Trials@uspto.gov
`571-272-7822
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` Paper 11
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` Entered: October 17, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`v.
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00938
`Patent 8,209,634 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`35 U.S.C. § 314
`37 C.F.R. § 42.122(b)
`
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`571-272-7822
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` Paper 11
`
`
`
` Entered: October 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`v.
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00938
`Patent 8,209,634 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`35 U.S.C. § 314
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2019-00938
`Patent 8,209,634 B2
`
`
`INTRODUCTION
`I.
`Snap Inc. (“Petitioner”) filed a Petition requesting inter partes review
`of claims 1, 4−7, 10−13, and 16−18 of U.S. Patent No. 8,209,634 B2
`(Ex. 1001, “the ’634 patent”). Paper 2 (“Pet.”). Petitioner also filed a
`Motion for Joinder seeking joinder of this proceeding with Facebook, Inc. v.
`Blackberry Limited, Case No. IPR2019-00925 (the “Facebook IPR”). Paper
`10 (“Mot.”). 1 Blackberry Limited (“Patent Owner”), filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”). Patent Owner did not file an
`opposition to the Motion for Joinder. For the reasons that follow, we
`institute inter partes review, and grant Petitioner’s Motion for Joinder.
`
`INSTITUTION OF INTER PARTES REVIEW
`II.
`We instituted inter partes review in IPR2019-00925 on all challenged
`claims and on all the asserted grounds of unpatentability (Facebook IPR,
`Paper 15 (Decision on Institution)). The Petition in this proceeding
`challenges the same claims and asserts the same grounds as those we
`instituted in the Facebook IPR. Pet. 4. Petitioner also presents testimony
`from the same declarant relied on in the Facebook IPR. Ex. 1102
`(Declaration of Sandeep Chatterjee, Ph.D.).
`
`In view of the identicalness of the issues in the instant Petition and in
`
`
`1 The Board issued an Order to Show Cause (Paper 9) giving Petitioner the
`opportunity to file a Motion for Joinder.
`2
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`IPR2019-00938
`Patent 8,209,634 B2
`
`the Facebook IPR, the already considered arguments from Patent Owner
`proffered in the Facebook IPR, and for the same reasons stated in our
`Decision on Institution in the Facebook IPR, we institute inter partes review
`in this proceeding on the grounds presented in the Petition.
`
`III. GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`
`§ 315(c):
`(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.
`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 See Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip
`op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`Petitioner has filed a timely Motion in accordance with 35 U.S.C.
`§ 315(c). Petitioner also has met its burden of showing that joinder is
`appropriate. For instance, the Petition here is substantively identical to the
`
`3
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`IPR2019-00938
`Patent 8,209,634 B2
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`petition in the Facebook IPR. Mot. 4−5. The evidence also is identical,
`including the reliance on the same declaration of Dr. Chatterjee. Id.
`Petitioner further has shown that the trial schedule will not be affected
`by joinder. Mot. 5−6. No changes in the schedule are anticipated or
`necessary, and the limited participation, if at all, of Petitioner will not impact
`the timeline of the ongoing trial. Id. Petitioner has agreed to an
`“understudy” role, which will simplify matters in the ongoing Facebook IPR
`and will be an efficient use of resources. Id. at 6−7.
`
`IV. ORDER
`In view of the foregoing, it is
`
`ORDERED that IPR2019-00938 is hereby instituted on all challenged
`
`claims and asserted grounds:
`Claims
`Challenged
`1, 4, 5, 7, 10, 11,
`13, 16, and 17
`
`References
`Ording, Abiko, Crumlish, and
`Dvorak
`Ording, Abiko, Crumlish,
`Dvorak, and McPherson
`Ording, Abiko, Crumlish,
`Dvorak, McPherson, and Strom
`Ording, Canfield, Schwartz,
`McPherson, and Strom
`
`Statutory Basis
`
`§ 103(a)
`
`6, 12, and 18
`
`1, 4, 5, 7, 10, 11,
`13, 16, and 17
`
`6, 12, and 18
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
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`
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`4
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`IPR2019-00938
`Patent 8,209,634 B2
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2019-0925 is granted;
`
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2019-00925 and schedule changes agreed-to by the parties in IPR2019-
`00925 shall govern the schedule of the joined proceeding;
`
`FURTHER ORDERED that, throughout the joined proceeding, all
`filings in IPR2019-00925 will be consolidated and no filing by Snap Inc.
`alone will be allowed without prior authorization by the Board;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2019-00925;
`FURTHER ORDERED that the case caption in IPR2019-00925, from
`now on, shall reflect joinder with this proceeding in accordance with the
`attached example.
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`5
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`IPR2019-00938
`Patent 8,209,634 B2
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`For PETITIONER:
`
`Yar Chaikovsky
`Chad Peterman
`David Okano
`PAUL HASTINGS LLP
`yarchaikovsky@paulhastings.com
`davidokano@paulhastings.com
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`For PATENT OWNER:
`
`Michael T. Hawkins
`Nicholas Stephens
`Kenneth W. Darby
`Kim Leung
`Craig A. Deutsch
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`nstephens@fr.com
`kdarby@fr.com
`kim.leung@gazpat.com
`deutsch@fr.com
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`6
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`IPR2019-00938
`Patent 8,209,634 B2
`
`Sam Stake
`Ognjen Zivojnovic
`James M. Glass
`QUINN EMANUEL URQUHART, & SULLIVAN, LLP
`samstake@quinnemanuel.com
`ogizivojnovic@quinnemanuel.com
`jimglass@quinnemanuel.com
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`7
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`IPR2019-00938
`Patent 8,209,634 B2
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`Example of Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC, AND WHATSAPP INC.,
`Petitioner,
`v.
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-009252
`Patent 8,209,634 B2
`____________
`
`
`
`
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`
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`2 Snap Inc. filed a petition and a motion for joinder in IPR2019-00938, both
`of which have been granted. Therefore Snap Inc. has been joined as a
`petitioner.
`
`8
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