Trials@uspto.gov
`Tel: 571-272-7822
`
` Paper 16
` Entered: January 8, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC
`Patent Owner.
`_______________
`
`Case IPR2015-01735
`Patent 5,930,444
`_______________
`
`
`
`Before NEIL T. POWELL, STACEY G. WHITE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`Tel: 571-272-7822
`
` Paper 16
` Entered: January 8, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC
`Patent Owner.
`_______________
`
`Case IPR2015-01735
`Patent 5,930,444
`_______________
`
`
`
`Before NEIL T. POWELL, STACEY G. WHITE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2015-01735
`Patent 5,930,444
`
`
`I.
`
`INTRODUCTION
`
`Sirius XM Radio Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`requesting an inter partes review of claims 1–10, 13 and 14 (“the challenged
`
`claims”) of U.S. Patent No. 5,930,444 (Ex. 1001, “the ’444 patent”), and
`
`concurrently filed a Motion for Joinder (Paper 3, “Mot.”). The Motion for
`
`Joinder seeks to join this proceeding with DISH Network L.L.C. v. Dragon
`
`Intellectual Property, LLC, IPR2015-00499 (the “DISH IPR”). Mot. 1.
`
`Patent Owner filed a Partial Opposition to the Motion for Joinder (Paper 7,
`
`“Opp.”). For the reasons described below, we institute an inter partes
`
`review of all the challenged claims and grant Petitioner’s Motion for
`
`Joinder.
`
`II.
`
`INSTITUION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds as those on
`
`which we instituted review in the DISH IPR. On July 17, 2015, we
`
`instituted a trial in the IPR2015-00499 on the following grounds:
`
`References
`
`Basis Claims Challenged
`
`Goldwasser1 and Yifrach2
`
`§ 103
`
`1, 7–10, and 14
`
`Goldwasser, Yifrach, and Vogel3 § 103
`
`2–4 and 13
`
`DISH Network L.L.C. v. Dragon Intellectual Prop., LLC, Case IPR2015-
`
`00499, slip. op. at 19 (PTAB July 17, 2015) (Paper 7) (“499 Decision”).
`
`
`1 US 5,241,428, filed Mar. 12, 1991, issued Aug. 31, 1993 (“Goldwasser”)
`(Ex. 1005).
`2 US 5,126,982, filed Sept. 10, 1990, issued June 30, 1992 (“Yifrach”)
`(Ex. 1003).
`3 PCT Pub. WO 90/15507, published Dec. 13, 1990 (“Vogel”) (Ex. 1004).
`
`
`
`2
`
`
`
`IPR2015-01735
`Patent 5,930,444
`
`
`In addition, Petitioner conditionally asserts grounds that were subject
`
`to a Request for Rehearing, which was still pending at the time the Petition
`
`and Joinder Motion were filed. Pet. 4 n.1; DISH Network, LLC v. Dragon
`
`Intellectual Prop. LLC., IPR2015-00499 (PTAB) (Paper 9) (the “DISH
`
`Rehearing Request”). Petitioner “agree[d] to be bound by the Board’s
`
`decision in the DISH Rehearing Request and [] withdraw any grounds the
`
`Board does not institute.” Pet. 4 n.1; see also id. at 8 n.2 (repeating same
`
`statement). Patent Owner’s Partial Opposition focuses only on issues related
`
`to the conditionally asserted grounds. Opp. 1. On October 20, 2015, we
`
`denied the DISH Rehearing Request. DISH Network, LLC v. Dragon
`
`Intellectual Prop. LLC., IPR2015-00499 (PTAB) (Paper 14). Thus, we treat
`
`the conditionally asserted grounds as withdrawn from this Petition, and we
`
`find Patent Owner’s Opposition to be moot. As such, the only challenges
`
`remaining in this Petition are the same as those instituted in the DISH IPR.
`
`In view of the identity of the challenge in the instant Petition and in
`
`the petition in the IPR2015-0499, we institute an inter partes review in this
`
`proceeding on the same grounds as those on which we instituted inter partes
`
`review in IPR2015-0499. We do not institute inter partes review on any
`
`other grounds.
`
`III. GRANT OF 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), which governs
`
`joinder of inter partes review proceedings:
`
`(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
`
`
`
`3
`
`
`
`IPR2015-01735
`Patent 5,930,444
`
`
`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 moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`grounds 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 Frequently Asked Question H5, available at
`
`http://www.uspto.gov/patentsapplication-process/appealing-
`
`patentdecisions/trials/patent-reviewprocessing-system-prps-0.
`
`The Petition in this proceeding has been accorded a filing date of
`
`August 14, 2015 (Paper 4), which is within one month the date of institution
`
`in IPR2015-0499, which was instituted on July 17, 2015. The Petition,
`
`therefore, was filed timely. 37 C.F.R. § 42.122.
`
`In its Motion for Joinder, Petitioner contends that the grounds asserted
`
`in the instant Petition “present[] the same claims, prior art combinations and
`
`grounds of unpatentability that are the subject of the DISH IPR.” Mot. 1.
`
`Petitioner seeks to join the DISH IPR “as an ‘understudy’ to Dish Network
`
`L.L.C. [], only assuming an active role to support the DISH IPR as necessary
`
`or in the event DISH settles with Dragon Intellectual Property, LLC.” Id.
`
`Petitioner asserts that it “is not seeking to alter the schedule.” Id. at 11. In
`
`addition, the identity of its grounds with those in the DISH IPR means that
`
`Patent Owner will not be prejudiced because the joinder of Petitioner to the
`
`DISH IPR will not require Patent Owner to perform any additional analysis,
`
`and no additional depositions will be necessary because Petitioner and Dish
`
`rely upon the same declarations. Id. Petitioner “further submits that it is
`
`
`
`4
`
`
`
`IPR2015-01735
`Patent 5,930,444
`
`willing to agree to consolidated filings already set on the schedule in the
`
`DISH IPR and to designate DISH as the lead petitioner in the joint
`
`proceedings.” Id. at 12. On this record, we find that joinder is appropriate
`
`and we grant Petitioner’s Motion for Joinder.
`
`IV. ORDER
`
`In view of the foregoing, it is
`
`ORDERED that Petitioner’s Motion for Joinder is granted;
`
`FURTHER ORDERED that IPR2015-01735 is hereby instituted and
`
`joined with IPR2015-00499;
`
`FURTHER ORDERED that the grounds on which IPR2015-0499 was
`
`instituted are unchanged and no other grounds are included in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2015-00499 (Paper 8) remains unchanged and shall govern the schedule
`
`of the joined proceedings;
`
`FURTHER ORDERED that, throughout the joined proceeding, Dish
`
`Network LLC and SIRIUS XM Radio Inc. will file all papers jointly in the
`
`joined proceeding as consolidated filings, and will identify each such paper
`
`as “Consolidated,” except that papers filed on behalf of a single party need
`
`not be marked Consolidated;
`
`FURTHER ORDERED that IPR2015-01735 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`
`made in IPR2015-00499;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2015-0499; and
`
`
`
`5
`
`
`
`IPR2015-01735
`Patent 5,930,444
`
`
`FURTHER ORDERED that the case caption in IPR2015-0499 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`
`
`
`
`6
`
`
`
`IPR2015-01735
`Patent 5,930,444
`
`
`PETITIONER:
`
`Jonathan S. Caplan
`James Hannah
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`jhannah@kramerlevin.com
`
`PATENT OWNER:
`
`Kai Zhu
`kz@dragonipllc.com
`
`Timothy Devlin
`DEVLIN LAW FIRM LLC
`tdevlin@devlinlawfirm.com
`
`
`
`
`
`7
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
` Paper 16
` Entered: January 8, 2016
`
`
`
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`DISH NETWORK L.L.C., and SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-004991
`Patent 5,930,444
`_______________
`
`
`
`
`1 Case IPR2015-01735 has been joined with this proceeding.
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