Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 25
`January 28, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION
`AND
`ORACLE AMERICA, INC.,
`Petitioners,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2014-00949
`Patent 6,978,346 B2
`
`
`
`Before MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`1
`
`
`571-272-7822
`
`
`
`
` Paper 25
`January 28, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION
`AND
`ORACLE AMERICA, INC.,
`Petitioners,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2014-00949
`Patent 6,978,346 B2
`
`
`
`Before MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`1
`
`
`
`Case IPR2014-00949
`Patent 6,978,346 B2
`
`
`I. INTRODUCTION
`
`On June 13, 2014, International Business Machines Corporation and
`
`Oracle America, Inc. (“Petitioner”) filed a petition (“Pet.”) for inter partes
`
`review of U.S. Patent No. 6,978,346 B2 (Ex. 1001, “the ’346 patent”).
`
`Paper 1.
`
`On January 16, 2015, Electronics and Telecomunications Research
`
`Institute (“Patent Owner”) filed a Motion for Joinder (“Mot”) to join this
`
`proceeding with VMWare, Inc. v. Electronics and Telecomunications
`
`Research Institute, Case IPR2014-00901 (“the VMWare IPR”). The
`
`VMWare IPR also concerns the ’346 patent.
`
`The Board instituted trial in both the present case and the VMWare
`
`IPR on December 11, 2014. Patent Owner represents that Petitioners in this
`
`case and the VMWare IPR do not oppose the Motion. Mot. 1.
`
`The Motion for Joinder is granted.
`
`II. DISCUSSION
`
`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 reads as follows:
`
`(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 parties review under section 314.
`
`
`
`As the movant, Patent Owner bears the burden to show that joinder is
`
`appropriate. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth
`
`
`
`Case IPR2014-00949
`Patent 6,978,346 B2
`
`the reasons 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 trial schedule for the existing review; and (4)
`
`address specifically how briefing and discovery may be simplified. See
`
`Frequently Asked Question (“FAQ”) H5 on the Board’s website at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`Patent Owner represents that it does not raise any issues that are not
`
`already before the Board and VMWare’s Petition is based on the same
`
`grounds and same combinations of prior art as those on which trial has been
`
`instituted in the instant proceeding. Mot. 1. The Petitions in this case and
`
`the VMWare IPR are substantively identical. Id. at 2. Both Petitions are
`
`supported by the Declaration of Dr. Robert Horst. Id. As a result, the
`
`unpatentability grounds instituted here is the same as the grounds for which
`
`trial was instituted in the VMWare IPR.
`
`The Due Dates in the Scheduling Order in both cases are identical. Id.
`
`Under these circumstances, joinder would not affect the timing, i.e., the
`
`Scheduling Order, of the VMWare IPR, and would not impact the date of the
`
`next Due Date, the Patent Owner’s response. Mot. 7.
`
`In the absence of joinder, Patent Owner expects to file substantively
`
`identical papers and evidence in both cases. Id. at 4. Similarly, Patent
`
`Owner would expect to provide and seek the same discovery in both cases,
`
`in the absence of joinder. Id. Patent Owner expects efficiencies will result
`
`from conducting the same briefing and discovery once. Id.
`
`Petitioners in both cases have agreed to coordinate filings and
`
`discovery to the extent reasonably possible, but request that Petitioner in this
`
`case, IBM and Oracle, be granted leave to file a reasonable number of
`
`
`
`Case IPR2014-00949
`Patent 6,978,346 B2
`
`additional pages—no more than 7—for any filing to address “only points of
`
`disagreement with points asserted in [VMware]’s consolidated filing.”
`
`Mot. 5. Petitioner also proposes that such filings by IBM and Oracle must
`
`specifically identify and explain each point of disagreement, and that IBM
`
`and Oracle may not file separate arguments in support of points made in
`
`VMWare’s consolidated filing. Id. (citing Motorola Mobility LLC v.
`
`Softview LLC, IPR2013-00256, Paper 10 at 11 (June 20, 2013)). Patent
`
`Owner would have a corresponding number of additional pages for its
`
`responsive briefing “limited to the issues raised in the [IBM and Oracle]
`
`filing.” Id.
`
`We agree with Patent Owner that joinder would be appropriate under
`
`the circumstances and that all filings will be subject to the regular page
`
`limits allotted by the rules.
`
`III. ORDER
`
`It is
`
`ORDERED that IPR2014-00949 is joined with IPR2014-00901;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`
`trial in the joined proceedings are the same as those for which trial was
`
`instituted in IPR2014-00949;
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`this proceeding and the VMWare IPR is unchanged;
`
`FURTHER ORDERED that, in the joined proceeding, IBM,Oracle,
`
`and VMWare will file all papers as consolidated filings and subject to the
`
`regular page limits allotted by the rules of the Board, unless the Board grants
`
`a motion for additional pages. Each such paper must be filed as a
`
`Consolidated Filing.
`
`
`
`Case IPR2014-00949
`Patent 6,978,346 B2
`
`
`FURTHER ORDERED that VMWare, on the one hand, and IBM and
`
`Oracle, on the other, will designate attorneys to conduct the cross-
`
`examination of any witnesses produced by Patent Owner and the redirect of
`
`any witnesses produced by VMWare, IBM and Oracle within the time frame
`
`normally allotted by the rules for one party; VMWare, and IBM and Oracle
`
`will not receive any separate cross-examination or redirect time;
`
`FURTHER ORDERED that any requests by any party for additional
`
`deposition time or additional pages must be brought before the Board;
`
`FURTHER ORDERED that the case caption in IPR2014-00901 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`caption sample on the next page; and
`
`FURTHER ORDERED that this proceeding (IPR2014-00949) is
`
`terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`
`proceeding shall be made in IPR2014-00901.
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 25
`January 28, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`VMWARE, INC., INTERNATIONAL
`BUSINESS MACHINES CORPORATION
`AND
`ORACLE AMERICA, INC.,
`Petitioners,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH
`INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2014-00949
`Case IPR2014-00901
`Patent 6,978,346 B2
`
`____________
`
`6
`
`
`
`Case IPR2014-00949
`Patent 6,978,346 B2
`
`PETITIONER in IPR2014-00949:
`
`Todd Friedman
`todd.friedman@kirkland.com
`
`Gregory Arovas
`greg.arovas@kirkland.com
`
`Eugene Goryunov
`eugene.goryunov@kirkland.com
`
`Benjamin Lasky
`benjamin.lasky@kirkland.com
`
`
`PATENT OWNER:
`
`Matthew Phillips
`matthew.phillips@renaissanceiplaw.com
`
`Derek Meeker
`derek.meeker@renaissanceiplaw.com
`
`
`PETITIONER in IPR2014-00901:
`
`Katherine Lutton
`lutton@fr.com
`
`Timothy Riffe
`IPR27450-0011IP1@fr.com
`
`
`
`
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