UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Unified Patents Inc.
`Petitioner
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`v.
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`Personalized Media Communications, LLC,
`Patent Owner
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`IPR2015-00521
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`Patent 7,801,304
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`MOTION FOR JOINDER PURSUANT TO
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`35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Unified Patents Inc.
`Petitioner
`
`v.
`
`Personalized Media Communications, LLC,
`Patent Owner
`
`IPR2015-00521
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`Patent 7,801,304
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`MOTION FOR JOINDER PURSUANT TO
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`35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b)
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`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Unified Patents Inc., (“Unified” or “Petitioner”) submits concurrently herewith a
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`petition for inter partes review (IPR) of U.S. Patent No. 7,801,304 (the ’304 Patent”) and
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`respectfully requests that its petition be granted. Unified also respectfully moves that this
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`proceeding be joined with the pending IPR concerning the same patent in Amazon.com,
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`Inc. and Amazon Web Services, LLC v. Personalized Media Communications, LLC
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`IPR2014-01532 (the “Amazon IPR”). Joinder is appropriate because it will promote
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`efficient and consistent resolution of the patentability of a single patent and will not
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`prejudice the Amazon IPR parties.
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`The Board has not yet issued an institution decision in the Amazon IPR, and in fact,
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`the Patent Owner has not even filed its preliminary response. This Motion for Joinder is
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`thus not only timely under 37 C.F.R. §§ 42.22 and 42.122(b), but it is early enough to
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`ensure that there will be no impact on the Amazon IPR trial schedule.
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`II. STATEMENT OF MATERIAL FACTS
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`1. The ’304 Patent is the subject of the Amazon IPR (pending).
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`2. The Amazon IPR was filed on September 22, 2014 and was accorded a filing
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`date on October 3, 2014. (IPR2014-01532, Paper No. 3.)
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`3. The Patent Owner Preliminary Response has not yet been filed and is due on
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`January 3, 2014.
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`4. Concurrent herewith, Unified files a petition for inter partes review that is
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`substantively identical to the Amazon IPR petition.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Introduction
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`Unified was founded by intellectual property professionals over concerns with the
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`increasing risk of non-practicing entities (NPEs) asserting poor quality patents against
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`strategic technologies and industries. The founders thus created a first-of-its-kind
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`company whose sole purpose is to deter NPE litigation by protecting technology sectors,
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`like content delivery, the technology at issue in the ’304 patent.
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`Unified performs many NPE-deterrent activities, such as analyzing the technology
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`sector, monitoring patent activity, conducting prior art research and invalidity analysis,
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`providing a range of NPE advisory services to its subscribers, sometimes acquiring
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`patents, and sometimes challenging patents at the United States Patent and Trademark
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`Office (USPTO). (See Ex. 1018, Petitioner’s Voluntary Interrogatory Responses.) By
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`deterring NPE litigation in content delivery, the companies in that industry can devote
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`more resources to technological innovation and product development, rather than
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`defending against NPE patent litigations.
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`The Patent Owner, on the other hand, is a NPE in the content delivery industry.
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`B. The Legal Standard
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`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes review
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`proceedings. The statutory provision governing joinder of inter partes review proceedings
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`is 35 U.S.C. § 315(c), which reads as follows:
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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
`partes review under section 314.
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`In exercising its discretion to grant joinder, the Board considers the impact of
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`substantive and procedural issues on the proceedings, as well as other considerations,
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`while being “mindful that patent trial regulations, including the rules for joinder, must be
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`construed to secure the just, speedy, and inexpensive resolution of every proceeding.” See
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`Fujitsu Semiconductor Ltd. and Fujitsu Semiconductor Am., Inc. v. Zond, LLC, Case
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`IPR2014-00845, Paper No. 14 (Oct. 2, 2014) (“Fujitsu Joinder Order”) at 3. In deciding to
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`join proceedings, the Board has noted that “conducting a single joined proceeding for
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`reviewing [the claims-at-issue of the asserted patent] is more efficient than conducting
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`multiple proceedings, eliminating duplicate filings and discovery. Id. at 4. Joinder of the
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`instant case with the Amazon IPR is thus appropriate.
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`The Board has stated that “[a] motion for joinder should: (1) set forth the reasons
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`why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified.” Enzymotec Ltd. and Enzymotec USA, Inc., Neptune Technologies &
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`Bioresources, Inc., Case IPR2014-00556, Paper No. 19 (Jul. 9, 2014) at 4. Each of these
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`issues is addressed fully below and each leans heavily in favor of granting joinder here.
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`C. Joinder Is Appropriate In The Instant Case
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`Joinder is appropriate here because it will not “unduly complicate or delay” an IPR.
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`SAP America Inc. v. Clouding IP, LLC, Case IPR2014-00306, Paper No. 13 (“SAP Joinder
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`Order”) (May 19, 2014) at 4. In other IPR proceedings, the Board has found that joinder
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`is appropriate when, like here, (1) no new grounds of unpatentability are introduced; (2)
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`the party joining the proceeding agrees to consolidated filings and discovery; (3) joinder
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`will not affect the trial schedule; and (4) joinder will streamline the proceedings, reduce
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`the costs and burdens on the parties, and increase efficiencies for the Board without
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`prejudicing the Patent Owner. See e.g. Fujitsu Joinder Order at 3; Motorola Mobility LLC
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`v. Softview LLC, Case IPR2013-00256 Paper No. 10 (Jun. 20, 2013) (“Motorola Joinder
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`Order”) at 4-10. Joinder of the instant proceeding to the Amazon IPR is appropriate
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`because this motion is timely, Unified’s petition raises no new issues, granting joinder will
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`lead to efficiencies as well as consistent results, and neither party to the Amazon IPR will
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`be prejudiced as Unified agrees to consolidated briefing and discovery (discussed below).
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`This motion is timely, because it is filed several months before statutorily required.
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`Under 37 C.F.R. § 42.122(b) a motion for joinder must be filed “no later than one month
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`after the institution date of any inter partes review for which joinder is requested.” The
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`Amazon IPR petition was filed on September 22, 2014, and the Patent Owner’s
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`Preliminary Response has not yet been filed because it is due on January 3, 2014. The
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`filing of this motion several months before institution of the Amazon IPR ensures that
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`there will be little or no impact on that proceeding.
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`Unified’s IPR Petition is intentionally substantively identical to the corresponding
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`Amazon IPR petition in an effort to avoid duplication of issues before the Board. Because
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`Unified’s Petition is substantively the same as in the Amazon IPR, the case is amendable
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`to consolidated filings. See Motorola Joinder Order at 9. For this reason, and because
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`Unified moves to join the Amazon IPR several months before institution, joinder will not
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`affect the trial schedule nor have virtually any effect on the Amazon IPR.
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`Joinder will also avoid inefficiency and potentially inconsistent results by
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`combining two proceedings into a single, streamlined proceeding. Denying joinder, on the
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`other hand, would result in multiple, wasteful proceedings.
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`If joinder is granted, neither Amazon nor the Patent Owner will be prejudiced.
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`Joinder will reduce the costs and burdens on the parties and save the Board judicial
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`resources because the Board will only have to hear this case once and the Patent Owner
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`will only have to defend it once. By combining the two proceedings into one and
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`consolidating both filings and discovery like Unified proposes below, the interests of the
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`Board as well as all parties will be well served.
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`If, however, joinder is denied, it is Unified that is prejudiced because Unified’s
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`petition likely will be denied as being cumulative since it is substantively identical. In
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`this situation, Amazon may settle the Amazon IPR sometime thereafter without reaching
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`a final written decision, and Unified would then have to re-file its petition at additional
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`cost and wait perhaps an additional year for resolution of the case. During this time,
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`Unified as well as the industry suffer from the continued assertion of the ’304 Patent.
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`This concern is not theoretical, but actual: in IPR2014-00702, Unified filed a motion to
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`join IPR2014-00057 that was denied (see IPR2014-00702, Paper No. 12), its petition was
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`then denied as cumulative (see IPR2014-00702, Paper No. 13), and the parties settled
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`only a few months later (see IPR2014-00057, Paper Nos. 34 and 36). The Board should
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`thus grant this motion.
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`D. The Instant Case Raises No New Grounds of Unpatentability
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`Unified’s petition is substantively identical to the Amazon IPR petition, thus raising
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`no new grounds or issues of any kind. Unified asserts the exact same unpatentability
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`grounds, proposes the exact same claim construction, and relies upon the exact same
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`evidence as in the Amazon IPR, including the exact same Declaration of Michael O. Slinn.
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`See Fujitsu Joinder Order at 4 (finding that the substantive issues would not be affected by
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`joinder where the grounds of unpatentability, claim construction, and declaration were the
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`same as in the initial petition).
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`E. The Amazon IPR’s Trial Schedule Will Not Be Impacted by Joinder
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`Joinder will have no effect on the Amazon IPR trial schedule, thus ensuring that the
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`resulting trial will complete in a timely manner. 35 U.S.C. § 316(a)(11) and associated
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`rule 37 C.F.R. § 42.100(c) provide that IPRs should be completed and the Board’s final
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`decision rendered within one year of institution. Joinder should not affect the Board’s
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`ability to issue its decision within this required one-year timeframe because the instant
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`petition contains the identical grounds sought in the Amazon IPR, Unified agrees to
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`procedural safeguards (discussed below) that ensure speedy resolution, and this motion is
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`filed several months before institution so that this proceeding can easily “catch up” to the
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`Amazon IPR.
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`F. Discovery And Briefing Will Be Simplified
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`Joinder will greatly simplify the briefing and discovery process over dual
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`proceedings because Unified proposes consolidating both filings and discovery, which will
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`result in little, if any, additional work.1 Importantly, these procedural protections allow
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`Amazon to retain control over the joined proceeding. See SAP Joinder Order at 4.
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`Specifically, Unified agrees to the following procedures which have been followed in
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`other joined proceedings (See e.g. Fujitsu Joinder Order at 4-5; Motorola Joinder Order at
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`8-10; SAP Joinder Order at 4):
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`1)
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`Amazon and Unified will file papers, except for motions that do not involve
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`1 If Amazon terminates its participation in the joined proceeding, Unified intends to take
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`over as the sole petitioner, and in that case, Unified would abide by the normal rules
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`governing inter partes review proceedings and no longer follow these special procedures.
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`the other party, as consolidated filings. Amazon will prepare such filings. Unified will
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`file no additional briefing beyond the consolidated filing.
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`2)
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`Amazon will be responsible for selecting an attorney for questioning all
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`witnesses. Unified seeks no changes to the ordinary deposition time limits and believes
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`that no departure is necessary.
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`3)
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`Amazon may present argument before Unified at any oral argument.
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`Furthermore, Unified will rely upon Amazon’s expert, and will not offer additional
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`expert testimony unless Amazon terminates its involvement in the joined proceeding.
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`These procedural safeguards minimize any complication or delay and will result in a
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`speedy trial with little or no impact on the Amazon IPR parties or the Board.
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`G. The Board Should Not Exercise its Discretion to Deny Joinder
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`Although the Board may exercise its discretion to deny joinder, it should not do so
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`here. When exercising its discretion, [t]he Board considers the impact of both substantive
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`issues and procedural matters on the proceedings. Fujitsu Joinder Order at 3. In cases
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`where the petitions are substantively the same and there is no undue burden resulting from
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`additional deposition testimony, as is the case here, the Board has found that joinder is
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`warranted. See e.g. Fujitsu Joinder Order at 4-5, Motorola Joinder Order at 8-10.
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`Additionally, joinder is appropriate when, as here, it will “promote efficiency by avoiding
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`duplicate reviews, consolidating issues, and avoiding redundancy.” See SAP Joinder
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`Order at 3.
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`Further, the legislative history shows a strong preference for joining two
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`proceedings with identical petitions. See 157 CONG. REC. S1376 (daily ed. Mar. 8,
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`2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be allowed as of
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`right – if an inter partes review is instituted on the basis of a petition, for example, a party
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`that files an identical petition will be joined to that proceeding, and thus allowed to file its
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`own briefs and make its own arguments.”).
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`Although the Patent Owner may try to challenge Unified’s representation as the real
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`party in interest (RPII) in a hollow attempt at providing a reason why joinder should not
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`be granted, such a challenge is baseless and will ultimately fail. Unified has filed verified
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`interrogatory answers herewith (Ex. 1018) that address all the key factors in the RPII
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`determination. These voluntary interrogatory answers show that no entity other than
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`Unified exercised any control or could exercise any control over this proceeding and that
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`no other party funded this proceeding or even had prior knowledge of this proceeding.
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`Thus, Unified is the only RPII to this proceeding, and the Patent Owner cannot show
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`otherwise.
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`If, however, the Patent Owner seeks additional discovery beyond Unified’s
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`voluntary interrogatory responses, it would have to be in “possession of some facts
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`tending to indicate, beyond mere speculation, that [a non-party] is a real party-in-interest.”
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`Motorola Joinder Order at 5-7. The Patent Owner cannot do so here. Unified’s voluntary
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`interrogatory responses show that there are no facts tending to indicate that any party other
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`than Unified is a RPII. Nevertheless, if the Board were to grant additional discovery on
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`RPII, the additional discovery could easily be accommodated pre-institution, given how
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`early this motion is filed. Moreover, even if the Board authorized additional discovery
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`during trial, such could easily be accommodated without any change to the Amazon IPR
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`trial schedule. Accordingly, the RPII issue should not be used by this Board as a reason
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`for denying joinder.
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`IV. CONCLUSION
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`For the foregoing reasons, Unified respectfully requests that its Petition for Inter
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`Partes Review of U.S. Patent No. 7,801,304 be instituted and that this proceeding be
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`joined with Amazon.com, Inc. and Amazon Web Services, LLC v. Personalized Media
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`Communications, LLC, Case IPR2014-01532.
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`Although Unified believes that no fee is required for this Motion, the Commissioner
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`is hereby authorized to charge any additional fees which may be required to Deposit
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`Account No. 15-0030.
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`Dated: December 31, 2014
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`Customer Number
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`Tel. (703) 413-2707
`Fax. (703) 413-2220
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`Respectfully submitted,
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`OBLON SPIVAK
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`/Michael L. Kiklis/
`Michael L. Kiklis
`Reg. No. 38,939
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`10
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b) on
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`the Patent Owner by USPS Express Mail of a copy of this Motion for Joinder at the
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`correspondence address of record for the ’304 patent:
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`Goodwin Procter LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001
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` courtesy copy of the foregoing Motion for Joinder has also been served via USPS
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` A
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`Express Mail on Patent Owner’s counsel in the co-pending litigation:
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`Brian E. Farnan
`Farnan LLP
`919 North Market Street
`12th Floor
`Wilmington, DE 19801
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`By:
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`/Michael L. Kiklis/
`Michael L. Kiklis
`Reg. No. 38,939
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`11
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`Dated: December 31, 2014
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