`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 12
`
`
`
` Entered: June 13, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`MATCH.COM LLC and PEOPLE MEDIA, INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`____________
`
`Case IPR2014-00699
`Patent 6,628,314 B1
`____________
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`Case IPR2014-00699
`Patent 6,628,314 B1
`
`
`INTRODUCTION
`
`Match.com LLC and People Media, Inc. (collectively, “Petitioner”)
`
`filed a petition requesting an inter partes review of claims 11-13, 15, 18, and
`
`20 of U.S. Patent No. 6,628,314 B1 (Ex. 1001, “the ’314 patent”). Paper 1
`
`(“Pet.”). With the petition, Petitioner filed a motion for joinder (Paper 4,
`
`“Mot.”), seeking to join this case with Google Inc. v. B.E. Technology,
`
`L.L.C., Case IPR2014-00038 (PTAB Apr. 9, 2014). In a separate decision,
`
`entered today, we institute an inter partes review as to the same claims and
`
`the same grounds of unpatentability for which we instituted trial in Google
`
`Inc. v. B.E. Technology, L.L.C., Case IPR2014-00038. For the reasons that
`
`follow, Petitioner’s motion for joinder is granted.
`
`BACKGROUND
`
`Petitioner filed its petition and motion for joinder on April 25, 2014,
`
`within one month after the institution date of IPR2014-00038. On June 2,
`
`2014, the Board held a conference call with counsel for the respective parties
`
`and counsel for the Petitioner in IPR2014-00038 (“the -00038 Petitioner”).
`
`Paper 10 at 2. During the conference call, counsel for Patent Owner
`
`represented that Patent Owner does not oppose the motion for joinder, and
`
`counsel for the -00038 Petitioner indicated that the -00038 Petitioner does
`
`not oppose the motion for joinder with it in IPR2014-00038. Id.
`
`The petition in this case asserts that claims 11-13, 18, and 20 of the
`
`’314 patent are unpatentable under 35 U.S.C. § 102(a) as anticipated by
`
`2
`
`
`
`Case IPR2014-00699
`Patent 6,628,314 B1
`
`
`Logan1, and claim 15 is unpatentable under 35 U.S.C. § 103(a) as obvious
`
`over Logan and Robinson2. Pet. 13-36. These are the same claims and the
`
`same grounds for which we instituted trial in IPR2014-00038. Google Inc.
`
`v. B.E. Technology, L.L.C., Case IPR2014-00038, slip op. at 18 (PTAB Apr.
`
`9, 2014) (Paper 9).
`
`ANALYSIS
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29 (2011),
`
`permits joinder of like review proceedings. Thus, an inter partes review
`
`may be joined with another inter partes review. The statutory provision
`
`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c),
`
`which provides:
`
`JOINDER.—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 who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`As the movant, Petitioner bears the burden to show that joinder is
`
`appropriate. 37 C.F.R. § 42.20(c). In its motion for joinder, Petitioner
`
`contends that joinder is appropriate because (1) “it will promote efficient
`
`determination of the validity of the ’314 Patent without prejudice” to Patent
`
`Owner or the -00038 Petitioner; (2) the petition raises only the same grounds
`
`of unpatentability for which the Board instituted review in IPR2014-00038;
`
`
`1 U.S. Patent No. 5,721,827 (Ex. 1002) (“Logan”).
`2 U.S. Patent No. 5,918,014 (Ex. 1003) (“Robinson”).
`3
`
`
`
`Case IPR2014-00699
`Patent 6,628,314 B1
`
`
`(3) joinder would not affect the pending schedule in IPR2014-00038 or
`
`increase the complexity of that proceeding; and (4) Petitioner is “willing to
`
`accept an understudy role to minimize the burden and schedule impact.”
`
`Mot. 2.
`
`The Board, acting on behalf of the Director, has discretion to join
`
`proceedings. 35 U.S.C. § 315(c). In exercising its discretion, the Board
`
`considers the impact of both substantive issues and procedural matters on the
`
`proceedings.
`
`The substantive issues in IPR2014-00038 would not be affected by
`
`joinder because Petitioner asserts only the grounds of unpatentability for
`
`which trial was instituted in IPR2014-00038, and makes only the arguments
`
`made by the -00038 Petitioner in its petition in that proceeding. Compare
`
`Pet. 13-36, with Google Inc. v. B.E. Technology, L.L.C., Case IPR2014-
`
`00038, Paper 1 at 13-32, 57-60. Further, Petitioner submits the same
`
`declaration of Stephen Gray that the -00038 Petitioner submitted in support
`
`of its petition. See Ex. 1004; Google Inc. v. B.E. Technology, L.L.C., Case
`
`IPR2014-00038, Ex. 1004. Thus, the petition in this proceeding raises no
`
`new issues beyond those already before the Board in IPR2014-00038.
`
`Regarding procedural matters, Petitioner argues that joinder would not
`
`require any change to the trial schedule in IPR2014-00038 because
`
`Petitioner “agree[s] to an understudy role and do[es] not raise any issues that
`
`are not already before the Board.” Mot. 4. Specifically, Petitioner agrees to
`
`“assume a limited ‘understudy’ role” “[a]s long as Google [i.e., the -00038
`
`Petitioner] remains in the joined IPR.” Id. at 5. Given that Petitioner will
`
`4
`
`
`
`Case IPR2014-00699
`Patent 6,628,314 B1
`
`
`assume an understudy role, Petitioner states that its presence will not
`
`introduce any additional briefing or need for discovery. Id. at 4.
`
`CONCLUSION
`
`Under the circumstances, we conclude Petitioner has demonstrated
`
`that joinder will not unduly complicate or delay IPR2014-00038, and
`
`therefore joinder is appropriate.
`
`
`
`Accordingly, it is:
`
`ORDER
`
` ORDERED that Petitioner’s motion for joinder with IPR2014-00038
`
`is granted;
`
` FURTHER ORDERED that this proceeding is joined with IPR2014-
`
`00038;
`
` FURTHER ORDERED that the grounds on which a trial was
`
`instituted in IPR2014-00038 are unchanged;
`
` FURTHER ORDERED that the Scheduling Order and adjustments to
`
`the Scheduling Order in place for IPR2014-00038 (Papers 10, 21) shall
`
`govern the joined proceedings;
`
` FURTHER ORDERED that IPR2014-00699 is instituted, joined, and
`
`terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`
`proceeding shall be made in IPR2014-00038;
`
` FURTHER ORDERED that unless given prior authorization by the
`
`Board, Petitioner is not permitted to file papers, engage in discovery, or
`
`participate in any deposition or oral hearing in IPR2014-00038. Petitioner,
`
`5
`
`
`
`Case IPR2014-00699
`Patent 6,628,314 B1
`
`
`however, is permitted to appear in IPR2014-00038 so that it may receive
`
`notification of filings and may attend depositions and oral hearing. Should
`
`Petitioner believe it necessary to take any further action, Petitioner should
`
`request a conference call to obtain authorization from the Board;
`
` FURTHER ORDERED that the case caption in IPR2014-00038 shall
`
`be changed to reflect the joinder with this proceeding in accordance with the
`
`attached example; and
`
` FURTHER ORDERED that a copy of this decision be entered into the
`
`file of IPR2014-00038.
`
`
`
`
`
`
`FOR PETITIONER:
`
`Sanjay Murthy
`Kacy Dicke
`K&L Gates LLP
`sanjay.murthy@klgates.com
`kacy.dicke@klgates.com
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`
`
`6
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 12
`
`
`
` Entered: June 13, 2014
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE INC.,
`MATCH.COM LLC, and PEOPLE MEDIA, INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`____________
`
`Case IPR2014-000381
`Patent 6,628,314 B1
`____________
`
`
`
`1 Case IPR2014-00699 has been joined with this proceeding.
`
`
`