Trials@uspto.gov
`571-272-7822
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`Paper 9
`Entered: August 15, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SNAP INC.,
`Petitioner,
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner.
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`____________
`
`IPR2019-00938 (Patent 8,209,634 B2)
`IPR2019-00939 (Patent 8,209,634 B2)
`____________
`
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`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and ROBERT L. KINDER,
`Administrative Patent Judges.
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`QUINN, Administrative Patent Judge.
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`ORDER TO SHOW CAUSE
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5(a), 42.71(a), 35 U.S.C. §§ 314(a), 325(d)
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`IPR2019-00938 (Patent 8,209,634 B2)
`IPR2019-00939 (Patent 8,209,634 B2)
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`Petitioner filed each of the Petitions in the captioned cases on April 5, 2019.
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`Petitioner asserts that these petitions are “a substantive copy of one Facebook’s
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`’634 petitions.” See IPR2019-00938, Paper 2, 2; IPR2019-00939, Paper 2, 1
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`(hereinafter referred to as “Snap’s petitions”). This statement alludes to the fact
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`that a day earlier (April 4, 2019) another Petitioner (e.g., Facebook, Inc. et al.) filed
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`two petitions addressing Patent No. 8,209,634 B2 (“the ’634 patent”). See
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`IPR2019-00924 (copied in IPR2019-00939), and IPR2019-00925 (copied in
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`IPR2019-00938) (hereinafter referred to as “Facebook’s petitions”).
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`Consequently, there are four (4) pending petitions addressing the same claims of
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`the ’634 patent, two filed by Snap (Petitioner here), which are copies of the two
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`petitions filed by Facebook, among other entities. Snap’s petitions are
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`substantively identical to Facebook’s petitions, yet there is no Motion for Joinder
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`or any other paper addressing the duplicative nature of these filings.
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`Under § 314(a), the Director has discretion to deny institution of an inter
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`partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
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`(“[T]he agency’s decision to deny a petition is a matter committed to the Patent
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`Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)
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`(“[Section] 314(a) invests the Director with discretion on the question whether to
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`institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815
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`F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled,
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`to institute an IPR proceeding.”).
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`Our discretionary determination of whether to institute review takes into
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`consideration guidance in the Office Patent Trial Practice Guide, 2018 Update, 83
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`Fed. Reg. 39,989 (August 13, 2018) (“2018 Trial Practice Guide Update”),
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`https://go.usa.gov/xU7GP. In particular, the Trial Practice Guide Update states
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`2
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`IPR2019-00938 (Patent 8,209,634 B2)
`IPR2019-00939 (Patent 8,209,634 B2)
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`[t]here may be other reasons besides the “follow-on” petition
`context where the “effect . . . on the economy, the integrity of the
`patent system, the efficient administration of the Office, and the
`ability of the Office to timely complete proceedings,” 35 U.S.C. §
`316(b), favors denying a petition even though some claims meet
`the threshold standards for institution under 35 U.S.C. §§ 314(a),
`324(a).
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`2018 Trial Practice Guide Update 10–11. We also construe our rules to “secure the
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`just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. §
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`42.1(b); Deeper, UAB v. Vexilar, Inc., Case IPR2018-01310, slip op. at 42 (PTAB
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`Jan. 24, 2019) (Paper 7) (informative).
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`More recently, the Board issued additional guidance concerning parallel
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`petitions challenging the same patent. See 84 Fed. Reg. 33,925 (July 16, 2019)
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`(available at https://www.uspto.gov/TrialPracticeGuide3) (“2019 Trial Practice
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`Guide Update”). The guidance states that “one petition should be sufficient to
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`challenge the claims of a patent in most situations.” Id. at 26. Furthermore, “if a
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`petitioner files two or more petitions challenging the same patent, then the
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`petitioner should, in its petitions or in a separate paper filed with the petitions
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`identify” an enumerated ranking of the petitions and an explanation of the
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`differences, including why the differences are material. Id. at 27. In particular, the
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`Board requests that petitioner explain “why the Board should exercise its discretion
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`to institute additional petitions if it identifies one petition that satisfies petitioner’s
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`burden under 35 U.S.C. § 314(a).” Id.
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`Here, Petitioner not only has filed two petitions challenging the same claims
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`of the ’634 patent, but these two Snap petitions are also substantively identical to
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`the Facebook petitions. The inefficient use of Board resources is evident. If one of
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`Facebook’s petition is granted, absent other reasons for denial of the
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`correspondingly identical Snap petition, the result would be two independent trials,
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`3
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`IPR2019-00938 (Patent 8,209,634 B2)
`IPR2019-00939 (Patent 8,209,634 B2)
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`each with its own set of briefs and supporting evidence, and both challenging the
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`same claims, under the same grounds. The potential for inconsistency across the
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`two proceedings is also evident. Finally, consolidation of cases under 35 U.S.C.
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`§ 315(d) would not alleviate these concerns. And finally, we note that under
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`§ 325(d), the Director may reject the petition “because the same or substantially
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`the same prior art or arguments previously were presented to the Office.”
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`The 2019 Trial Practice Guide Update allows for briefing on the matters of
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`discretionary denial when it pertains to parallel petitions challenging the same
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`patent. Here, we authorize such briefing in connection with this Order to Show
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`Cause. In particular, the panel issues this Order for Petitioner (Snap, Inc.) to show
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`why we should not dismiss Snap’s petitions as duplicative and an inefficient use of
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`the Board’s resources. Alternatively, and to remedy the inefficiencies brought on
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`by these identical petitions, Petitioner may file a motion for joinder in lieu of the
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`brief authorized by this Order. Patent Owner will also have the opportunity to file
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`a responsive brief to Petitioner’s brief or, alternatively, a motion for joinder.
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`It is therefore ORDERED, that Petitioner file a brief showing cause why the
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`Petitions in the captioned proceedings should not be dismissed under 35 U.S.C.
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`§§ 314(a) and 325(d) if Petitioner elects not to file a motion for joinder with the
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`corresponding identical Facebook petition. The brief should not exceed three (3)
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`pages and is due within 5 business days from entry of this Order. A motion for
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`joinder, as stated above, may be filed in lieu of the brief.
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`It is FURTHER ORDERED that Patent Owner is authorized to file a
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`response brief to either Petitioner’s brief or motion for joinder. Patent Owner’s
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`brief should not exceed three (3) pages and is due within 5 business days from
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`Petitioner’s filing. An opposition to the motion for joinder, if Petitioner elects to
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`4
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`IPR2019-00938 (Patent 8,209,634 B2)
`IPR2019-00939 (Patent 8,209,634 B2)
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`file one in lieu of a brief, is authorized and is due also 5 days from the filing of the
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`motion.
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`It is FURTHER ORDERED that no other briefs or motions are authorized.
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`5
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`IPR2019-00938 (Patent 8,209,634 B2)
`IPR2019-00939 (Patent 8,209,634 B2)
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`PETITIONER:
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`Yar Chaikovsky
`yarchaikovsky@paulhastings.com
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`David Okano
`davidokano@paulhastings.com
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`
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`PATENT OWNER:
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`Michael T. Hawkins
`hawkins@fr.com
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`Sam Stake
`samstake@quinnemanuel.com
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`Ognjen Zivojnovic
`ogizivojnovic@quinnemanuel.com
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`James M. Glass
`jimglass@quinnemanuel.com
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`Nicholas Stephens
`nstephens@fr.com
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`Kenneth W. Darby
`kdarby@fr.com
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`Kim Leung
`kim.leung@gazpat.com
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`Craig A. Deutsch
`deutsch@fr.com
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`6
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