Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 13
`Entered: May 19, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAP AMERICA INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2014-00306
`Patent 6,738,799
`____________
`
`Before JAMESON LEE, JUSTIN BUSCH, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
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`
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`Tel: 571-272-7822
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`
`
`
`
`Paper 13
`Entered: May 19, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAP AMERICA INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2014-00306
`Patent 6,738,799
`____________
`
`Before JAMESON LEE, JUSTIN BUSCH, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2014-00306
`Patent 6,738,799
`
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`I. INTRODUCTION
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`SAP America Inc. (“SAP”) filed a petition for inter partes review of
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`U.S. Patent No. 6,738,799 (Ex. 1001, “the ’799 Patent”) on January 22, 2013
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`(the “SAP IPR Petition”). Paper 1 (“Pet.”). On April 21, 2014, SAP filed a
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`Motion for Joinder (“Mot.”) to join this proceeding with Unified Patents,
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`Inc. v. Clouding IP, LLC, Case IPR2013-00586 (the “Unified IPR”).
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`Paper 8. Having instituted trial based on the SAP IPR Petition, we now turn
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`to SAP’s Motion for Joinder.
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`On April 23, 2014, Clouding IP, LLC (“Clouding”) requested a
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`conference call, seeking leave to file an opposition to SAP’s Motion for
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`Joinder. On April 24, 2014, the Board ordered Clouding to file any
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`opposition to SAP’s Motion for Joinder by May 2, 2014. On April 29, 2014,
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`Unified Patents, Inc. (“Unified”) requested a conference call, seeking leave
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`to file an opposition to SAP’s Motion for Joinder, but later withdrew the
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`request to have that conference call. Nevertheless, the Board authorized
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`Unified to file an opposition to the Motion for Joinder by May 7, 2014. On
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`May 1, 2014, Clouding filed its Opposition to Motion for Joinder (“Opp.”)
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`and on May 6, 2014, SAP filed its Reply. Unified filed no opposition. In
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`exercising its discretion to grant joinder, the Board considered the impact of
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`both substantive issues and procedural matters on the proceedings, as well as
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`other considerations. For the reasons that follow, we grant SAP’s Motion
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`for Joinder.
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`IPR2014-00306
`Patent 6,738,799
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`II. DISCUSSION
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`An inter partes review may be joined with another inter partes
`
`review. The statutory provision governing joinder of inter partes review
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`proceedings is 35 U.S.C. § 315(c), which reads as follows:
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`(c) 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.
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`As the movant, SAP bears the burden to show that joinder is
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`appropriate. 37 C.F.R. § 42.20(c). As noted by Clouding, a motion for
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`joinder should: (1) set forth the reasons joinder is appropriate; (2) identify
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`any new grounds of unpatentability asserted in the petition; (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`review; and (4) address specifically how briefing and discovery may be
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`simplified. Opp. 4; see also Frequently Asked Question (“FAQ”) H5 on the
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`Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`Clouding argues SAP does not “identify any compelling reasons why
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`joinder is appropriate.” Opp. 5. The reasons presented, however, do not
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`have to be “compelling,” which is a very high standard of persuasion. Also,
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`SAP presents various arguments in support of its motion. Mot. 5-8. SAP
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`argues joinder will not affect the Board’s ability to complete the review in a
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`timely manner because the grounds of unpatentability in SAP’s Petition are
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`identical to those in the Unified IPR Petition. Id. at 5-6. SAP further asserts
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`that joinder would promote efficiency by avoiding duplicate reviews,
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`consolidating issues, and avoiding redundancy. Id. at 6-7. SAP also argues
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`IPR2014-00306
`Patent 6,738,799
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`that neither Unified nor Clouding will be prejudiced by joinder because
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`joinder need not affect the timing of the review and, to the extent extensions
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`to the schedule are required, the law and rules provide for such extensions in
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`the case of joinder. Id. at 7. SAP further argues that joinder should be more
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`efficient for Clouding because Clouding would only have to address the
`
`same issues in a single proceeding instead of two separate proceedings. Id.
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`at 7-8.
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`SAP has stated that it will withdraw the declaration of Dr. Grimshaw,
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`which was submitted in support of SAP’s Petition in IPR2014-00306, and
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`instead rely on the declaration of Dr. Hutchinson, which was submitted in
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`support of Unified’s Petition in IPR2013-00586. SAP notes that this
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`withdrawal will eliminate the need to alter the trial schedule to accommodate
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`the deposition of Dr. Grimshaw. Reply 1-2. SAP also proposes that the
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`Board order Unified and SAP “to file consolidated filings, for which
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`[Unified will be] responsible, and allow[ SAP] to file seven additional pages
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`with corresponding additional responsive pages allowed to [Clouding].”
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`Mot. 6.
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`Given that the SAP IPR Petition raises no new issues as compared to
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`the Unified IPR Petition, that SAP proposes procedural protections that
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`allow Unified to retain control over the joined proceeding (Mot. 5-6), and
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`that there is no apparent need to alter the Scheduling Order in the Unified
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`IPR, the impact of joinder on the Unified IPR will be minimal. Under the
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`circumstances, we are persuaded that granting SAP’s Motion for Joinder will
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`not unduly complicate or delay IPR 2013-00586.
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`IPR2014-00306
`Patent 6,738,799
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`III. ORDER
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`For the reasons given, it is
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`ORDERED that IPR2014-00306 is joined with IPR2013-00586;
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`FURTHER ORDERED that, as proposed by SAP, in the joined
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`proceeding, SAP will not rely on the declaration of Dr. Grimshaw, but will,
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`instead, rely on the testimony of Dr. Hutchinson, whose declaration is of
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`record in IPR2013-00586 and relied on in the Unified IPR Petition;
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`FURTHER ORDERED that, subsequent to joinder, the grounds for
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`trial in the joined proceedings are the same as those for which trial was
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`instituted in IPR2013-00586;
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`FURTHER ORDERED that, in the joined proceeding, Unified and
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`SAP will file papers, except for motions which do not involve the other
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`party, as consolidated filings; Unified will identify each such filing as a
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`Consolidated Filing and will be responsible for completing all consolidated
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`filings. SAP may file an additional paper, concurrent with each consolidated
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`filing, not to exceed seven pages, which may address only points of
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`disagreement with positions asserted in the consolidated filing. Any such
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`filing by SAP must specifically identify and explain each point of
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`disagreement. SAP may not file separate arguments in support of points
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`made in Unified’s consolidated filing;
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`FURTHER ORDERED that, in addition to responding to any
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`consolidated filing, Clouding may respond separately, but concurrently, to
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`any separate SAP filing. Any such response by Clouding to an SAP filing
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`may not exceed the number of pages in the SAP filing and is limited to
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`issues raised in the SAP filing;
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`IPR2014-00306
`Patent 6,738,799
`
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`FURTHER ORDERED that SAP and Unified will designate attorneys
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`to conduct the cross-examination of any witnesses produced by Clouding
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`and the redirect of any witnesses produced by Unified or SAP within the
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`time frame normally allotted by the rules for one party. SAP and Unified
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`will not receive any separate cross-examination or redirect time;
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`FURTHER ORDERED that any requests by any party for additional
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`deposition time must be brought before the Board;
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`FURTHER ORDERED that this proceeding (IPR2014-00306) is
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`terminated under 37 C.F.R. § 42.72 and all further filings in the joined
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`proceeding shall be made in IPR2013-00586; and
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`FURTHER ORDERED that the case caption in IPR2013-00586 shall
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`be changed to reflect joinder with this proceeding in accordance with the
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`attached example.
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`IPR2014-00306
`Patent 6,738,799
`
`PETITIONER:
`Frank C. Cimino, Jr.
`Megan S. Woodworth
`S. Gregory Herrman
`DICKSTEIN SHAPIRO LLP
`1825 Eye Street, NW
`Washington, DC 20006-5403
`CiminoF@dicksteinshaprio.com
`WoodworthM@dicksteinshapiro.com
`HerrmanG@ dicksteinshapiro.com
`
`
`PATENT OWNER:
`Tarek N. Fahmi
`Amy J. Embert
`FAHMI, SELLERS & EMBERT
`84 W. Santa Clara St., Suite 550
`San Jose, CA 94113
`tarek.fahmi@fseip.com
`amy.embert@fseip.com
`
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`IPR2014-00306
`Patent 6,738,799
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNIFIED PATENTS, INC.
`SAP AMERICA INC.
`Petitioners
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00586
`Case IPR2014-00306
`Patent 6,738,799
`____________
`
`
`
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