Filed on behalf of Pi-Net International, Inc.
`By: Bryan Boyle
`and Lawrence B. Goodwin
`Carr&Ferrell LLP
`Lawrence B. Goodwin, P.C.
`120 Constitution Drive
`525 East 86”‘ Street, Suite 5H
`Menlo Park, CA 94025 New York, NY 10028
`Tel: (650) 812-3400
`Tel: (212) 988-1076
`Fax: (650) 812-3444
`Fax: (646) 619-4161
`
`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 CBM2014-00018
`
`Patent 8,037,158
`
`PATENT OWNER PI-NET INTERNATIONAL, INC.'S CONDITIONAL
`OPPOSITION TO PETITIONER'S MOTION FOR JOINDER
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`By: Bryan Boyle
`and Lawrence B. Goodwin
`Carr&Ferrell LLP
`Lawrence B. Goodwin, P.C.
`120 Constitution Drive
`525 East 86”‘ Street, Suite 5H
`Menlo Park, CA 94025 New York, NY 10028
`Tel: (650) 812-3400
`Tel: (212) 988-1076
`Fax: (650) 812-3444
`Fax: (646) 619-4161
`
`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 CBM2014-00018
`
`Patent 8,037,158
`
`PATENT OWNER PI-NET INTERNATIONAL, INC.'S CONDITIONAL
`OPPOSITION TO PETITIONER'S MOTION FOR JOINDER
`
`Mail Stop “PA TENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`Patent Owner Pi-Net International, Inc. ("Patent Owner") conditionally opposes
`
`petitioner SAP's ("Petitioner") motion for joinder of the above referenced petition
`
`for covered business method review ("Second Petition”) with the previously
`
`instituted covered business method review (“First Petition”) Case No. CBM 2013-
`
`00013.
`
`I.
`
`Introduction
`
`Patent Owner opposes the motion for joinder because the schedule set forth for the
`
`First Petition is irreconcilably different from the schedule that is reasonably
`
`expected to be set forth for the Second Petition.
`
`In fact, adopting the First Petition
`
`schedule in the for the Second Petition will leave Q time for Patent Owner to
`
`respond to any decision to institute based on the second petition.
`
`Patent Owner, however, would not oppose a reasonable extension of the schedule
`
`for the First Petition (and the IPRs, namely, IPR20l3—00l94 and IPR20l3—00l95)
`
`and Joinder of the second petition therewith, assuming that such extension is
`
`reasonable and would allow appropriate periods of response for Patent Owner.
`
`Petitioner's Statement of Material Facts appears to be correct.
`
`II.
`
`Argument
`
`A.
`
`It Is Not Realistic To Accommodate The Schedule For The
`Second Petition Within The Schedule Of The First Petition
`
`2
`
`
`
`Patent Owner opposes the motion for joinder because the schedule for the First
`
`Petition is irreconcilably different from the schedule that is reasonably expected to
`
`be set for the Second Petition. Patent Owner already has been required to respond
`
`to the Second Petition (filed October 21, 2013) by submitting its Preliminary
`
`Response thereto concurrently herewith — a period shortened from the three months
`
`suggested in 77 Fed. Reg. 48756 at 48757 to one-half that. Despite this contraction
`
`time, adopting the First Petition schedule for the Second Petition would leave no
`
`time for Patent Owner to respond to any decision to institute a review based on the
`
`Second Petition:
`
`Due Date 1 in the First Petition (the response to the petition and any motions
`
`to amend) has been extended, by agreement of the parties, to January 3,
`
`2014.
`
`It is unlikely that the Board would institute any review based on the
`
`Second Petition prior to January, 2014.1 This would leave I_1_O time for Patent
`
`Owner to submit its response to the Decision, and any motions to amend, if
`
`the dates for the Second Petition were shoehorned into the schedule for the
`
`First Petition.
`
`1 Even if it did, it would leave essentially no time, as a practical matter, for Patent
`
`Owner to file its response.
`
`
`
`Patent Owner strenuously opposes joinder of the Second Petition with the first if
`
`the result of such joinder is a schedule that does not provide reasonable and
`
`sufficient time for it to respond to deadlines associated with the Second Petition.
`
`Petitioner, not Patent Owner, submitted the Second Petition, essentially seeking a
`
`second bite at the apple. Patent Owner, a small company with modest resources
`
`relative to those of Petitioner's, is doing its best to respond thereto. It should not be
`
`prejudiced by a procedure which was not at its own choosing, based upon an
`
`artificially shortened schedule.
`
`B.
`
`If The Schedule For The First Petition Is Extended, It May
`Accommodate The Schedule For The Second Petition
`
`A reasonable extension of the First Petition schedule (and those of the IPRs,
`
`namely, IPR20l3-00194 and IPR20l3—00l95), as specifically provided by rule
`
`42.l00(c), may allow for joinder as requested by Petitioner. If the Board grants a
`
`reasonable extension, that allows Patent Owner to respond to deadlines associated
`
`with the Second Petition within reasonable time periods, Patent Owner does not
`
`oppose joinder under such circumstances. Patent Owner also views such joinder,
`
`including the associated IPRs, under appropriate circumstances, as appropriate,
`
`insofar as there are overlapping issues between the petitions.
`
`It is noted that rule 42.100(c) specifically provides for an extension of the overall
`
`schedule of up to six months, “for good cause.” It is hard to imagine a more
`
`
`
`appropriate circumstance, and Patent Owner respectfully requests that it be granted
`
`such accommodation. Patent Owner also notes that Petitioner's counsel, during the
`
`telephone conference of November 4, 2013, indicated that Petitioner was amenable
`
`to, and would not oppose, an extension of the schedules to accommodate joinder.
`
`III. Conclusion
`
`Accordingly, Patent Owner opposes any joinder that will result in unrealistic,
`
`burdensome and unfair time periods in which to respond to the Second Petition.
`
`Patent Owner, however, does not oppose joinder if the schedules for the First
`
`Petitions (and those of the associated IPRS) are extended to allow for reasonable
`
`response periods for the Second Petition.
`
`Respectfully submitted,
`
`LAWRENCE B. GOODWIN, P.C.
`
`Date: December 9, 2013
`525 East 86”" Street, Suite 5H
`New York, NY 10028
`Tel: (212) 988-1076
`
`0nrn
`
`"/h ‘F ‘X”””””" “ ~
`
`Lawrence B. Goodwin
`Registration No. 29642
`
`CARR&FERRELL LLP
`
`120 Constitution Drive
`
`Menlo Park, CA 94025
`650.812.3400
`
`Bryan Boyle
`
`Registration No. 52644
`Attorneys for Patent Owner
`
`
`
`
`
`CERTIFICATION OF SERVICE 37 CFR 42.6 e 42.I05 a
`
`
`
`The undersigned hereby certifies that the above-captioned “Patent Owner Pi-Net
`International, Inc.’s Conditional Opposition to Petitioner’s Motion for Joinder” in
`CBM20l4-00018 was served in its entirety on December 9, 2013, upon the
`following parties via email:
`
`SAP, America, Inc
`Attn: Samir Pandya
`Sr. VP and General Counsel
`3999 West Chester Pike
`
`Newtown Square, PA 19073
`Email: samir.pandya@sap.com
`
`Petitioner ’s correspondence address
`
`Lori A. Gordon and Michael Q. Lee
`STERNE, KESSLER,GOLDSTEIN
`&FOX, P.L.L.C.
`1100 New York Avenue, NW
`
`Washington, DC 20005
`LGORDON-PTA§@skgf.co1n
`MLEE-PTAB_@.skgj_‘.§o:11
`
`Attorneys for Petitioner
`Of record at the USPTO PTAB
`
`CARR & FERRELL, LLP
`
`5-7554
`
`Date: December 9 2013
`
`Bryan Boyle
`
`Attorney for Patent Owner
`
`Registration No. 52644
`
`120 Constitution Drive
`
`Menlo Park, CA 94025
`
`650. 812. 3400
`
`bboyle@carrferrell.com
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