Trials@uspto.gov
`571-272-7822
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` Paper 13
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` Entered: June 13, 2014
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`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 IPR2014-00698
`Patent 6,628,314 B1
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
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`
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
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`
`571-272-7822
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` Paper 13
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`
`
` 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 IPR2014-00698
`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 IPR2014-00698
`Patent 6,628,314 B1
`
`
`
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`INTRODUCTION
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`Match.com LLC and People Media, Inc. (collectively, “Petitioner”)
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`filed a petition requesting an inter partes review of claims 11-13, 15, 18, and
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`20 of U.S. Patent No. 6,628,314 B1 (Ex. 1001, “the ’314 patent”). Paper 1
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`(“Pet.”). With the petition, Petitioner filed a motion for joinder (Paper 4,
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`“Mot.”), seeking to join this case with Facebook, Inc. v. B.E. Technology,
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`L.L.C., Case IPR2014-00053 (PTAB Apr. 9, 2014). In a separate decision,
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`entered today, we institute an inter partes review as to the same claims and
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`the same ground of unpatentability for which we instituted trial in Facebook,
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`Inc. v. B.E. Technology, L.L.C., Case IPR2014-00053. For the reasons that
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`follow, Petitioner’s motion for joinder is granted.
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`BACKGROUND
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`Petitioner filed its petition and motion for joinder on April 25, 2014,
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`within one month after the institution date of IPR2014-00053. On June 2,
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`2014, the Board held a conference call with counsel for the respective parties
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`and counsel for the Petitioner in IPR2014-00053 (“the -00053 Petitioner”).
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`Paper 11 at 2. During the conference call, counsel for Patent Owner
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`represented that Patent Owner does not oppose the motion for joinder, and
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`counsel for the -00053 Petitioner indicated that the -00053 Petitioner does
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`not oppose the motion for joinder with it in IPR2014-00053. Id.
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`The petition in this case asserts that claims 11-13, 15, 18, and 20 of
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`the ’314 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
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`2
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`Case IPR2014-00698
`Patent 6,628,314 B1
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`Angles1 and Shaw2. Pet. 12-39. These are the same claims and the same
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`ground for which we instituted trial in IPR2014-00053. Facebook, Inc. v.
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`B.E. Technology, L.L.C., Case IPR2014-00053, slip op. at 17 (PTAB Apr. 9,
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`2014) (Paper 10).
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`ANALYSIS
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`The Leahy-Smith America Invents Act, Pub. L. No. 112-29 (2011),
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`permits joinder of like review proceedings. Thus, an inter partes review
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`may be joined with another inter partes review. The statutory provision
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`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c),
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`which provides:
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`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, Petitioner bears the burden to show that joinder is
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`appropriate. 37 C.F.R. § 42.20(c). In its motion for joinder, Petitioner
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`contends that joinder is appropriate because (1) “it will promote efficient
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`determination of the validity of the ’314 Patent without prejudice” to Patent
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`Owner or the -00053 Petitioner; (2) the petition raises only the same grounds
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`of unpatentability for which the Board instituted review in IPR2014-00053;
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`(3) joinder would not affect the pending schedule in IPR2014-00053 or
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`1 U.S. Patent No. 5,933,811 (Ex. 1003) (“Angles”).
`2 U.S. Patent No. 5,809,242 (Ex. 1004) (“Shaw”).
`3
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`Case IPR2014-00698
`Patent 6,628,314 B1
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`increase the complexity of that proceeding; and (4) Petitioner is “willing to
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`accept an understudy role to minimize the burden and schedule impact.”
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`Mot. 2.
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`The Board, acting on behalf of the Director, has discretion to join
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`proceedings. 35 U.S.C. § 315(c). In exercising its discretion, the Board
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`considers the impact of both substantive issues and procedural matters on the
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`proceedings.
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`The substantive issues in IPR2014-00053 would not be affected by
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`joinder because Petitioner asserts only the ground of unpatentability for
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`which trial was instituted in IPR2014-00053, and makes only the arguments
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`made by the -00053 Petitioner in its petition in that proceeding. Compare
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`Pet. 12-39, with Facebook, Inc. v. B.E. Technology, L.L.C., Case IPR2014-
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`00053, Paper 1 at 35-60. Further, Petitioner submits the same declaration of
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`Robert J. Sherwood that the -00053 Petitioner submitted in support of its
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`petition. See Ex. 1005; Facebook, Inc. v. B.E. Technology, L.L.C., Case
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`IPR2014-00053, Ex. 1007. Thus, the petition in this proceeding raises no
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`new issues beyond those already before the Board in IPR2014-00053.
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`Regarding procedural matters, Petitioner argues that joinder would not
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`require any change to the trial schedule in IPR2014-00053 because
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`Petitioner “agree[s] to an understudy role and do[es] not raise any issues that
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`are not already before the Board.” Mot. 4. Specifically, Petitioner agrees to
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`“assume a limited ‘understudy’ role” “[a]s long as Facebook [i.e., the -00053
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`Petitioner] remains in the joined IPR.” Id. at 5. Given that Petitioner will
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`4
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`Case IPR2014-00698
`Patent 6,628,314 B1
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`assume an understudy role, Petitioner states that its presence will not
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`introduce any additional briefing or need for discovery. Id. at 4.
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`CONCLUSION
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`Under the circumstances, we conclude Petitioner has demonstrated
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`that joinder will not unduly complicate or delay IPR2014-00053, and
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`therefore joinder is appropriate.
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`
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`Accordingly, it is:
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`ORDER
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` ORDERED that Petitioner’s motion for joinder with IPR2014-00053
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`is granted;
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` FURTHER ORDERED that this proceeding is joined with IPR2014-
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`00053;
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` FURTHER ORDERED that the ground on which a trial was instituted
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`in IPR2014-00053 is unchanged;
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` FURTHER ORDERED that the Scheduling Order and adjustments to
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`the Scheduling Order in place for IPR2014-00053 (Papers 11, 25) shall
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`govern the joined proceedings;
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` FURTHER ORDERED that IPR2014-00698 is instituted, joined, and
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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 IPR2014-00053;
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` FURTHER ORDERED that unless given prior authorization by the
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`Board, Petitioner is not permitted to file papers, engage in discovery, or
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`participate in any deposition or oral hearing in IPR2014-00053. Petitioner,
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`5
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`Case IPR2014-00698
`Patent 6,628,314 B1
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`however, is permitted to appear in IPR2014-00053 so that it may receive
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`notification of filings and may attend depositions and oral hearing. Should
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`Petitioner believe it necessary to take any further action, Petitioner should
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`request a conference call to obtain authorization from the Board;
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` FURTHER ORDERED that the case caption in IPR2014-00053 shall
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`be changed to reflect the joinder with this proceeding in accordance with the
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`attached example; and
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` FURTHER ORDERED that a copy of this decision be entered into the
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`6
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`file of IPR2014-00053.
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`
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`FOR PETITIONER:
`
`Sanjay Murthy
`Kacy Dicke
`K&L Gates LLP
`sanjay.murthy@klgates.com
`kacy.dicke@klgates.com
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`Robert E. Freitas
`Freitas Tseng & Kaufman LLP
`jangell@ftklaw.com
`rfreitas@ftklaw.com
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`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 13
`
`
`
` Entered: June 13, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`FACEBOOK, INC.,
`MATCH.COM LLC, and PEOPLE MEDIA, INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`____________
`
`Case IPR2014-000531
`Patent 6,628,314 B1
`____________
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`1 Case IPR2014-00698 has been joined with this proceeding.
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