`
`established sufficiently that Woycik teaches those limitations. Our
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`discussion below is directed to the disputed limitations.
`
`Petitioner contends that Woycik teachespoint of sale builder software
`
`(the administration tool) running on a webserver(central server 22/84). Pet.
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`19-26 (citing, e.g., Ex. 10049] 75). Paragraph 75 ofWoycik provides a
`
`numberof different approaches. As explained above, Woycik expressly
`
`states that one “approachis to have the admmnistrative tool loaded on the
`
`central server 22 and then provide the chain operator 20 with web accessto
`
`the central server 22.” Ex. 1004 475.
`
`Patent Ownercontends, for example,that, “[i]n each different version
`
`of [Woycik’s] administrative tool, the tool is used to update the
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`configuration information at the in-store server 16.” Prelim. Resp. 50-51
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`13
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`IPR2023-00287
`Patent 11,226,793 B2
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`(citing Ex. 1004 §] 75; Ex. 20084 77). The testimony ofMr. Chen repeats
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`Patent Owner’s contentions.
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`Patent Ownerdoesnot appearto address the approach from paragraph
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`75 of Woycik cited by Petitioner. There does not appearto be any dispute
`
`that Woycik’s central server 22 is a web server. And, as noted above,
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`Woycik expressly states that “the administrative tool [can be] loaded on the
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`central server 22.” Ex. 1004975. That is, Woycik teachesits point of sale
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`builder software (the administration tool) can be loaded ona webserver
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`(central server 22), consistent with Petitioner’s contentions noted above. It
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`is unclear, based on the record before us, what from claim 1 Patent Owner
`
`believes to be missing from Woycik. Moreover, we note that Patent Owner
`
`does not appearto allege any particular deficiency tn our institution decision
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`from IPR2022-01143, which wasbased onessentially the same arguments
`
`and evidenceas before us now.
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`Based onthe record before us, Petitioner has established a reasonable
`
`likelihood of success onat least its challenge to claim 1 based on Woycik.
`
`II. JOINDER
`
`The Petition in this proceeding wasfiled on December 1, 2022. The
`
`1143 IPR hadan institution date of November 10, 2022. Petitionerfiled its
`
`Motion on December1, 2022, whichis within one month of the 1143 IPR’s
`
`institution date.
`
`Thestatutory provision governing joinder in interpartes review
`
`proceedingsis 35 U.S.C. § 315(c), which reads:
`
`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 whoproperly files a petition under section
`311 that the Director, after receiving a prelimmary response
`under section 313 or the expiration of the timefor filmmg such a
`
`14
`
`
`
`IPR2023-00287
`Patent 11,226,793 B2
`
`response, determines warrants the institution of an inter partes
`review undersection 314.
`
`Section 315(c) “authorizes joinder of a person asa party, not ‘jomder’ of
`
`two proceedings” and “does not authorize the jomedparty to bring new
`
`issues from its new proceeding into the existing proceeding.” Facebook,
`
`Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020).
`
`Here, Petitioner’s Motion requests no more thanthestatute allows.
`
`Petitioner represents that the current Petition and that from the 1143 IPR are
`
`identical in all substantive respects, including “identical grounds,priorart,
`
`and analysis.”” Mot. 3. And although Petitioner used a different declarant
`
`that the one used in the 1143 IPR,there is no briefing remaining for the
`
`petitioner in the 1143 IPR,as Petitioner’s Reply in that proceeding was
`
`entered on May 16, 2023. See IPR2022-01143, Paper 16. Moreover,
`
`Petitioner agrees to use the declarant from the 1143 IPR if joinderis granted.
`
`See Paper 14, 2; Ex. 1030, 11:8—15:24; Ex. 1031, 16:13-—17:7.
`
`Given the advancedstage of the 1143 IPR proceeding,if Petitioneris
`
`joined as a party to the 1143 IPR,Petitioner’s only possible remaining role
`
`would be to present oral argumentor potentially request rehearing or appeal
`
`our final written decision in the 1143 IPR ifthe initial petitioner in that
`
`proceeding dropsout.
`
`Patent Owneropposes the Motion, contending that joinder would
`
`increase complexity and costs, as well as delay the schedule of the 1143 IPR.
`
`Paper 8, 6-12. Butthose concerns are unfounded,particularly in view of the
`
`advancedstage of the 1143 IPR. Indeed, Patent Owner acknowledgesthat,
`
`at this stage of the proceeding, there is nothing left for Petitioner to deal with
`
`as far as briefing or declarant testimonyin the 1143 IPR. See, e.g.,
`
`Ex. 1030, 18:2—20.
`
`15
`
`
`
`IPR2023-00287
`Patent 11,226,793 B2
`
`Wesee no increase in complexity and costs, or any schedule delay in
`
`the 1143 IPR as asserted by Patent Owner. Accordingly, we grant
`
`Petitioner’s Motion, and addit as a party to the 1143 IPR.
`
`IV. CONCLUSION
`
`For the above reasons, weinstitute interpartes review andgrant
`
`Petitioner’s Motion for joinder.
`
`V. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDEREDthat, pursuant to 35 U.S.C. §314(a), an interpartes
`
`review of claims 1—4, 7-28, and 31—44 in the ’012 patentis instituted onall
`
`challenges included in the Petition;
`
`FURTHER ORDEREDthat, according to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, notice is hereby given ofthe institution ofa trial that
`
`commencesonthe entry date of this Decision;
`
`FURTHER ORDEREDthat the Motion for Joinderis granted, and
`
`Clover Network, LLC is hereby joined asa petitioner in IPR2022-01143;
`
`FURTHER ORDEREDthatthe grounds on whichtrial wasinstituted
`
`in IPR2022-01143 are unchanged, and no other groundsare added;
`
`FURTHER ORDEREDthat Clover Network, LLC’s role in IPR2022-
`
`01143 shall be limited to understudy, unless and until Lightspeed
`
`Commerce,Inc. is terminated from that proceeding;
`
`FURTHER ORDEREDthat the Scheduling Orderin place for
`
`IPR2022-01143 (Papers 9 and 15) shall continue to govern the proceeding
`
`after the joinder of Clover Network, LLC asa petitioner;
`
`FURTHER ORDEREDthatall futurefilings are to be made only in
`
`IPR2022-01143
`
`16
`
`
`
`IPR2023-00287
`Patent 11,226,793 B2
`
`FURTHER ORDEREDthatthe case caption in IPR2022-01143shall
`
`be changedto reflect the joinder of Clover Network, LLC in accordance
`
`with the example below; and
`
`FURTHER ORDEREDthata copy of this Decision shall be entered
`
`into the record of IPR2022-01143.
`
`17
`
`
`
`IPR2023-00287
`Patent 11,226,793 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LIGHTSPEED COMMERCE,INC., AND
`CLOVER NETWORK,LLC,
`Petitioner,
`
`V.
`
`CLOUDOFCHANGE,LLC,
`Patent Owner.
`
`IPR2022-01143
`Patent 11,226,793 B2
`
`18
`
`
`
`IPR2023-00287
`Patent 11,226,793 B2
`
`FOR PETITIONER:
`
`Jason D. Kipnis
`Gregory H. Lantier
`R. Gregory Israelsen
`Sarah B. Petty
`Amy L. Mahan
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`jason. kipnis@wilmerhale.com
`gregory. lantier@wilmerhale.com
`greg. israelsen@wilmerhale.com
`sarah. petty@wilmerhale.com
`amy.mahan@wilmerhale.com
`
`FOR PATENT OWNER:
`
`B. Todd Patterson
`John A. Yates
`Kyrie K. Cameron
`Edgar N. Gonzalez
`PATTERSON + SHERIDAN, LLP
`tpatterson@pattersonsheridan.com
`jyates@pattersonsheridan.com
`kcameron@pattersonsheridan.com
`egonzalez@pattersonsheridan.com
`
`19
`
`
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