Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 23
`Entered: August 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION and
`SOFTLAYER TECHNOLOGIES, INC,
`Petitioner,
`
`v.
`
`ZITOVAULT, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01025
`Patent 6,484,257 B1
`____________
`
`
`
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and DANIEL N. FISHMAN,
`Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Unopposed Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 23
`Entered: August 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION and
`SOFTLAYER TECHNOLOGIES, INC,
`Petitioner,
`
`v.
`
`ZITOVAULT, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01025
`Patent 6,484,257 B1
`____________
`
`
`
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and DANIEL N. FISHMAN,
`Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Unopposed Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`IPR2016‐01025
`
`Patent 6,484,257 B1
`
`
`
`INTRODUCTION
`I.
`International Business Machines Corporation and Softlayer
`Technologies (collectively “Petitioner”), filed a Petition (Paper 2, “Pet.”) for
`inter partes review of claims 1, 3, 5–8, and 10 of U.S. Patent No. 6,484,257
`B1 (“the ’257 Patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Along
`with the Petition, Petitioner filed a Motion for Joinder with IPR2016-00021.
`Paper 4 (“Mot.”). The Motion for Joinder was timely filed May 10, 2016,
`within one month after we instituted trial in IPR2016-00021. See 37 C.F.R.
`§ 42.122(b).
`In an e-mail message sent July 27, 2016, counsel for Zitovault, LLC
`(“Patent Owner”) indicated that Patent Owner did not object to the Motion
`for Joinder and requested a conference call seeking guidance regarding
`Patent Owner’s options for filing a Preliminary Response. We conducted a
`conference call on July 28, 2016 with counsel for the parties and Judges Lee,
`Kim, and Fishman. Furthermore, Lead Counsel for Petitioner in IPR2016-
`00021 was added to the conference call and confirmed they had no objection
`to the proposed joinder. On August 15, 2016, Patent Owner filed a paper
`waiving filing of a preliminary response to the Petition. Paper 6.
`As explained further below, we institute trial in this inter partes
`review on the same grounds as instituted in IPR2016-00021 and we grant
`Petitioner’s unopposed Motion for Joinder.
`
`
`
`
`2
`
`
`
`
`
`IPR2016‐01025
`
`Patent 6,484,257 B1
`
`
`
`II. DISCUSSION
`A.
`Institution of Trial
`In IPR2016-00021, Petitioner (Amazon.com et. al.) challenges the
`patentability of claims 1, 3–8, and 10 of the ’257 Patent based on the
`following items of prior art:
`U.S. Patent No. 6,065,046; May 16, 2000. Ex. 1002 (“Feinberg”).
`U.S. Patent No. 6,266,355 B1; July 24, 2001. Ex. 1003 (“Bhaskaran”).
`Refik Molva, et al., Authentication of Mobile Users, IEEE Network,
`March/April 1994. Ex. 1004 (“Molva”).
`
`
`
`Claims
`6 and 10
`1, 3, 4, 6, and 10
`5, 7, and 8
`
`Basis for Challenge
`§ 102(e)
`§ 103(a)
`§ 103(a)
`
`Petitioner in IPR2016-00021 alleged the following grounds of
`unpatentability:
`Reference(s)
`Feinberg
`Feinberg and Bhaskaran
`Feinberg and Molva
`
`After considering the Petition and the Patent Owner’s Preliminary
`Response in IPR2016-00021, we instituted trial for all the above-identified
`grounds of unpatentability with the exception of claim 4. See IPR2016-
`00021, Paper 8, 40. Petitioner here represents that this Petition is
`substantively identical to the Petition in IPR2016-00021 and challenges the
`same claims for which we instituted trial (i.e., excludes claim 4 in the
`asserted grounds). Mot. 1; Compare IPR2016-00021, Paper 1 with
`IPR2016-01025, Paper 2. We have considered the relevant Petitions and we
`agree with Petitioner’s representation.
`Patent Owner waived its right to file a preliminary response in this
`proceeding. Paper 6. Patent Owner also did not file an opposition to
`Petitioner’s Motion for Joinder. For essentially the same reasons stated in
`
`3
`
`
`
`IPR2016‐01025
`
`Patent 6,484,257 B1
`
`
`our Decision to Institute in IPR2016-00021, we conclude Petitioner has
`established a reasonable likelihood of prevailing with respect to at least one
`challenged claim and we institute trial in this proceeding for claims 1, 3, 5–
`8, and 10 on the same grounds as in IPR2016-00021.1
`
`
`
`
`
`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join an inter partes review to a previously instituted inter partes review.
`35 U.S.C. § 315(c). Section 315(c) provides, in relevant part, that “[i]f 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.” Id.
`In the conference call, we proposed these conditions for joinder,
`which were agreed to by Petitioner, Patent Owner, and Petitioner in
`IPR2016-00021:
`In the joined proceeding, Petitioner here (IBM Corporation
`and Softlayer Technologies, Inc.) will be bound by all
`substantive and procedural filings and representations of current
`Petitioner
`in
`IPR2016-00021
`(Amazon.Com,
`Inc.,
`
`
`1 Unlike in the instant proceeding in which Patent Owner waived its right to
`file a Preliminary Response, Patent Owner did file a Preliminary Response
`in IPR2016-00021. We have reviewed the Decision to Institute in IPR2016-
`00021, however, and determine that our decision to institute trial on claims
`1, 3, 5–8, and 10 in that proceeding would not have been affected
`dispositively if Patent Owner had not filed a Preliminary Response. More
`specifically, in IPR2016-00021, we were unpersuaded by Patent Owner’s
`arguments, set forth in their Preliminary Response, that Petitioner had not
`met its burden to show a reasonable likelihood of prevailing concerning
`unpatentability of claims 1, 3, 5–8, and 10. Therefore, the lack of those
`arguments in this proceeding is equally unpersuasive.
`
`4
`
`
`
`IPR2016‐01025
`
`Patent 6,484,257 B1
`
`
`
`Amazon.Com, LLC, Amazon Web Services, Inc., Bazaarvoice,
`Inc., and Gearbox Software, LLC), without a separate
`opportunity to be heard, whether orally or in writing, unless and
`until the joined proceeding is terminated with respect to the
`current Petitioner in IPR2016-00021.
`
`
`
`In view of the foregoing, we determine that joinder based upon the above-
`noted condition will have little or no impact on the timing, cost, or
`presentation of the trial on the instituted grounds. Moreover, discovery and
`briefing will be simplified if the proceedings are joined. Thus, without
`opposition to the Motion for Joinder from any of the parties and also not
`from the Petitioner in IPR2016-00021, the Motion is granted.
`
`
`III. ORDER
`After due consideration of the record before us, and for the foregoing
`
`reasons, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted for claims of the ’257 Patent as follows: claims 6 an 10 as
`anticipated under 35 U.S.C. § 102(e) by Feinberg; claims 1, 3, 6, and 10 as
`unpatentable under 35 U.S.C. § 103(a) over Feinberg and Bhaskaran; and
`claims 5, 7, and 8 as unpatentable under 35 U.S.C. § 103(a) over Feinberg
`and Molva;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2016-00021 is granted;
`FURTHER ORDERED that the grounds on which an inter partes
`review was instituted in Case IPR2016-00021 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
`
`5
`
`
`
`IPR2016‐01025
`
`Patent 6,484,257 B1
`
`
`
`FURTHER ORDERED that IPR2016-01025 is joined with IPR2016-
`00021, pursuant to 37 C.F.R. §§ 42.72, 42.122, on the condition that:
`In
`the
`joined proceeding, Petitioner here
`(IBM
`Corporation and Softlayer Technologies, Inc.) will be bound by
`all substantive and procedural filings and representations of
`current Petitioner in IPR2016-00021 (Amazon.Com, Inc.,
`Amazon.Com, LLC, Amazon Web Services, Inc., Bazaarvoice,
`Inc., and Gearbox Software, LLC), without a separate
`opportunity to be heard, whether orally or in writing, unless and
`until the joined proceeding is terminated with respect to the
`current Petitioner in IPR2016-00021;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2016-00021 (Paper 9) shall govern the joined proceedings;
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2016-00021;
`FURTHER ORDERED that the case caption in IPR2016-00021 for all
`further submissions shall be changed to add Petitioner as a named Petitioner,
`and to indicate by footnote the joinder of IPR2016-01025 to that proceeding,
`as indicated in the attached sample case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-00021.
`
`
`
`
`
`
`
`6
`
`
`
`
`
`IPR2016‐01025
`
`
`
`Patent 6,484,257 B1
`
`PETITIONER:
`David L. McCombs
`Andrew S. Ehmke
`John Russell Emerson
`Gregory P. Huh
`HAYNES & BOONE, LLP
`david.mccimbs.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`russ.emerson.ipr@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`
`
`
`PATENT OWNER:
`Michael R. Casey
`Wayne M. Helge
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`ZitoVault_IPR@dbjg.com
`whelge@dbjg.com
`
`
`
`
`
`
`
`7
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC., AMAZON.COM, LLC,
`AMAZON WEB SERVICES, INC., BAZAARVOICE, INC.,
`GEARBOX SOFTWARE, LLC.,
`INTERNATIONAL BUSINESS MACHINES CORPORATION, and
`SOFTLAYER TECHNOLOGIES, INC,
`Petitioner,
`
`v.
`
`ZITOVAULT, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-000212
`Patent 6,484,257 B1
`____________
`
`
`
`2 Case IPR2016-01025 has been joined with this proceeding.
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