throbber
Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 42
`
` Entered: March 7, 2017
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE AMERICA, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`____________
`
`
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`

`

`
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`
`
`
`INTRODUCTION
`On September 6, 2016, Oracle America, Inc. (“Oracle”) filed a
`
`Petition (Paper 5, “Pet.”) requesting inter partes review of claims 1, 2, 4–6,
`9, 11, 21, 22, 24, and 25 (“the challenged claims”) of U.S. Patent No.
`9,116,908 B2 (Ex. 1001, “the ’908 patent”). Concurrently with the Petition,
`Oracle filed a Motion for Joinder (Paper 2, “Mot.”), requesting that this
`proceeding be joined with Dell, Inc. v. Realtime Data LLC d/b/a IXO, Case
`IPR2016-01002 (“1002 IPR”). Mot. 1. Patent Owner Realtime Data LLC
`d/b/a IXO (“Realtime”) filed an Opposition to the Motion for Joinder
`(Paper 9, “Opp.”) on October 6, 2016. Oracle filed a Reply to the
`Opposition to the Motion (Paper 10, “Reply”) on November 7, 2016.
`For the reasons discussed below, we institute an inter partes review of
`
`all of the challenged claims and grant Oracle’s Motion for Joinder.
`
`
`INSTITUTION OF INTER PARTES REVIEW
`In the 1002 IPR, we instituted an inter partes review of claims 1, 2, 4–
`
`6, 9, 11, 21, 22, 24, and 25 of the ’908 patent as allegedly unpatentable on
`the following asserted grounds1:
`References
`Franaszek2 and Osterlund3
`
`Basis
`§ 103(a)
`
`Claims Challenged
`1, 9, 11, 21, 22, 24, and
`25
`
`
`1 Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat.
`284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16, 2013.
`The ’812 patent was issued prior to the effective date of the AIA. Thus, we
`apply the pre-AIA version of § 103.
`2 U.S. Patent No. 5,870,036, filed February 24, 1995, issued Feb. 9, 1999
`(Ex. 1004, “Franaszek”).
`3 U.S. Patent No. 5,247,646, filed July 22, 1991, issued Sept. 21, 1993 (Ex.
`1005, “Osterlund”).
`
`2
`
`

`

`
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`
`
`
`References
`Franaszek, Osterlund, and
`Fall4
`
`Basis
`§ 103(a)
`
`Claims Challenged
`2, 4, 5, and 6
`
`
`1002 IPR, slip op. at 16–17 (PTAB Nov. 4, 2016) (Paper 25). The Petition
`in this proceeding challenges the same claims on identical grounds of
`unpatentability, and relies on the same evidence and arguments as presented
`in the 1002 IPR. Pet. 1; Mot. 2. Oracle represents that the Petition “copies
`verbatim the challenges set forth in the petition in [the 1002 IPR] and relies
`upon the same evidence, including the same expert declaration.” Pet. 1; see
`Mot. 2. Realtime did not file a preliminary response and has not presented
`any arguments regarding the merits of the Petition.
`
`For the above reasons, in particular the fact that the present Petition
`virtually is identical to the petition in the 1002 IPR, we determine Oracle has
`demonstrated sufficiently under 35 U.S.C. § 314 that an inter partes review
`should be instituted in this proceeding on the same grounds of
`unpatentability as the grounds on which we instituted inter partes review in
`the 1002 IPR.
`
`
`MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`
`review, subject to certain statutory provisions:
`(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
`
`
`4 U.S. Patent No. 5,991,515, filed July 15, 1997, issued Nov. 23, 1999
`(Ex. 1006, “Fall”).
`
`3
`
`

`

`
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`
`
`
`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.
`
`35 U.S.C. § 315(c); see 37 C.F.R. § 42.122. As the moving party, Oracle
`bears the burden of proving that it is entitled to the requested relief. 37
`C.F.R. § 42.20(c).
`
`As an initial matter, the Motion for Joinder meets the requirements of
`37 C.F.R. § 42.122(b) because the Motion was filed on September 6, 2016,
`which is not later than one month after the 1002 IPR was instituted on
`November 4, 2016.
`
`Additionally, the present Petition challenges the same claims of the
`same patent as those under inter partes review in the 1002 IPR, and the
`Petition also asserts the same grounds of unpatentability based on the same
`prior art and the same evidence, including the same declaration testimony.
`Mot. 2; compare Pet. 5–7, with 1002 IPR, Paper 5, 5–7. The Petition does
`not assert any other grounds of unpatentability, or present any new evidence
`not already of record in the 1002 IPR. Mot. 7–8. Indeed, the Petition
`repeats verbatim most of the content of the petition in the 1002 IPR. See
`Pet. 1; Mot. 7–8.
`
`Oracle further asserts that granting joinder would not require any
`alterations to the existing scheduling order in the 1002 IPR. Mot. 8–9.
`Moreover, Oracle represents that it “has agreed to not materially participate
`in the joined proceedings unless and until the parties to [the 1002 IPR] are
`dismissed from the joined proceedings or elect to transfer control to
`[Oracle], as may occur in the event of settlement or advanced settlement
`negotiations.” Id. As such, Oracle “does not intend to file separate papers
`
`4
`
`

`

`
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`
`
`or conduct separate cross examinations of any witnesses,” if joined to the
`1002 IPR. Id. at 10. Oracle also represents that the petitioners in the 1002
`IPR do not oppose joinder of the present proceeding. Id. at 6.
`
`According to Oracle, joinder “will promote the efficient determination
`of validity of the challenged claims of the ’908 patent,” because a final
`written decision in the 1002 IPR potentially could minimize the issues in all
`of the underlying litigation in which the ’908 patent has been asserted. Id.
`Oracle asserts that Realtime would not be prejudiced because the schedule of
`the 1002 IPR would be unchanged, and Realtime would not take on
`additional costs or burden because of the overlap between the present
`Petition and the 1002 IPR petition. Id. at 8. In addition, Oracle argues that
`briefing and discovery could be simplified if joinder is granted. Id. at 9–10.
`
`Realtime argues that the fact that the present Petition and the 1002
`IPR petition are similar is not dispositive. Opp. 1–2. According to
`Realtime, Oracle failed to demonstrate it is entitled to joinder because it did
`not explain why it could not have included the arguments and grounds in the
`present Petition in an earlier petition it filed in IPR2016-00377. Id. at 2–5.
`In IPR2016-00377, Oracle challenged all of the claims challenged in the
`present Petition based on different prior art references. See Oracle Am., Inc.
`v. Realtime Data LLC, Case IPR2016-00377, slip op. at 4–5 (PTAB July 1,
`2016). The petition in that case was denied, and no inter partes review was
`instituted. Id. at 15. Realtime asserts that Oracle, thus, already had an
`opportunity to assert the challenges and evidence advanced in the present
`Petition but did not, and that allowing Oracle to do so now would
`improperly grant it a “second bite at the apple.” Opp. 6–7. In addition,
`Realtime asserts it would be prejudiced by joinder because the one-year
`
`5
`
`

`

`
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`
`
`deadline for the final determination in an inter partes review may be
`adjusted in the event of joinder. Id. at 6; see 35 U.S.C. § 316(a)(11).
`
`Based on the facts and circumstances discussed above, we determine
`Oracle has established good cause for joining this proceeding with the 1002
`IPR. Realtime’s arguments are unpersuasive. First, its assertion of
`prejudice is speculative. Although the Board has the authority to adjust the
`schedule of a case beyond the one-year deadline mandated in 35 U.S.C.
`§ 316(a)(11) and 37 C.F.R. § 42.100(c), Realtime does not explain why it
`believes such an adjustment is necessary or even likely. In fact, the present
`circumstances indicate such an adjustment is unlikely to be needed given that
`joinder will not add any new arguments or evidence to the 1002 IPR, nor
`require any modification of its schedule.
`
`With respect to Realtime’s argument that Oracle could have raised the
`arguments and evidence in the present Petition in its earlier petition denied
`in IPR2016-00377, we have considered that factor but conclude joinder is
`warranted nonetheless considering the totality of the facts and
`circumstances. Realtime relies on three non-binding prior decisions of the
`Board, each of which is distinguishable from the present case. See Opp. 2–
`3, 5. As Oracle notes (Reply 6–7), two of the cases cited by Realtime
`involved motions for joinder where the prior proceeding to which joinder
`was sought had been terminated; thus, joinder could not be granted. See
`Toyota Motor Corp. v. Am. Vehicular Sci. LLC, Case IPR2015-00262, slip
`op. at 4–5 (PTAB Jan. 29, 2015) (Paper 10); Ubisoft, Inc. v. Uniloc USA,
`Inc., Case IPR2016-00414, slip op. at 5 (PTAB June 2, 2016) (Paper 16).
`Furthermore, in Toyota, the joinder petition also relied on new evidence not
`raised in the proceeding to which the petitioner sought joinder. Toyota, Case
`
`6
`
`

`

`
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`
`
`IPR2015-00262, slip op. at 5. Similarly, in Harmonix Music Sys., Inc. v.
`Princeton Digital Image Corp., the joinder petition asserted new grounds of
`unpatentability and new evidence not raised in the proceeding to which
`joinder was sought, as well as challenging claims for which institution had
`been denied. Case IPR2015-00271, slip op. at 4–6 (PTAB June 2, 2015)
`(Paper 15). Significant modifications to the schedule would also have been
`required, which also weighed against joinder. Id. at 6–7.
`
`Although the fact that a petition includes arguments and evidence that
`reasonably could have been raised in an earlier petition may weigh against
`joinder, the decision to grant or deny joinder is made “on a case-by-case
`basis, taking into account the particular facts of each case, substantive and
`procedural issues, and other considerations.” See Unified Patents, Inc. v.
`PersonalWeb Techs., LLC, Case IPR2014-00702, slip op. at 3 (PTAB July
`24, 2014) (Paper 12); Dell Inc. v. Network-1 Sec. Solutions, Inc., Case
`IPR2013-00385, slip op. at 3 (PTAB July 29, 2013) (Paper 17). Here, we
`conclude the facts and circumstances discussed above weigh in favor of
`granting joinder. Joinder of this proceeding with the 1002 IPR will not
`require any delay or modification to the scheduling order already in place for
`the 1002 IPR. We determine that Realtime will not be prejudiced unduly by
`the joinder of these proceedings, and joining Oracle’s identical challenges to
`those in the 1002 IPR will lead to greater efficiency while reducing the
`resources necessary from both Realtime and the Board. Consequently,
`granting the Motion for Joinder under these circumstances would help
`“secure the just, speedy, and inexpensive resolution” of these proceedings.
`See 37 C.F.R. § 42.1(b). For the above reasons, we conclude that the
`Motion for Joinder should be granted.
`
`7
`
`

`

`
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`
`
`
`
`ORDER
`
`It is
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review in
`
`IPR2016-01672 is hereby instituted for claims 1, 2, 4–6, 9, 11, 21, 22, 24,
`and 25 of the ’908 patent on the grounds of unpatentability set forth above;
`FURTHER ORDERED that Oracle’s Motion for Joinder is granted;
`
`
`FURTHER ORDERED that IPR2016-01672 is hereby joined with
`IPR2016-01002;
`
`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2016-01002 are unchanged and remains the only
`grounds on which trial has been instituted;
`
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2016-01002 (Paper 26), as modified by joint stipulation (Paper 30), is
`unchanged and shall govern the schedule of the joined proceeding;
`
`FURTHER ORDERED that Oracle and the petitioners in IPR2016-
`01002 will file all papers jointly in the joined proceeding as consolidated
`filings, and will identify each such paper as “Consolidated,” except for
`papers that involve fewer than all of these parties;
`
`FURTHER ORDERED that IPR2016-01672 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`made in IPR2016-01002;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-01002; and
`
`8
`
`

`

`
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`
`
`FURTHER ORDERED that the case caption in IPR2016-01002 shall
`
`be modified to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`9
`
`

`

`
`
`Case IPR2016-01672
`Patent 9,116,908 B2
`
`
`PETITIONER:
`
`Monica Grewal
`Donald Steinberg
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`don.steinberg@wilmerhale.com
`
`
`PATENT OWNER:
`
`Jason D. Eisenberg
`Donald J. Featherstone
`Robert Greene Sterne
`Joseph E. Mutschelknaus
`Jay L. Bird
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-ptab@skgf.com
`donf-ptab@skgf.com
`rsterne-ptab@skgf.com
`jmutsche-ptab@skgf.com
`jbird-ptab@skgf.com
`
`10
`
`

`

`
`
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.; RIVERBED TECHNOLOGY, INC.; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; TERADATA
`OPERATIONS, INC.; HUGHES NETWORK SYSTEMS, INC.; and
`ORACLE AMERICA, INC.,
`Petitioners,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2016-010021
`Patent 9,116,908 B2
`____________
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`1 Case IPR2016-01672 has been joined with this proceeding.
`
`
`
`

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