`
`571-272-7822
`Date Entered: March 7, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`Patent Owner
`____________
`
`Case No. CBM2014-00018
`Patent 8,037,158
`____________
`
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`BRIAN J. McNAMARA, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`
`DECISION DENYING MOTION FOR JOINDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`Case CBM2014-00018
`Patent 8,037,158
`
`
`On October 21, 2013, SAP America, Inc. (“Petitioner”) filed a petition for
`
`covered business method patent review of claims 4-6, 9, and 10 of US Patent No.
`
`8,037,158 (the ’158 Patent) as unpatentable under 35 U.S.C § 103. Petitioner also
`
`moved to join this proceeding with CBM2013-00013 (“Motion For Joinder”).
`
`Paper 1, Ex. 1.
`
`In CBM2013-00013, the Patent Trial and Appeal Board (“the Board”)
`
`instituted a trial on claims 1-3 and 11 of the ’158 Patent as unpatentable under 35
`
`U.S.C. § 101 and 35 U.S.C. § 103, and on claims 1-6 and 11 as unpatentable under
`
`35 U.S.C. § 112(b). CBM2013-00013, Paper 15. In CBM2013-00013, we
`
`declined to institute a trial of claims 4 and 6 based on the prior art cited in that
`
`petition. Id. The petition in CBM2013-00013 did not address claims 9 and 10.
`
`Petitioner argues that joining this proceeding with CBM2013-00013 will
`
`secure the just, speedy, and inexpensive resolution of both proceedings because the
`
`parties are the same, the patent is the same, and claims 4-6 have been addressed in
`
`both proceedings. Motion For Joinder, IV Argument. Patent Owner’s Opposition
`
`to Petitioner’s Motion For Joinder (“Opposition to Joinder Motion”) argues that
`
`joinder is not appropriate because the schedules of the two proceedings are
`
`incompatible, unless the schedule in CBM2013-00013 is extended. Opposition to
`
`Joinder Motion, Paper 11, 3-4.
`
`The present proceeding and CBM2013-00013 are related to IPR2013-00194
`
`and IPR2013-00195, in which the involved patents all share substantially the same
`
`specification. A Patent Owner Response was filed in CBM2013-00013 (Paper 33)
`
`and in IPR2013-00194 (Paper 32) on January 20, 2014. In IPR2013-00195, Patent
`
`Owner filed a patent Owner Response (Paper 24) on January 20, 2014 and a
`
`Corrected Patent Owner Response (Paper 29) on February 5, 2014. Patent Owner
`
`also filed a motion to amend the claims in IPR2013-00195 (Paper 26) on January
`
`
`
`2
`
`
`
`Case CBM2014-00018
`Patent 8,037,158
`
`20, 2013 and a corrected motion to amend the claims (Paper 30) on February 5,
`
`2014. We agree with Patent Owner that the timing of the proceedings makes
`
`joinder impractical.
`
`CBM2014-00018 also cites prior art not under consideration in CBM2013-
`
`00013, IPR2013-00194, or IPR2013-00195. As discussed above, we are aware of
`
`the related proceedings. Our Decision To Institute in this proceeding applies the
`
`same claim constructions as those we applied in CBM2013-0013, IPR2013-00194
`
`and IPR2013-00195. Claims 4, 6, 9, and 10 in this proceeding all depend directly
`
`or indirectly from claims which are the subject of CBM2013-00013. While our
`
`final decision in this proceeding may be informed by our analysis in the related
`
`proceedings, our consideration of additional prior art in this proceeding can
`
`proceed independently.
`
`In consideration of the above, it is ORDERED that Petitioner’s Motion For
`
`Joinder is DENIED.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case CBM2014-00018
`Patent 8,037,158
`
`
`For PETITIONER:
`
`Michael Q. Lee
`mlee-PTAB@skgf.com
`
`Lori A. Gordon
`lgordon-PTAB@skgf.com
`
`For PATENT OWNER:
`
`Bryan Boyle
`bboyle@carrferrell.com
`
`Lawrence B. Goodwin
`LawrenceGoodwinPC@gmail.com
`
`Gerald Dodson
`jdodson@carrferrell.com
`
`
`
`
`
`4
`
`
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