Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`Entered: December 16, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET INC. d/b/a LOCATION LABS,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion for Joinder
`37 C.F.R. §§ 42.122(b), 42.71
`
`
`571-272-7822
`
`
`
`
`Paper 13
`Entered: December 16, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET INC. d/b/a LOCATION LABS,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion for Joinder
`37 C.F.R. §§ 42.122(b), 42.71
`
`
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`
`A. Introduction
`Wavemarket, Inc. d/b/a Location Labs (“Petitioner”) filed a Petition
`(Paper 3, “Petition” or “Pet.”) to institute inter partes review of claims 1–17
`and 19 of U.S. Patent No. 6,771,970 B1 ( “the ’970 Patent”) and a Motion
`for Joinder (Paper 4, “Motion” or “Mot.”) with Case IPR2014-00199 (“the
`’199 proceeding ”). See 35 U.S.C. §§ 311, 315(c); 37 C.F.R. § 42.122(b).
`For the reasons that follow, Petitioner’s Motion is denied1.
`B. Related Case IPR 2014-00199
`On November 27, 2013, Petitioner filed a Petition (“the ’199 Petition”
`or “’199 Pet.”) for inter partes review of claims to 1–19 of the ’970 Patent.
`Case IPR2014-00199, Paper 1. On May 9, 2014, we instituted inter partes
`review of claim 18 of the ’970 Patent. Case IPR2014-00199, Paper 18 (“the
`’199 Decision” or “’199 Dec.”). On June 9, 2014, Petitioner filed its
`Petition for inter partes review in this proceeding concurrently with its
`Motion for Joinder with the ’199 proceeding. Papers 3, 4.
`C. Analysis
`The Board, acting on behalf of the Director, has the discretion to join
`an inter partes review with another inter partes review. 35 U.S.C. § 315.
`Section 315(c) provides (emphasis added):
`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
`
`
`1 In a decision entered concurrently, the Petition is granted and inter partes
`review is instituted.
`
`
`
`2
`
`
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We
`determine whether to grant joinder on a case-by-case basis, taking into
`account the particular facts of each case, substantive and procedural issues,
`and other considerations. See 157 CONG. REC. S1376 (daily ed. Mar. 8,
`2011) (statement of Sen. Kyl). In exercising our discretion, we are mindful
`that the regulations, including the rules for joinder, must be construed to
`secure the just, speedy, and inexpensive resolution of every proceeding. See
`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
`motion for joinder should: (1) set forth the reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the schedule
`for the existing review; and (4) address specifically how briefing and
`discovery may be simplified. See Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`Petitioner asserts that this proceeding relies on a number of grounds
`closely related to the grounds under consideration in the ’199 proceeding.
`Mot. 4. Petitioner acknowledges that that the ’199 proceeding includes
`review of claim 18 of the ’970 Patent as anticipated by Elliot, but does not
`include claims 1–17 and 19. Id., see ’199 Dec. With regard to claims 1–17
`and 19, Petitioner presents a chart comparing the grounds of unpatentability
`in this proceeding with the grounds of unpatentability proposed in the ’199
`
`3
`
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`Case IPR2014-00920
`Patent 6,771,970 B1
`
`Petition that were ultimately denied. Mot. 5; see ’199 Pet; ’199 Dec.
`Petitioner asserts that the grounds proposed in this second petition rely on
`Roel-Ng, and that considering Roel-Ng will not unduly burden the Board
`because Roel-Ng is relied upon for teaching a single limitation in claims 1,
`14, 16, and 19, that were absent from Fitch and Elliot in the ’199 Petition.
`Mot. 5. Petitioner further asserts that Fitch and Elliot are overlapping prior
`art to Roel-Ng. Id.
`Petitioner further contends: (1) this proceeding and the ’199
`proceeding involve, the same parties, same patent, and same expert; (2)
`claims 1–17 and 19 recite many of the same limitations as claim 18, under
`review in the ’199 proceeding; (3) the claim construction for this proceeding
`remains the same as for the ’199 proceeding, and (4) this proceeding raises
`limited new issues. Mot. 5–6. Petitioner also asserts that because the same
`declarant provides related testimony in both cases, cross-examination can be
`accomplished with a single deposition. Id. at 6. Petitioner further concludes
`that joinder will have minimal impact on the ’199 proceeding. Id.
`We are not persuaded by Petitioner’s argument that the grounds of
`unpatentability in this proceeding are closely related to the grounds under
`consideration in the ’199 proceeding, and raise limited new issues. In the
`’199 proceeding, we instituted review of independent claim 18 as
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Elliot. ’199 Dec.
`In this proceeding, we institute review of independent claims 1, 14, 16, and
`19, and dependent claims 2, 3, and 11–13 under 35 U.S.C. § 103(b) as
`obvious over Fitch and Roel-Ng. Paper 11. Also in this proceeding, we
`institute review of dependent claim 4 under 35 U.S.C. § 103(b) as obvious
`over Fitch, Roel-Ng, and Jones; dependent claim 5 under 35 U.S.C. § 103(b)
`
`4
`
`
`
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`as obvious over Fitch, Roel-Ng, and Shah; and dependent claims 6–10, 15,
`and 17 under 35 U.S.C. § 103(b) as obvious over Fitch, Roel-Ng, and Elliot.
`Id. Thus, the only overlapping prior art at issue in this proceeding and in the
`’199 proceeding is Elliot. In this proceeding Elliot is utilized in combination
`with Fitch and Roel-Ng to address dependent claims 6–10, 15, and 17.
`Claims 6–10, 15, and 17 do not depend from claim 18, which is the only
`claim on review in the ’199 proceeding.
`We are also not persuaded by Petitioner’s assessment that considering
`Roel-Ng will not unduly burden the Board because it is relied upon for a
`single limitation in independent claims 1, 14, 16, and 19. Rather than
`considering only Roel-Ng, this proceeding will necessitate consideration of
`the following combinations of references: (1) Fitch and Roel-Ng; (2) Fitch,
`Roel-Ng, and Jones; (3) Fitch, Roel-Ng, and Shah; and (4) Fitch, Roel-Ng,
`and Elliot. In contrast, the ’199 proceeding will require consideration of
`only Elliot. Similarly, we are not persuaded by Petitioner’s conclusory
`assertion that Fitch and Elliot are overlapping prior art to Roel-Ng because
`Petitioner does not provide any comparison of the teachings of Roel-Ng and
`the teachings of Fitch, and Elliot.
`In summary, we are not persuaded that briefing and discovery would
`be simplified by joinder based on Petitioner’s assertions that this proceeding
`raises limited new issues, and the grounds of unpatentability in this
`proceeding are closely related to the grounds under consideration in the ’199
`proceeding. This proceeding involves four grounds of unpatentability for 18
`claims based on four combinations of prior art references, compared to the
`’199 proceeding which involves one ground of unpatentability for one claim
`based on one prior art reference.
`
`
`
`5
`
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`Case IPR2014-00920
`Patent 6,771,970 B1
`
`
`Petitioner also argues that the expeditious filing of the Petition in this
`proceeding only one month after institution of the ’199 proceeding will
`ensure the just, speedy, and inexpensive resolution of this proceeding joined
`with the ’199 proceeding. Mot. 6. Petitioner asserts that the scheduling
`order in the ’199 proceeding need not be changed. Id. Petitioner further
`requests that we join the proceedings for the following additional reasons:
`(1) to eliminate the burdens that parallel proceedings would impose on the
`Petitioner, Patent Owner, the Board, and the District Court, (2) to avoid
`parallel proceedings that might reach inconsistent results, and (3) conserve
`the resources of the USPTO and the District Court. Id. at 6–7.
`We are not persuaded that joinder of this proceeding with the ’199
`proceeding will secure the just, speedy, and inexpensive resolution of every
`proceeding, particularly the ’199 proceeding. Petitioner has not shown that
`the patentability issues raised in this proceeding can be resolved in a joined
`proceeding without substantially affecting the schedule in the ’199
`proceeding. The ’199 proceeding is in an advanced stage; Patent Owner has
`already filed its response to the ’199 Petition, and Petitioner has filed its
`reply to Patent Owner’s response. Case IPR2014-00199, Papers 35, 39. In
`addition, a final written decision for the ’199 proceeding shall be entered by
`May 9, 2015, less than five months from now. See 35 U.S.C. § 316(a)(11);
`37 C.F.R. § 42.100(c). Joinder at this time would introduce significant delay
`to the ’199 proceeding.
`Accordingly, because joinder of this proceeding with the ’199
`proceeding would not simplify briefing and discovery, and would introduce
`significant delay to the ’199 proceeding, we deny Petitioner’s Motion for
`Joinder.
`
`
`
`6
`
`
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s Motion for Joinder is denied.
`
`
`
`7
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`
`
`Case IPR2014-00920
`Patent 6,771,970 B1
`
`PETITIONER:
`Mark L. Hogge
`Scott W. Cummings
`DENTONS US LLP
`mark.hogge@dentons.com
`scott.cummings@dentons.com
`
`PATENT OWNER:
`Thomas Engellenner
`Reza Mollaaghababa
`Andy Chan
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`chana@pepperlaw.com
`
`
`
`
`
`8
`
`
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