Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 10
`Filed: August 3, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PERFECT WORLD ENTERTAINMENT, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`_______________
`
`Case IPR2015-01026
`Patent 5,490,216 C2
`_______________
`
`
`
`
`Before WILLIAM V. SAINDON, DONNA M. PRAISS, and
`PATRICK R. SCANLON, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Grant of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 10
`Filed: August 3, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PERFECT WORLD ENTERTAINMENT, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`_______________
`
`Case IPR2015-01026
`Patent 5,490,216 C2
`_______________
`
`
`
`
`Before WILLIAM V. SAINDON, DONNA M. PRAISS, and
`PATRICK R. SCANLON, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Grant of Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`IPR2015-01026
`Patent 5,490,216 C2
`
`
`I.
`INTRODUCTION
`Perfect World Entertainment Inc. (“Petitioner”) filed a Petition
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`claims 1–20 of U.S. Patent No. 5,490,216 C2 (“the ’216 patent”). Paper 1
`(“Pet.”). Concurrently, Petitioner filed a Motion for Joinder. Paper 3
`(“Joinder Motion”). The Joinder Motion seeks to join this proceeding with
`Sega of America, Inc., Ubisoft, Inc., Kofax, Inc., and Cambium Learning
`Group, Inc. v. Uniloc USA, Inc. and Uniloc Luxembourg S.A., Case
`IPR2014-01453 (“the ʼ1453 IPR”), which concerns the ’216 patent at issue
`here. Joinder Motion 1.
`Uniloc USA, Inc. and Uniloc Luxembourg S.A. (“Patent Owner”)
`filed a Preliminary Response (Paper 9, “Prelim. Resp.”) as well as an
`Opposition to Joinder (Paper 6, “Opposition”). Petitioner filed a Reply to
`Patent Owner’s Opposition to Motion for Joinder (Paper 7, “Reply”). We
`instituted trial in the ’1453 IPR on March 10, 2015. ’1453 IPR, Paper 11
`(“the ’1453 Institution Decision”). For the reasons described below, we
`institute an inter partes review of claims 1–20 and grant Petitioner’s Motion
`for Joinder.
`
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`A.
`References
`Petitioner relies on the same references as those in the ’1453 IPR:
`Reference
`Publication
`Date
`Exhibit
`Haines
`US 5,077,660
`Dec. 31, 1991
`1005
`Logan
`US 5,199,066
`Mar. 30, 1993
`1003
`Grundy
`US 5,291,598
`Mar. 1, 1994
`1004
`Schull
`US 5,509,070
`Apr. 16, 1996
`1002
`Manduley
`US 5,956,505
`Sept. 21, 1999
`1006
`
`2
`
`
`
`IPR2015-01026
`Patent 5,490,216 C2
`
`Petitioner also relies on essentially the same Declaration of Vijay K.
`Madisetti, Ph.D., as in the ’1453 IPR, but dated April 8, 2015 for this
`proceeding. Ex. 1007 (“Madisetti Decl.”).
`B. Grounds Asserted
`The Petitioner in this proceeding asserts the same grounds as those on
`which we instituted review in the ’1453 IPR. Those are:
`Claims Challenged
`Basis
`1–11, 17–20
`§ 102(e)
`12–14
`§ 102(e)
`15, 16
`§ 103(a)
`12–14
`§ 103(a)
`10, 11
`§ 103(a)
`C. Decision
`We have reviewed the Petition, Preliminary Response, and the
`evidence cited therein. In view of the identity of the challenges to the ’216
`patent in this Petition and in the petition in the ’1453 IPR, we institute an
`inter partes review in this proceeding on the same grounds as those on
`which we instituted inter partes review in the ’1453 IPR.
`
`
`Reference(s)
`Schull
`Logan
`Logan and Grundy
`Haines and Manduley
`Schull
`
`III. MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`review, subject to the provisions of 35 U.S.C. § 315(c):
`(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.
`
`3
`
`
`
`IPR2015-01026
`Patent 5,490,216 C2
`
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c).
`To be considered timely, a motion for joinder must be filed no later
`than one month after the institution date of the inter partes review for which
`joinder is requested. 37 C.F.R. § 42.122(b). The Petition in this proceeding
`has been accorded a filing date of April 9, 2015 (Paper 4). This date is
`within one month after the date of institution in the ʼ1453 IPR, which was
`instituted on March 10, 2015. The Petition, therefore, is timely.
`A motion for joinder should: (1) set forth the reasons joinder is
`appropriate; (2) identify any new ground(s) of unpatentability asserted in the
`petition; and (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review. See Kyocera Corporation v. Softview LLC,
`IPR2013-00004 (Paper 15, 4) (PTAB Apr. 24, 2013); see also Frequently
`Asked Question H5, http://www.uspto.gov/patents-application-
`process/appealing-patent-decisions/trials/patent-review-processing-system-
`prps-0 (last visited July 29, 2015).
`Petitioner contends that joinder will not impact the Board’s ability to
`complete its review in the statutorily prescribed time frame. Joinder Motion
`6–7. Petitioner proposes an accelerated schedule in this proceeding in order
`to “reach a decision on institution prior to the June 8, 2015 deadline for
`Patent Owner’s Response in the [’1453] IPR.” Id. at 7. Petitioner contends
`that the grounds asserted in this Petition are the same grounds of
`unpatentability asserted in the ʼ1453 IPR. Id. at 5–6. Petitioner’s arguments
`regarding the asserted references are identical to the arguments raised in the
`ʼ1453 IPR, and Petitioner has submitted, in support of its Petition,
`substantially the same declaration of the same technical expert as submitted
`
`4
`
`
`
`IPR2015-01026
`Patent 5,490,216 C2
`
`in the ’1453 IPR (excluding some minor changes made to reflect Petitioner’s
`subsequent engagement of the same expert). Id.
`Petitioner further contends that joinder will promote efficiency by
`avoiding redundancy. Id. at 6–7. According to Petitioner, the Board can
`minimize any scheduling impact by requiring consolidated filings and
`coordination among petitioners. Id.
`Patent Owner opposes joinder, contending that joinder would impact
`the trial schedule because a decision on the joinder motion would coincide
`with the time that Petitioner’s Reply is due in the ’1453 IPR. Opposition 5–
`6; see also ’1453 IPR, Paper 12, 6 (Scheduling Order, setting the due date
`for Petitioner’s reply to September 8, 2015). Patent Owner also contends
`that because the Preliminary Response in this proceeding includes new
`argument not previously considered by the Board in the ’1453 IPR, “the risk
`arises that one of the parties in the pending IPR2014-01453 would be
`unfairly advantaged by an untimely decision whether to institute trial for the
`present Petition.” Id. at 6.
`In response to Patent Owner’s concerns about the impact on the trial
`schedule, Petitioner states:
`Petitioner has no intention to revisit the already
`conducted depositions, despite suggestions otherwise by the
`Opposition (p. 5). Rather, Petitioner simply seeks to join the
`ongoing [’1453] IPR, adopting its status upon the grant of
`joinder.
`Reply 3.
`As discussed above, joinder is a matter within the Board’s discretion
`based on the particular circumstances of each proceeding. In this
`proceeding, we are persuaded that Petitioner has demonstrated that joinder
`with the ʼ1453 IPR would avoid duplication and promote the efficient
`
`5
`
`
`
`IPR2015-01026
`Patent 5,490,216 C2
`
`resolution of both proceedings. Petitioner has brought the same challenges
`presented by the ʼ1453 IPR; thus, the substantive issues would not be unduly
`complicated by joining the proceedings. Joinder merely introduces the same
`grounds presented originally in the ʼ1453 IPR, where all the same prior art is
`involved. Patent Owner will therefore be able to address the challenges in a
`single proceeding.
`Patent Owner asserts that the ’1453 IPR will have reached its
`substantive stages by the time a decision on Petitioner’s joinder motion is
`made requiring revision of the scheduling order in the ’1453 IPR.
`Opposition 6. We are not persuaded by this argument that joinder should be
`denied. Petitioner’s Reply is not due until September 8, 2015 in the ’1453
`IPR and Petitioner in this proceeding is not seeking to revisit what has
`transpired in the ’1453 IPR prior to the grant of joinder.
`Finally, Patent Owner argues that accelerating the scheduling and
`decision-making with respect to new arguments made in its Preliminary
`Response to the Petition in this case would unfairly advantage the parties to
`the ’1453 IPR. Id. We do not find this argument persuasive because Patent
`Owner filed its Preliminary Response in this proceeding after it filed its
`Response in the ’1453 IPR.
`
`
`IV. CONCLUSION
`Based on the record before us, we institute an inter partes review in
`IPR2015-01026 and grant Petitioner’s motion to join that proceeding to
`IPR2014-01453.
`
`
`6
`
`
`
`IPR2015-01026
`Patent 5,490,216 C2
`
`
`V. ORDER
`In view of the foregoing, it is:
`ORDERED that inter partes review in IPR2015-01026 is hereby
`instituted;
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`granted, and IPR2015-01026 is joined with IPR2014-01453;
`FURTHER ORDERED that the grounds on which IPR2014-01453
`was instituted are unchanged, and no other grounds are included in the
`joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2014-01453 (Paper 12) is not modified by this Order and shall govern
`the schedule of the joined proceedings;
`FURTHER ORDERED that, throughout the joined proceeding,
`all petitioners will file papers, except for motions that do not involve the
`other party, as a single, consolidated filing; that such consolidated filings
`will be identified as a “Consolidated Filing”; and that the petitioners will
`conduct coordinated (not separate) discovery;
`FURTHER ORDERED that IPR2015-01026 is terminated under 37
`C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`made in IPR2014-01453;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2014-01453; and
`FURTHER ORDERED that the case caption in IPR2014-01453 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`7
`
`
`
`IPR2015-01026
`Patent 5,490,216 C2
`
`FOR PETITIONER:
`
`Don Daybell
`James Maune
`Xiang Wang
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`ipprosecution@orrick.com
`ddaybell@orrick.com
`jmaune@orrick.com
`xiangwang@orrick.com
`
`FOR PATENT OWNER:
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`Brett Mangrum
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`
`8
`
`
`
`IPR2015-01026
`Patent 5,490,216 C2
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SEGA OF AMERICA, INC., UBISOFT, INC.,
`KOFAX, INC., CAMBIUM LEARNING GROUP, INC., and
`PERFECT WORLD ENTERTAINMENT, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`_______________
`
`Case IPR2014-014531
`Patent 5,490,216 C2
`_______________
`
`
`1 Case IPR2015-01026 has been joined with this proceeding.
`
`9
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