`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 9
`
`Date: June 21, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GAMELOFT, S.A.,
`Petitioner,
`
`v.
`
`ROTHSCHILD DIGITAL MEDIA INNOVATIONS, LLC,
`Patent Owner.
`
`
`
`Case IPR2016-00472
`Patent 6,101,534
`
`
`
`
`Before MICHAEL W. KIM, MICHAEL J. FITZPATRICK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`DECISION
`Granting Joinder; Denying Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`I.
`
`INTRODUCTION
`
`Gameloft, S.A., (“Petitioner” or “Gameloft”) filed a Petition to
`institute an inter partes review of claims 1, 6–9, and 21–24 of U.S. Patent
`No. 6,101,534, as amended by U.S. Patent Reexamination Certificate
`6,101,534 C1, (Ex. 1001, “the ’534 patent”) pursuant to 35 U.S.C. § 311(a).
`Paper 3 (“Pet.”). Petitioner also filed a Motion for Joinder (“Motion”) with
`Sony Entertainment America LLC, (“Sony”) v. Rothschild Digital Media
`Innovations, LLC, IPR2015-01364 (the “Sony IPR”). Paper 4 (“Mot.”).
`
`Patent Owner, Rothschild Digital Media Innovations, LLC, filed a
`paper, stating that it waives filing a preliminary response and does not
`oppose joinder. Paper 8, 2.
`
`For reasons explained below, we grant joinder, dismiss the Motion as
`moot, and deny the Petition.
`
`A. Related Matters
`The parties identify the following cases as related matters: Rothschild
`Digital Media Innovations, LLC v. Sony Computer Entertainment America
`LLC, Case No. 5:14-cv-03928 (N.D. Cal.) (pending); Rothschild Digital
`Media Innovations, LLC v. G5 Entertainment, AB, Case No. 1:15-cv-23301
`(S.D. Fla.) (pending); Rothschild Digital Media Innovations, LLC v.
`Gameloft, S.A., Case No. 1:15-cv-23302 (S.D. Fla.) (pending); Supercell Oy
`v. Rothschild Digital Media Innovations, LLC, Case No. 2:15-cv-1119
`(W.D. Wash.) (pending); ORB Networks v. Rothschild Trust Holdings, LLC,
`Case No. 3:07-cv-400 (N.D. Cal.) (terminated); Rothschild Trust Holdings,
`LLC v. ORB Networks, Inc., Case No. 1:06-cv-22921 (S.D. Fla.)
`
`2
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`(terminated); Rothschild Trust Holdings, LLC v. Citrix Systems, Inc., Case
`No. 1:06-cv-21359 (S.D. Fla.) (terminated). Pet. 40–41; Paper 7, 2–3.
`
`Petitioner alone identifies the following additional cases as related
`matters: Trust Licensing, LLC v. Interactual Technologies, Inc., Case No.
`1:03-cv-20672 (S.D. Fla.) (terminated); Trust Licensing, LLC v. Disc
`Publishing, Inc., Case No. 1:02-cv-21192 (S.D. Fla.) (terminated); In re
`Intracorp Entertainment, Inc., Case No. 96-16276 (S.D. Fla.) (terminated).
`Pet. 41. Likewise, Petitioner alone identifies the Sony IPR as a related
`matter. Id.
`
`Patent Owner alone identifies Reexamination Control No. 90/008,591,
`which was a third party-requested ex parte reexamination of the ’534 patent
`(the “reexamination”) resulting in U.S. Patent Reexamination Certificate
`6,101,534 C1, as a related matter. Paper 7, 3.
`
`B. The ’534 Patent
`
`The ’534 patent relates to an interactive remote computer interface
`system. Ex. 1001, 1:6–7. In general, it describes a system in which local
`data and remote data are combined for local use. Id. at Abstract. The use of
`local data on, for example, a CD-ROM reduces the amount of data required
`to be downloaded in order to render desired data on a display, while the use
`of remote data allows for providing updated data from a centralized source.
`Id. at 6:41–46, 7:4–8.
`
`The system includes a remote server, a local processor, and a data
`storage assembly associated with the local processor. Ex. 1001, 5:20–42.
`The remote server includes primary site data and at least one primary site
`
`3
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`address that includes at least a portion of the primary site data. Id. at 5:20–
`25. The data storage assembly may be a hard drive, but is preferably a
`compact, portable, and interchangeable computer readable medium such as a
`CD-ROM. Id. at 5:40–45. The data storage assembly includes auxiliary site
`data associated with the primary site data and is encoded with a plurality of
`remotely accessible auxiliary site addresses, each of which includes select
`portions of auxiliary site data. Id. at 5:46–53.
`
`Petitioner fairly describes operation of an embodiment of the ’534
`patent as follows:
`a user at a local computer, having access to a CD-
`ROM or
`the
`like
`that has been previously
`distributed and stored at a local computer, is able
`to go online to access primary site information
`(e.g., through a website). See, e.g., [Ex. 1001] at
`Col. 13:43-14:32. When the interaction calls for
`interactive video, downloading is not necessary
`because the system accesses the CD-ROM, and
`initiates utilization of auxiliary data stored thereon.
`See id. The auxiliary data is stored at specific
`auxiliary site addresses on the CD-ROM so that
`the data is readily accessible. See id.
`Pet. 3–4. Lastly, it is clear from the specification that a focus of the ’534
`patent is on application of the invention to a real estate context. See, e.g., id.
`at 7:30–35 (“the present invention is directed towards a system for the
`display of a three dimensional space, generally 10, and preferably, a real
`estate display system 10 structured to provide for the remote exhibition of
`real estate space”). But, the challenged claims, which are discussed below,
`are not limited to such an application.
`
`4
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`C. The Challenged Claims
`
`Petitioner challenges claims 1, 6–9, and 21–24, which are the same
`claims involved in the Sony IPR. Pet. 1; Mot. 2; IPR2015-01364, Paper 8.
`Claims 1, 23, and 24 are independent, and the remaining challenged
`claims—claims 6–9, 21, and 22—ultimately depend from claim 1. Claim 1
`is illustrative and reproduced below.
`1.
`An interactive, remote, computer interface system
`comprising:
`a remote server assembly, said remote server assembly
`including a quantity of primary site data;
`said remote server assembly including at least one
`primary site address, said primary site address including at least
`a portion of said primary site data and being distinct so as to
`identify a location thereof on a computer network;
`a local processor assembly;
`said local processor assembly being coupled in data
`transmitting and receiving communication with said remote
`server assembly;
`said local processor assembly being structured to access
`said primary site address so as to achieve said data transmitting
`and receiving communication with said remote server
`assembly;
`at least one data storage assembly associated with said
`local processor assembly and structured to contain a quantity of
`auxiliary site data thereon, said auxiliary site data being
`associated with said primary site data;
`said data storage assembly including a compact, portable
`and interchangeable computer readable medium;
`said compact, portable and interchangeable computer
`readable medium including a plurality of remotely accessible,
`auxiliary site addresses encoded therein, each of said remotely
`accessible, auxiliary site addresses including select portions of
`5
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`said quantity of auxiliary site data; and
`said remotely accessible, auxiliary site addresses being
`structured to be remotely accessed by said remote server
`assembly so as to initiate utilization of said select portions of
`said quantity of auxiliary site data by said local processor
`assembly in conjunction with said primary site data.
`Ex. 1001, 16:41–17:9.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following as grounds of unpatentability:
`References
`Basis
`Claims Challenged
`Mages (Ex. 1005)1 and
`§ 103(a)3
`1, 6–9, 21, 23, 24
`Batchelor (Ex. 1004)2
`Mages, Batchelor, and Hughes
`(Ex. 1008)4
`Pet. 2. These grounds are the same as those on which trial was instituted in
`the Sony IPR. Pet. 2; Mot. 2; IPR2015-01364, Paper 8.
`
`§ 103(a)
`
`22
`
`Gameloft’s claim construction and unpatentability arguments for these
`grounds are the same as those presented by Sony in the Sony IPR. Mot. 4–
`5; compare Pet. 16–40, with IPR2015-01364, Paper 3, 16–35 and 53–58.
`Gameloft relies on the same declarant, Vijay K. Madisetti, Ph.D., as Sony.
`Dr. Madisetti’s declaration here differs from his declaration in the Sony IPR
`
`
`1 U.S. Patent No. 5,892,825, filed Nov. 25, 1996, issued Apr. 6, 1999.
`2 U.S. Patent No. 5,724,103, filed Nov. 13, 1995, issued Mar. 3, 1998.
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took
`effect on March 18, 2013. Because the application from which the ’534
`patent issued was filed before that date, our citations to 35 U.S.C. §§ 102
`and 103 are to their pre-AIA version.
`4 U.S. Patent No. 5,736,977, filed Apr. 26, 1995, issued Apr. 7, 1998.
`
`6
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`only in that the former “was amended to remove discussion of those grounds
`not instituted in the Sony IPR” (and not presented in Gameloft’s Petition).
`Mot. 5, n.4.
`
`JOINDER
`
`II.
`The Motion, on its face, seeks joinder of this “pending inter partes
`review with the pending inter partes review concerning the same patent
`brought by Petitioner Sony Computer Entertainment America, LLC, Case
`No. IPR2015-01364 (“Sony IPR”), which was instituted on December 15,
`2015 (Paper 8).” Mot. 1. However, this is not a pending inter partes
`review, and we are denying the Petition to institute one.
`
`The statutory sub-section under which Gameloft seeks relief,
`35 U.S.C. § 315(c), does not refer to joining two inter partes reviews to one
`another. Id.; but cf. id. § 315(d) (referring to “consolidation” of a pending
`inter partes review and “another proceeding or matter involving the patent”).
`Section 315(c) refers, rather, to joining a “person” “as a party” to an
`instituted inter partes review. It states the following:
`
`(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.
`35 U.S.C. § 315(c) (emphasis added). Hence, we consider Gameloft’s
`Motion under 35 U.S.C. § 315(c) as seeking joinder of Gameloft as a party
`to the Sony IPR.
`
`7
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`Gameloft Motion’s is timely because it was filed on January 15, 2016,
`one month after our December 15, 2015, institution of the Sony IPR. See 37
`C.F.R. § 42.122 (“Any request for joinder must be filed, as a motion under
`§42.22, no later than one month after the institution date of any inter partes
`review for which joinder is requested.”).
`
`There is no right to joinder. It is relief that we grant or deny in our
`discretion. 35 U.S.C. § 315(c). The statute does, however, require that the
`person to be joined must properly file a petition that warrants the institution
`of an inter partes review under 35 U.S.C. § 314. 35 U.S.C. § 315(c).
`Gameloft has done this; we have already determined that identical
`challenges to the same claims warranted institution in the Sony IPR.
`Accordingly, in our discretion, we may grant joinder of Gameloft as a party
`to the Sony IPR.
`
`Gameloft is represented by the same counsel as Sony. Mot. 8.
`Gameloft “waives the right to additional pages or time in which to file any
`papers and will completely agree to the schedule set forth in the Sony IPR,
`as it now stands or as amended in future.” Id. Also, Gameloft will not seek
`additional time for its counsel (which is also Sony’s counsel) to present oral
`arguments at any hearing that is requested and granted. Id.
`
`Under these circumstances, it is likely that joining Gameloft as a party
`to the Sony IPR will not unduly delay or detrimentally affect the Sony IPR.
`Also, Patent Owner does not oppose joinder. Paper 8, 2. Accordingly, we
`exercise our discretion to join Gameloft as a party to the Sony IPR. The
`Motion, which seeks additional relief not provided under 35 U.S.C. § 315(c)
`
`8
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`(i.e., consolidation of two inter partes reviews, one of which has not been
`instituted), is dismissed as moot.
`
`III. GAMELOFT’S PETITION
`
`As discussed above, Gameloft’s Petition presents the same grounds
`against the same claims on which we instituted the Sony IPR, and it does so
`by making the same arguments and presenting the same evidence.
`Consistent with our December 15, 2015, decision to institute in the Sony
`IPR, there is a reasonable likelihood that Gameloft would prevail with
`respect to at least 1 of the claims challenged in its Petition. Hence, the
`Petition warrants institution of an inter partes review under 35 U.S.C. § 314.
`
`However, there is no right to an inter partes review. See 35 U.S.C.
`§ 314 (governing institution of inter partes reviews but not mandating
`institution under any circumstances). Also, in determining whether to
`institute an inter partes review, we “may take into account whether, and
`reject the petition . . . because, the same or substantially the same prior art or
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d).5
`
`The identical art and arguments have been raised in the Sony IPR, to
`which Gameloft is being joined. Granting the instant Petition and
`conducting a separate proceeding would be a waste of time and resources for
`all involved. Granting the instant Petition and consolidating the resulting
`proceeding with the Sony IPR would complicate the latter proceeding with a
`second set of papers that are wholly cumulative in substance of the papers
`
`5 Although section 325(d) refers only to determinations by “the Director,”
`she has delegated institution authority to the Board. See 37 C.F.R. § 42.4(a).
`
`9
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`already of record in the latter proceeding.
`
`Accordingly, in light of Gameloft joining as a party to the Sony IPR
`and to effect more efficient administration of the patentability challenges, we
`deny the Petition.
`
`IV. ORDER
`
`It is
`
`ORDERED that Gameloft, S.A., is joined as a party, on the petitioner
`side, to Case IPR2015-001364;
`
`FURTHER ORDERED that the Motion for Joinder is dismissed as
`moot;
`
`FURTHER ORDERED that the Petition is denied; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`in Case IPR2015-01364.
`
`10
`
`
`
`IPR2016-00472
`Patent 6,101,534
`
`For Petitioner:
`Eric A. Buresh
`Abran J. Kean
`Mark C. Lang
`Erise IP, P.A.
`Eric.buresh@eriseip.com
`Abran.kean@eriseip.com
`Mark.lang@eriseip.com
`
`For Patent Owner:
`
`Thomas K. Landry
`Adam C. Underwood
`Cuenot, Forsythe & Kim, LLC
`tlandry@careyrodriguez.com
`aunderwood@careyrodriguez.com
`
`
`
`
`
`
`
`11