Paper No. 15
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` Entered: March 8, 2017
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`Trials@uspto.gov
`571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE AMERICA, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01671
`Patent 7,415,530 C1
`____________
`
`
`
`Before J. JOHN LEE, JASON J. CHUNG, and SCOTT C. MOORE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Motion for Joinder
`37 C.F.R. § 42.122(b)
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` Entered: March 8, 2017
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`
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`
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE AMERICA, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01671
`Patent 7,415,530 C1
`____________
`
`
`
`Before J. JOHN LEE, JASON J. CHUNG, and SCOTT C. MOORE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01671
`Patent 7,415,530 C1
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`INTRODUCTION
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`On September 6, 2016, Oracle America, Inc. (“Oracle”) filed a
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`Petition (Paper 5, “Pet.”) requesting inter partes review of claims 1–5, 9–12,
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`14, 18, 19, and 24 (“the challenged claims”) of U.S. Patent No. 7,415,530
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`C1 (Ex. 1001, “the ’530 patent”). Concurrently with the Petition, Oracle
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`filed a Motion for Joinder (Paper 2, “Mot.”), requesting that this proceeding
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`be joined with Dell Inc. v. Realtime Data LLC, Case IPR2016-00972 (“972
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`IPR”). Mot. 1. Patent Owner Realtime Data LLC (“Realtime”) filed an
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`Opposition to the Motion for Joinder (Paper 11, “Opp.”) on October 6, 2016.
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`Oracle filed a Reply to the Opposition to the Motion (Paper 12, “Reply”) on
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`November 7, 2016.
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`
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`For the reasons discussed below, we institute an inter partes review of
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`all challenged claims and grant Oracle’s Motion for Joinder.
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`INSTITUTION OF INTER PARTES REVIEW
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`In the 972 IPR, we instituted an inter partes review of claims 1–5, 9–
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`12, 14, 18, 19, and 24 of the ’530 patent as allegedly unpatentable on the
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`following asserted grounds:
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`Challenged Claim(s)
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`Asserted Prior Art
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`1, 9–11, 14, 18
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`Franaszek1 and Osterlund2
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`2–5
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`Franaszek, Osterlund, and Fall3
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`1 U.S. Patent No. 5,870,036, issued Feb. 9, 1999 (972 IPR, Ex. 1004,
`“Franaszek”).
`2 U.S. Patent No. 5,247,646, issued Sept. 21, 1993 (972 IPR, Ex. 1005,
`“Osterlund”).
`3 U.S. Patent No. 5,991,515, filed July 15, 1997, issued Nov. 23, 1999
`(972 IPR, Ex. 1007, “Fall”).
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`2
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`Case IPR2016-01671
`Patent 7,415,530 C1
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`Challenged Claim(s)
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`12
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`19
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`24
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`Asserted Prior Art
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`Franaszek, Osterlund, and Assar4
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`Franaszek, Osterlund, and Crawford5
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`Franaszek, Osterlund, Clark,6 and Rynderman7
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`972 IPR, slip op. at 19–20 (PTAB Nov. 1, 2016) (Paper 24). The Petition in
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`this proceeding challenges the same claims on identical grounds of
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`unpatentability, and relies on the same evidence and arguments as presented
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`in the 972 IPR. Pet. 1; Mot. 2. Oracle represents that the Petition “copies
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`verbatim the challenges set forth in the petition in [the 972 IPR] and relies
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`upon the same evidence, including the same expert declaration.” Pet. 1; see
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`Mot. 2. Realtime did not file a preliminary response and has not presented
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`any arguments regarding the merits of the Petition.
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`
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`For the above reasons, in particular the fact that the present Petition is
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`virtually identical to the petition in the 972 IPR, we determine Oracle has
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`demonstrated sufficiently under 35 U.S.C. § 314 that an inter partes review
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`should be instituted in this proceeding on the same grounds of
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`unpatentability as the grounds on which we instituted inter partes review in
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`the 972 IPR.
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`
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`4 U.S. Patent No. 5,479,638, issued Dec. 26, 1995 (972 IPR, Ex. 1016,
`“Assar”).
`5 U.S. Patent No. 5,771,354, issued June 23, 1998 (972 IPR, Ex. 1009,
`“Crawford”).
`6 U.S. Patent No. 5,319,682, issued June 7, 1994 (972 IPR, Ex. 1008,
`“Clark”).
`7 U.S. Patent No. 5,563,961, issued Oct. 8, 1996 (972 IPR, Ex. 1006,
`“Rynderman”).
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`3
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`Case IPR2016-01671
`Patent 7,415,530 C1
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`MOTION FOR JOINDER
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`An inter partes review may be joined with another inter partes
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`review, subject to certain statutory provisions:
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`(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.
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`35 U.S.C. § 315(c); see also 37 C.F.R. § 42.122. As the moving party,
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`Oracle bears the burden of proving that it is entitled to the requested relief.
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`37 C.F.R. § 42.20(c).
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`
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`As an initial matter, the Motion for Joinder meets the requirements of
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`37 C.F.R. § 42.122(b) because the Motion was filed on September 6, 2016,
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`which is not later than one month after the 972 IPR was instituted on
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`November 1, 2016.
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`Additionally, the present Petition challenges the same claims of the
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`same patent as those under inter partes review in the 972 IPR, and the
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`Petition also asserts the same grounds of unpatentability based on the same
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`prior art and the same evidence, including the same declaration testimony.
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`Mot. 2; compare Pet. 4–6, with 972 IPR, Paper 10, 7–8. The Petition does
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`not assert any other grounds of unpatentability, or present any new evidence
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`not already of record in the 972 IPR. Indeed, the Petition repeats verbatim
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`most of the content of the petition in the 972 IPR. See Pet. 1; Mot. 7–8.
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`
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`Oracle further asserts that granting joinder would not require any
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`alterations to the existing scheduling order in the 972 IPR. Mot. 8–9.
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`Moreover, Oracle represents that it “has agreed to not materially participate
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`Case IPR2016-01671
`Patent 7,415,530 C1
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`in the joined proceedings unless and until the parties to [the 972 IPR] are
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`dismissed from the joined proceedings or elect to transfer control to
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`[Oracle], as may occur in the event of settlement or advanced settlement
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`negotiations.” Id. at 9. As such, Oracle “does not intend to file separate
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`papers or conduct separate cross examinations of any witnesses,” if joined to
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`the 972 IPR. Id. at 10. Oracle also represents that the petitioners in the 972
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`IPR do not oppose joinder of the present proceeding. Id. at 6.
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`According to Oracle, joinder “will promote the efficient determination
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`of validity of the challenged claims of the ’530 patent,” because a final
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`written decision in the 972 IPR potentially could minimize the issues in all
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`of the underlying litigation in which the ’530 patent has been asserted. Id. at
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`6–7. Oracle asserts that Realtime would not be prejudiced because the
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`schedule of the 972 IPR would be unchanged, and Realtime would not take
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`on additional costs or burden because of the overlap between the present
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`Petition and the 972 IPR petition. Id. at 7–9. In addition, Oracle argues that
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`briefing and discovery could be simplified if joinder is granted. Id. at 10.
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`
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`Realtime argues that the fact that the present Petition and the 972 IPR
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`petition are similar is not dispositive. Opp. 1–2. According to Realtime,
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`Oracle failed to demonstrate it is entitled to joinder because it did not
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`explain why it could not have included the arguments and grounds in the
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`present Petition in an earlier petition it filed in IPR2016-00375. Id. at 2–6.
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`In IPR2016-00375, Oracle challenged some, but not all, of the claims
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`challenged in the present Petition based on different prior art references. See
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`Oracle Am., Inc. v. Realtime Data LLC, Case IPR2016-00375, slip op. at 3–
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`4 (PTAB July 1, 2016). The petition in that case was denied, and no inter
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`partes review was instituted. Id. at 12. Realtime asserts that Oracle, thus,
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`already had an opportunity to assert the challenges and evidence advanced in
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`the present Petition but did not, and that allowing Oracle to do so now would
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`improperly grant it a “second bite at the apple.” Opp. 6–7. In addition,
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`Realtime asserts it would be prejudiced by joinder because the one-year
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`deadline for the final determination in an inter partes review may be
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`adjusted in the event of joinder. Id. at 6; see 35 U.S.C. § 316(a)(11).
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`
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`Based on the facts and circumstances discussed above, we determine
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`Oracle has established good cause for joining this proceeding with the 972
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`IPR. Realtime’s arguments are unpersuasive. First, its assertion of
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`prejudice is speculative. Although the Board has the authority to adjust the
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`schedule of a case beyond the one-year deadline mandated in 35 U.S.C.
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`§ 316(a)(11) and 37 C.F.R. § 42.100(c), Realtime does not explain why it
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`believes such an adjustment is necessary or even likely. In fact, the present
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`circumstances indicate such an adjustment is unlikely to be needed given that
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`joinder will not add any new arguments or evidence to the 972 IPR, nor
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`require any modification of its schedule.
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`With respect to Realtime’s argument that Oracle could have raised the
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`arguments and evidence in the present Petition in its earlier petition denied
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`in IPR2016-00375, we have considered that factor but conclude joinder is
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`warranted nonetheless considering the totality of the facts and
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`circumstances. Realtime relies on three non-binding prior decisions of the
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`Board, each of which is distinguishable from the present case. See Opp. 2–
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`3, 5. As Oracle notes (Reply 6–7), two of the cases cited by Realtime
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`involved motions for joinder where the prior proceeding to which joinder
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`was sought had been terminated; thus, joinder could not be granted. See
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`Toyota Motor Corp. v. Am. Vehicular Sci. LLC, Case IPR2015-00262, slip
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`6
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`Case IPR2016-01671
`Patent 7,415,530 C1
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`op. at 4–5 (PTAB Jan. 29, 2015) (Paper 10); Ubisoft, Inc. v. Uniloc USA,
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`Inc., Case IPR2016-00414, slip op. at 5 (PTAB June 2, 2016) (Paper 16).
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`Further, in Toyota, the joinder petition also relied on new evidence not
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`raised in the proceeding to which the petitioner sought joinder. Toyota, Case
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`IPR2015-00262, slip op. at 5. Similarly, in Harmonix Music Sys., Inc. v.
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`Princeton Digital Image Corp., the joinder petition asserted new grounds of
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`unpatentability and new evidence not raised in the proceeding to which
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`joinder was sought, as well as challenging claims for which institution had
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`been denied. Case IPR2015-00271, slip op. at 4–6 (PTAB June 2, 2015)
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`(Paper 15). Significant modifications to the schedule would also have been
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`required, which also weighed against joinder. Id. at 6–7.
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`Although the fact that a petition includes arguments and evidence that
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`reasonably could have been raised in an earlier petition may weigh against
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`joinder, the decision to grant or deny joinder is made “on a case-by-case
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`basis, taking into account the particular facts of each case, substantive and
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`procedural issues, and other considerations.” See Unified Patents, Inc. v.
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`PersonalWeb Techs., LLC, Case IPR2014-00702, slip op. at 3 (PTAB July
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`24, 2014) (Paper 12); Dell Inc. v. Network-1 Sec. Solutions, Inc., Case
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`IPR2013-00385, slip op. at 3 (PTAB July 29, 2013) (Paper 17). Here, we
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`conclude the facts and circumstances discussed above weigh in favor of
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`granting joinder. Joinder of this proceeding with the 972 IPR will not
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`require any delay or modification to the scheduling order already in place for
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`the 972 IPR. We determine that Realtime will not be unduly prejudiced by
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`the joinder of these proceedings, and joining Oracle’s identical challenges to
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`those in the 972 IPR will lead to greater efficiency while reducing the
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`resources necessary from both Realtime and the Board. Consequently,
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`granting the Motion for Joinder under these circumstances would help
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`“secure the just, speedy, and inexpensive resolution” of these proceedings.
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`See 37 C.F.R. § 42.1(b). For the above reasons, we conclude that the
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`Motion for Joinder should be granted.
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`It is
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`ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review in
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`IPR2016-01671 is hereby instituted for claims 1–5, 9–12, 14, 18, 19, and 24
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`of the ’530 patent on the grounds of unpatentability set forth above;
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`FURTHER ORDERED that Oracle’s Motion for Joinder is granted;
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`FURTHER ORDERED that IPR2016-01671 is hereby joined with
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`IPR2016-00972;
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`FURTHER ORDERED that the grounds of unpatentability on which
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`trial was instituted in IPR2016-00972 are unchanged and remains the only
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`grounds on which trial has been instituted;
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`FURTHER ORDERED that the Scheduling Order entered in
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`IPR2016-00972 (Paper 25), as modified by joint stipulation (Paper 29), is
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`unchanged and shall govern the schedule of the joined proceeding;
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`FURTHER ORDERED that Oracle and the petitioners in IPR2016-
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`00972 will file all papers jointly in the joined proceeding as consolidated
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`filings, and will identify each such paper as “Consolidated,” except for
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`papers that involve fewer than all of these parties;
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`FURTHER ORDERED that IPR2016-01671 is terminated under
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`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
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`made in IPR2016-00972;
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`Case IPR2016-01671
`Patent 7,415,530 C1
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2016-00972; and
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`FURTHER ORDERED that the case caption in IPR2016-00972 shall
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`be modified to reflect joinder with this proceeding in accordance with the
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`attached example.
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`10
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`Case IPR2016-01671
`Patent 7,415,530 C1
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`PETITIONER:
`
`Monica Grewal
`monica.grewal@wilmerhale.com
`
`Donald Steinberg
`don.steinberg@wilmerhale.com
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`
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`
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`PATENT OWNER:
`
`Jason Eisenberg
`jasone-ptab@skgf.com
`
`Donald Featherstone
`donf-ptab@skgf.com
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`Trials@uspto.gov
`571.272.7822
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.; RIVERBED TECHNOLOGY, INC.; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; TERADATA
`OPERATIONS, INC.; ECHOSTAR CORPORATION; HUGHES
`NETWORK SYSTEMS, INC.; and ORACLE AMERICA, INC.,
`Petitioners,
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`v.
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`REALTIME DATA LLC,
`Patent Owner.
`____________
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`Case IPR2016-009721
`Patent 7,415,530 C1
`____________
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`1 Case IPR2016-01671 has been joined with this proceeding.
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