Trials@uspto.gov
`571.272.7822
`
`
`Paper 12
`Filed: October 22, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RELOADED GAMES, INC.,
`Petitioner,
`
`v.
`
`PARALLEL NETWORKS LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00950
`Patent 7,188,145 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`and Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`I.
`
`INTRODUCTION
`Reloaded Games, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.” or
`“Second Petition”) to institute an inter partes review of claims 1, 4, 5, 8, 9,
`11–15, 18, 19, 22, 23, and 25–28 (“the challenged claims”) of U.S. Patent
`No. 7,188,145 B2 (Ex. 1001, “the ’145 patent”) pursuant to 35 U.S.C. § 311.
`
`
`571.272.7822
`
`
`Paper 12
`Filed: October 22, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RELOADED GAMES, INC.,
`Petitioner,
`
`v.
`
`PARALLEL NETWORKS LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00950
`Patent 7,188,145 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`and Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`I.
`
`INTRODUCTION
`Reloaded Games, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.” or
`“Second Petition”) to institute an inter partes review of claims 1, 4, 5, 8, 9,
`11–15, 18, 19, 22, 23, and 25–28 (“the challenged claims”) of U.S. Patent
`No. 7,188,145 B2 (Ex. 1001, “the ’145 patent”) pursuant to 35 U.S.C. § 311.
`
`
`
`Case IPR2014-00950
`Patent 7,188,145 B2
`
`The Second Petition involves the same parties and patent at issue in
`instituted trial proceeding, Reloaded Games, Inc. v. Parallel Networks LLC,
`Case No. IPR2014-00136 (“the ’136 proceeding”). Petitioner concurrently
`filed a Motion for Joinder of the Second Petition with the ’136 proceeding.
`Paper 4 (“Mot.”). The Motion was filed within one month after institution
`of the ’136 proceeding, as required by 37 C.F.R. § 42.122(b).
`Parallel Networks LLC (“Patent Owner”) filed a Preliminary
`Response (Paper 10, “Prelim. Resp.”) and an Opposition to Motion for
`Joinder (Paper 11, “Opp.”). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a), which provides:
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`35 U.S.C. § 315(b) bars institution of inter partes review when the
`petition is filed more than one year after the petitioner (or petitioner’s real
`party in interest or privy) is served with a complaint alleging infringement of
`the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The one-year bar,
`however, does not apply to a request for joinder. 35 U.S.C. § 315(b) (final
`sentence); 37 C.F.R. § 42.122(b). The record indicates that Petitioner was
`served with a complaint asserting infringement of the ʼ145 patent more than
`one year before filing the Second Petition. Thus, absent joinder, the Second
`Petition would be barred.
`
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`Case IPR2014-00950
`Patent 7,188,145 B2
`
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When
`exercising that discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
`The Board determines whether to grant joinder on a case-by-case
`basis, taking into account the particular facts of each case. See 157 Cong.
`Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (when
`determining whether and when to allow joinder, the Office may consider
`factors including the breadth or unusualness of the claim scope, claim
`construction issues, and consent of the patent owner). After considering the
`facts of this case, we determine that Petitioner’s stated reasons for allowing
`joinder do not outweigh meaningful reasons for denying joinder.
`
`
`II. ANALYSIS
`Petitioner states that its request for joinder is “substantively
`appropriate under the circumstances” because “the Second Petition involves
`the same parties,” “raises a limited number of additional issues,” “will not
`complicate the proceeding in IPR2014-00136,” and “is directed to issues that
`will already be resolved in IPR2014-00136.” Mot. 5–6. Petitioner also
`states it is “willing to forfeit a reasonable portion of its response period in
`the Second Petition” and “will agree to one set of briefing for all of its
`papers, including the associated page limits in IPR2014-00136.” Id. at 6–7.
`Petitioner further contends that “discovery will be simplified because
`
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`Case IPR2014-00950
`Patent 7,188,145 B2
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`Petitioner relies on the same expert declaration in both proceedings.” Id. at
`7.
`
`Patent Owner counters that the Second Petition is a responsive
`pleading that gains additional pages of argument and contains arguments
`that could have been raised in the Petition for the ’136 proceeding. Opp. 5–
`6, 8. Patent Owner also argues that, if Petitioner’s Motion for Joinder is
`granted, it would set a precedent for a “single petitioner . . . , through abuse
`of the joinder rule, to seek advantage and circumvent the rules by staging
`petitions that attack the same claims through the filing of serial sixty page
`petitions,” which is “clearly not the intent of the joinder provision.” Id. at 6.
`Patent Owner further argues that “Petitioner has not provided any reason as
`to why it could not have asserted the allegations of the ‘950 Petition in the
`‘136 Petition” and “provided no justification for failing to have included the
`allegations of the ‘950 Petition when it filed the ‘136 Petition.” Id. at 7, see
`also id. at 8, 9–13 (presenting similar arguments). Patent Owner contends
`that “Petitioner seeks a ‘second bite of the apple’ and alleges for the first
`time that claims 1, 5, 8-9, 11-15, 19, 22-23, and 25-28 are obvious under
`§ 103 over Smith in view of Inohara” that “complicate the proceedings of
`the ‘136 IPR by raising new arguments that could and should have been
`raised in the ‘136 Petition.” Id. at 11. Patent Owner also contends that “[i]t
`would be counter to the rules that govern inter partes review proceedings
`and procedurally unfair to grant the ‘950 Petition or joinder to the ‘136
`IPR.” Id. at 12.
`We agree with Patent Owner’s contentions as to the Petition in this
`case. In particular, we agree that “Petitioner seeks a ‘second bite of the
`apple.’” Opp. 11. We also agree with Patent Owner that “Petitioner has not
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`Case IPR2014-00950
`Patent 7,188,145 B2
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`raised any grounds of unpatentability that could not have been raised when
`filing the ‘136 Petition.” Id. at 13. Petitioner acknowledges that “[t]he
`Second Petition merely adds citations to [Smith and Inohara] necessary to
`meet the additional recitations of claims 1, 5, 8, 9, 11-15, 19, 22, 23 and 25-
`28.” Mot. 5. Petitioner’s Motion for Joinder does not explain why those
`citations could not have been added to the prior Petition of the ’136
`proceeding. On the facts of this case, we are not persuaded to exercise our
`discretion to join these matters.
`Petitioner states that it “has included these claims, arguing grounds of
`obviousness for these claims, in part based on the Board’s claim
`interpretation of the term ‘allowing’ in its IPR2014-00136 Institution
`Decision.” Mot. 5. However, the Board’s construction of “allowing” is
`based on its plain and ordinary meaning based on a dictionary definition, not
`a difficult to foresee special definition. See IPR2014-00136, Paper 15, at
`13–15.
`In view of the foregoing, on the record before us, Petitioner has not
`shown that joinder is justified.
`
`
`III. CONCLUSION
`The Motion for Joinder is denied, and therefore, the Second Petition is
`denied because it was not filed within the time limits imposed under 35
`U.S.C. § 315(b).
`
`
`IV. ORDER
`For the reasons given, it is
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`Case IPR2014-00950
`Patent 7,188,145 B2
`
`ORDERED that the Motion for Joinder is denied; and
`
`FURTHER ORDERED that the Second Petition is denied and
`
`no trial is instituted.
`
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`Case IPR2014-00950
`Patent 7,188,145 B2
`
`PETITIONER:
`
`Eric A. Buresh
`Mark C. Lang
`ERISE IP, P.A.
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`
`PATENT OWNER:
`
`Darren W. Collins
`Robert C. Hilton
`Aaron J. Pickell
`MCGUIRE WOODS, LLP
`dwcollins@mcguirewoods.com
`rhilton@mcguirewoods.com
`apickell@mcguirewoods.com
`patents@mcguirewoods.com
`
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