Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`Paper 9
`Entered: November 9, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`PARALLEL NETWORKS LICENSING, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01732
`Patent 6,415,335
`____________
`
`Before KEVIN F. TURNER, JEREMY M. PLENZLER, and
`CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 9
`Entered: November 9, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`PARALLEL NETWORKS LICENSING, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01732
`Patent 6,415,335
`____________
`
`Before KEVIN F. TURNER, JEREMY M. PLENZLER, and
`CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2015-01732
`Patent 6,415,335
`
`
`I. INTRODUCTION
`
`Petitioner, International Business Machines Corporation (“IBM”),
`
`filed a Petition requesting inter partes review of claims 30–40, 43–53, and
`
`56–85 of U.S. Patent No. 6,415,335 (Ex. 1004, “the ’335 patent”). Paper 1,
`
`“Pet.” Concurrently with its Petition, IBM filed a Motion for Joinder (Paper
`
`3, “Mot.”), seeking to join as a Petitioner, under 35 U.S.C. § 315(c), the
`
`pending inter partes review in Microsoft Corp. v. Parallel Networks
`
`Licensing, LLP, Case IPR2015-00485 (“the Microsoft IPR”), which was
`
`instituted on July 15, 2015. See IPR2015-00485, Paper 10.1
`
`On October 22, 2015, Patent Owner, Parallel Networks Licensing,
`
`LLC (“Parallel”), filed a Notice electing to waive a preliminary response to
`
`the Petition. Paper 8. Parallel also filed a Non-Opposition to IBM’s Motion
`
`for Joinder. Paper 7.
`
`For the reasons explained below, we grant IBM’s Motion for Joinder.
`
`II. DISCRETION TO GRANT JOINDER
`
`As a threshold matter, we determine that IBM’s Motion for Joinder
`
`was timely. Our Rules provide that a request for joinder must be filed “no
`
`later than one month after the institution date of any inter partes review for
`
`which joinder is requested.” 37 C.F.R. § 42.122(b). IBM’s Motion was
`
`filed August 14, 2015, less than one month after the July 15, 2015 institution
`
`date of the Microsoft IPR.
`
`The controlling statute regarding joinder of inter partes reviews is
`
`35 U.S.C. § 315(c), which reads as follows:
`
`
`1 Following institution, IPR2015-00486 was consolidated with IPR2015-
`00485.
`
`2
`
`
`
`IPR2015-01732
`Patent 6,415,335
`
`
`(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 partes review under section 314.
`
`By regulation, the Director’s discretion has been delegated to the
`
`Board. 37 C.F.R. § 42.4(a). We, therefore, have discretion to join IBM to
`
`the instituted Microsoft IPR if we determine that IBM’s Petition warrants
`
`institution of an inter partes review.
`
`The grounds of unpatentability asserted in the instant Petition are the
`
`same as those presented in the Microsoft IPR. Compare Pet. 4–5 with
`
`IPR2015-00485, Paper 1, 5. IBM states that its Petition includes the same
`
`claim constructions and arguments as those presented by Microsoft, and is
`
`relying on the same evidence and same expert declaration as relied upon in
`
`the Microsoft IPR. Mot. 4–5.
`
`We previously determined, upon consideration of the Microsoft IPR
`
`Petition and Parallel’s Preliminary Response, that the record in the Microsoft
`
`IPR established a reasonable likelihood that Microsoft would prevail with
`
`respect to all challenged claims on all presented grounds. IPR2015-00485,
`
`Paper 10, 22–23. Given the identical grounds and evidence presented in the
`
`present proceeding, we likewise determine that IBM’s Petition warrants
`
`institution on all presented grounds. We rely on, and hereby incorporate by
`
`reference, the reasoning set forth in our Decision on Institution in the
`
`Microsoft IPR. See generally id.
`
`3
`
`
`
`IPR2015-01732
`Patent 6,415,335
`
`
`III. GRANT OF MOTION FOR JOINDER
`
`Having determined that IBM’s Petition warrants institution, we must
`
`determine whether to exercise our discretion to join IBM as a party to the
`
`Microsoft IPR.
`
`
`
`IBM contends that joinder is appropriate because maintaining two
`
`separate proceedings that are substantively identical would require
`
`duplication of effort, and hinder the just, speedy, and inexpensive resolution
`
`of the proceedings. Mot. 5. Furthermore, if the proceedings are joined, IBM
`
`agrees to consolidate its substantive filings, discovery, and hearing argument
`
`with those of Microsoft, and agrees not to make arguments separate from
`
`those advanced in the consolidated filings. Id. at 6–7. Although IBM
`
`counsel will attend depositions of any witnesses, IBM agrees that Microsoft
`
`counsel will be responsible for conducting the deposition and the depositions
`
`will be taken during the normal time period allotted by our Rules. Id. at 6.
`
`Finally, IBM does not seek any change to the Scheduling Order already in
`
`place in the Microsoft IPR. Id. at 7.
`
`
`
`IBM requests that the Board enter an Order similar to that issued in
`
`The Gillette Company v. Zond, LLC, Case IPR2014-01012 (PTAB October
`
`23, 2014) (Paper 13), stating that IBM and Microsoft will engage in
`
`consolidated filings and discovery. Mot. 8. The Motion contains a proposed
`
`joinder order for our consideration. Id. at 8–9.
`
`As noted above, Parallel does not oppose IBM’s request to join the
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`Microsoft IPR. Paper 7. During a conference call with the Board on
`
`October 6, 2015, counsel for Microsoft stated that Microsoft does not oppose
`
`IBM’s request for joinder, and that Microsoft would agree to a joinder order
`
`as proposed by IBM, including consolidated filings and discovery.
`
`4
`
`
`
`IPR2015-01732
`Patent 6,415,335
`
`
`Upon review, IBM’s Motion demonstrates that joinder of IBM to the
`
`Microsoft IPR is appropriate, and will lead to the more efficient resolution of
`
`the proceedings. As noted above, the instant Petition does not assert any
`
`new ground of unpatentability that is not already being considered in the
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`Microsoft IPR, relies on the same arguments and evidence, and does not
`
`require any modification to the existing schedule. We, therefore, determine
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`that joinder will not unduly complicate or delay the proceedings. For these
`
`reasons, we grant IBM’s Motion for Joinder, subject to the requirements set
`
`forth in the Order below.
`
`Accordingly, it is
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`IV. ORDER
`
`ORDERED that IBM’s Motion for Joinder (Paper 3) is granted;
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`FURTHER ORDERED that IBM is joined as a Petitioner to IPR2015-
`
`00485;
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`FURTHER ORDERED that the grounds on which IPR2015-00485
`
`was instituted are unchanged, and no other grounds are instituted in the
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`consolidated proceeding beyond those set forth in IPR2015-00485, Paper 11;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2015-00485 shall continue to govern the joined proceeding;
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`FURTHER ORDERED that, throughout IPR2015-00485, any paper,
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`except for a motion that does not involve the other party, shall be filed by
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`Microsoft as a single, consolidated filing on behalf of Microsoft and IBM,
`
`pursuant to the page limits set forth in 37 C.F.R. § 42.24, and Microsoft will
`
`identify each such filing as a consolidated filing;
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`FURTHER ORDERED that except as otherwise agreed by all parties,
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`counsel for Microsoft will conduct cross-examination and other discovery on
`
`5
`
`
`
`IPR2015-01732
`Patent 6,415,335
`
`behalf of Microsoft and IBM, and that Parallel is not required to provide
`
`separate discovery responses or additional deposition time as a result of the
`
`joinder;
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`FURTHER ORDERED that Microsoft and IBM collectively will
`
`designate attorneys to present at the oral hearing (if requested) as a
`
`consolidated presentation;
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`FURTHER ORDERED that IPR2015-01732 is terminated under
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`37 C.F.R. § 42.72, and all further filings this proceeding are to be made in
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`IPR2015-00485;
`
`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2015-00485 and IPR2015-01732; and
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`FURTHER ORDERED that the case caption in IPR2015-00485 shall
`
`be changed to reflect consolidation with this proceeding in accordance with
`
`the attached example.
`
`
`
`6
`
`
`
`7
`
`IPR2015-01732
`Patent 6,415,335
`
`
`
`
`FOR PETITIONER:
`
`Andrew Heinz
`Kevin McNish
`DESMARAIS LLP
`aheinz@desmaraisllp.com
`kmcnish@desmaraisllp.com
`
`
`
`FOR PATENT OWNER:
`
`Christopher Bovenkamp
`Pierre Hubert
`MCKOOL SMITH, P.C.
`cbovenkamp@mckoolsmith.com
`phubert@mckoolsmith.com
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioners,
`
`v.
`
`PARALLEL NETWORKS LICENSING, LLC
`Patent Owner.
`____________
`
`Case IPR2015-004851
`Patent 6,415,335
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`1 IPR2015-00486 has been consolidated with this proceeding; International
`Business Machines Corporation was joined as a party to this proceeding via
`Motions for Joinder in IPR2015-01732 and IPR2015-01734.
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