Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 13
`Filed: February 15, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GREAT WEST CASUALTY COMPANY; BITCO GENERAL
`INSURANCE CORPORATION; and BITCO NATIONAL
`INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`____________
`
`Case IPR2016-01534
`Patent 7,516,177 B2
`____________
`
`
`
`Before MICHAEL W. KIM, PETER P. CHEN, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 13
`Filed: February 15, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GREAT WEST CASUALTY COMPANY; BITCO GENERAL
`INSURANCE CORPORATION; and BITCO NATIONAL
`INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`____________
`
`Case IPR2016-01534
`Patent 7,516,177 B2
`____________
`
`
`
`Before MICHAEL W. KIM, PETER P. CHEN, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108(a)
`
`
`
`
`
`
`
`IPR2016-01534
`Patent 7,516,177 B2
`
`
`I. INTRODUCTION
`
`A.
`
`Background
`
`On August 12, 2016, Great West Casualty Company, BITCO General
`
`Insurance Corporation, and BITCO National Insurance Company
`
`(collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`
`inter partes review of claims 11–20 of U.S. Patent No. 7,516,177 B2
`
`(Ex. 1001, “the ’177 patent”), along with a Motion for Joinder (Paper 2;
`
`“Mot.”). Intellectual Ventures II LLC (“Patent Owner”) filed an Opposition
`
`to Motion for Joinder on September 12, 2016 (Paper 6; “Opp.”), and a
`
`Preliminary Response (Paper 8, “Prelim. Resp.”) on November 18, 2016.
`
`On January 24, 2017, Patent Owner’s Brief on Estoppel (Paper 11; “PO
`
`Brief”) and Petitioners’ Brief Regarding the Recent Final Written Decision
`
`(Paper 12; “Pet. Brief”) were filed by the respective parties.
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108(a). In the circumstances of this case, we
`
`decline to exercise our discretion, and do not institute inter partes review on
`
`any of claims 11–20 of the ’177 patent on any ground. Petitioner’s Motion
`
`for Joinder is denied.
`
`B.
`
`Related Matters
`
`Petitioner and Patent Owner identify the following district court
`
`proceedings concerning the ’177 patent: Intellectual Ventures I LLC et al. v.
`
`HCC Ins. Holdings, Inc. et al., Civ. No. 6-15-cv-00660 (E.D. Tex.);
`
`Intellectual Ventures II LLC v. BITCO Gen. Ins. Corp. et al., Civ. No. 6-15-
`
`cv-00059 (E.D. Tex.); Intellectual Ventures II LLC v. Great W. Cas. Co.,
`
`Civ. No. 6-15-cv-00060 (E.D. Tex.); and Intellectual Ventures II LLC v.
`
`Kemper Corp., et al., 6:16-cv-00081-JRG (E.D. Tex.). Pet. 1–2; Paper 6, 1.
`
`2
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`IPR2016-01534
`Patent 7,516,177 B2
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`Petitioner and Patent Owner identify also the following requests for review
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`of the ’177 patent: IPR2015-01706 (same parties; claims 11, 12, and 16–20
`
`determined to be unpatentable); IPR2015-01707 (same parties; claims 11–13
`
`and 15–20 determined to be unpatentable); CBM2015-00171 (same parties;
`
`institution denied); IPR2016-00453 (same parties; institution denied); and
`
`IPR2016-01434 (different petitioner; instituted on claims 11–20). Pet. 3;
`
`Paper 6, 1.
`
`C.
`
`The ’177 patent
`
`The ’177 patent, titled, “Apparatus for Distributing Content Objects to a
`
`Personalized Access Point of a User over a Network-based Environment and
`
`Method,” discloses the following under the heading “Technical Field”:
`
`This invention pertains to electronic commerce and
`business. More particularly, the present invention relates to
`aggregating, enhancing, and distributing content objects with
`customers over a network-based environment such as via the
`Internet or some other form of interactive network.
`
`Ex. 1001, [54], 1:22–26. The ’177 patent asserts that the storage and
`
`retrieval of information has evolved from storing and retrieving information
`
`in textbooks and libraries, to storing and retrieving information from online
`
`networks such as the Internet. Ex. 1001, 1:30–33. According to the ’177
`
`patent, while such advances have led to a significant increase in information
`
`available to users, the users now have the problem of being overwhelmed by
`
`the amount of information, resulting in a failure to find specific information
`
`or losing track of the information that had already been found. Ex. 1001,
`
`1:33–46. Thus, the ’177 patent asserts that there is a need to provide
`
`improvements in the way demand for information is identified, content is
`
`3
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`
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`IPR2016-01534
`Patent 7,516,177 B2
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`generated in response to a defined demand, and the way in which users
`
`access desired information. Ex. 1001, 2:23–26.
`
`D.
`
`Illustrative Claim
`
`Petitioner challenges claims 11–20 of the ’177 patent. Of those,
`
`claims 11 and 16 are the only independent claims. Independent claim 11 is
`
`illustrative of the challenged claims and is reproduced below:
`
`11. An apparatus for distributing content through one or
`more distributed information access points to a centralized access
`point of a user, comprising:
`
`at least one server operative to store one or more of: a)
`content, b) links to content, c) information about content, and d)
`information about users including information about which
`content a user has chosen;
`
`a centralized access point of a user accessible via a
`communications link and operative to provide the user with
`access to content chosen by or for the user;
`
`at least one distributed information access point accessible
`via a communications link and operative to implement one or
`more of: a) list one or more content objects, b) allow a user to
`choose content for addition to their centralized access point, and
`c) provide the user with logon access to their centralized access
`point; and
`
`an administrative interface in communication with the
`server and operative to create groupings of content into one or
`more distributed information access points;
`
`wherein a user is enabled with the capability to log on to
`their centralized access point from one or more distributed
`information access point( s) and access content chosen from one
`or more distributed information access point(s).
`
`4
`
`
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`IPR2016-01534
`Patent 7,516,177 B2
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`E.
`
`Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 11–20 of the ’177 patent as being obvious
`
`on the following grounds (Pet. 6).
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Robinson1 and Bezos2
`
`§ 103(a) 11–20
`
`Robinson, Bezos, and Coates3
`
`§ 103(a) 13–15
`
`Robinson, Bezos, and Excite4
`
`§ 103(a) 13, 15
`
`II. ANALYSIS
`
`A. Discretionary Non-Institution
`
`1.
`
`Procedural Background
`
`The instant Petition is the fifth petition filed by Petitioner challenging
`
`claims 11–20 of the ’177 patent. Three of the other four petitions (IPR2015-
`
`01706, IPR2015-01707, CBM2015-00171) were filed on August 12, 2015,
`
`and the fourth (IPR2016-00453) was filed on January 11, 2016. In
`
`IPR2015-01706 and IPR2015-01707 (“prior completed proceedings”), the
`
`only two of the four petitions for which trial was instituted, Patent Owner’s
`
`
`1 CHERI ROBINSON, EARL JACKSON, JR., AND SCOTT DAVIS, OFFICIAL EXCITE
`INTERNET YELLOW PAGES (IDG Books Worldwide, Inc., Nov. 13, 1998)
`(Ex. 1004).
`2 U.S. Patent No. 6,963,840 to Bezos et al. (issued Apr. 9, 1999) (Ex. 1005).
`3 James Coates, Excite.com In Synch With Personal Preferences of Users,
`CHI. TRIB. (Sept. 5, 1999) (Ex. 1006).
`4 Add Your Site to Excite’s Database, EXCITE
`http://web.archive.org/web/19990117085806/http://excite.com/Info/listing.ht
`ml (Jan. 17, 1999) (Ex. 1007).
`
`5
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`IPR2016-01534
`Patent 7,516,177 B2
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`Response was filed on April 29, 2016, and Petitioner’s Reply was filed on
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`July 20, 2016. The petitions in CBM2015-00171 (Paper 10) and IPR2016-
`
`00453 (Paper 12) were denied.
`
`On July 14, 2016, Oracle America Inc., Oracle Corporation, and HCC
`
`Insurance Holdings, Inc. (“other petitioners”) filed a petition challenging
`
`claims 11–20 of the ’177 patent in IPR2016-01434 (“other pending
`
`proceeding”). IPR2016-01434 (Paper 1). On August 12, 2016, Petitioner
`
`filed the instant Petition, with a Motion for Joinder (Paper 2; “Mot.”). In the
`
`Petition, Petitioner asserts:
`
`
`This petition is substantively identical to pending
`IPR2016-01434 filed by Oracle America Inc., Oracle
`Corporation and HCC Insurance Holdings, Inc. (“Oracle
`and HCC”), and relies on the same evidence and expert
`testimony. Petitioners request institution on the same grounds
`as any grounds instituted in the Oracle and HCC IPR, and
`concurrently move to join the Oracle and HCC IPR, if and when
`trial is instituted. See Paper 2.
`
`Pet. 1; emphasis added.
`
`Petitioners certify they are not barred or estopped from
`requesting IPR, they do not own the ’177 Patent, they (or any real
`party-in-interest) have not filed a civil action challenging any
`’177 patent claim’s validity. While Petitioners were served with
`a complaint alleging infringement of the ’177 Patent more than
`one year before the date this petition is filed, the time limitation
`of 35 U.S.C. § 315(b) “shall not apply to a request for joinder
`under” 35 U.S.C. § 315(c). Because this petition is accompanied
`by such a request (Paper 2), it complies with 35 U.S.C. § 315(b).
`
`Pet. 2–3. On September 12, 2016, Patent Owner filed an Opposition to
`
`Motion for Joinder, and on November 18, 2016, filed a Preliminary
`
`Response.
`
`6
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`IPR2016-01534
`Patent 7,516,177 B2
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`On January 17, 2017, a final written decision was issued in each of
`
`IPR2015-01706 and IPR2015-01707 determining, collectively, that claims
`
`11–13 and 15–20 of the ’177 patent are unpatentable. See Exs. 3001, 3002.5
`
`On that same day, institution was granted in IPR2016-01434 for claims 11–
`
`20 on certain grounds. See Ex. 3003 (“Dec.”).
`
`2.
`
`Principles of Law
`
`Section 314(a) provides (emphasis added):
`
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines that
`the information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Section 315(c) provides (emphasis added):
`
`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.
`
`Section 315(d) provides (emphasis added):
`
`PROCEEDINGS.—Notwithstanding
`MULTIPLE
`sections 135(a), 251, and 252, and chapter 30, during the
`pendency of an inter partes review, if another proceeding or
`matter involving the patent is before the Office, the Director may
`determine the manner in which the inter partes review or other
`proceeding or matter may proceed, including providing for stay,
`
`
`5 No trial was instituted on dependent claim 14 in either IPR2015-01706
`(Paper 10) or IPR2015-01707 (Paper 11).
`
`7
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`IPR2016-01534
`Patent 7,516,177 B2
`
`
`transfer, consolidation, or termination of any such matter or
`proceeding.
`
`Section 315(e)(1) provides (emphasis added):
`
`PROCEEDINGS BEFORE THE OFFICE.—The
`petitioner in an inter partes review of a claim in a patent under
`this chapter that results in a final written decision under section
`318(a), or the real party in interest or privy of the petitioner, may
`not request or maintain a proceeding before the Office with
`respect to that claim on any ground that the petitioner raised or
`reasonably could have raised during that inter partes review.
`
`Section 325(d) provides (emphasis added):
`
`PROCEEDINGS.—Notwithstanding
`MULTIPLE
`sections 135(a), 251, and 252, and chapter 30, during the
`pendency of any post- grant review under this chapter, if another
`proceeding or matter involving the patent is before the Office,
`the Director may determine the manner in which the post-grant
`review or other proceeding or matter may proceed, including
`providing for the stay, transfer, consolidation, or termination of
`any such matter or proceeding. In determining whether to
`institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and
`reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the
`Office.
`
`2.
`
`Analysis
`
`The procedural posture of this proceeding is such that it renders
`
`relevant five statutory provisions of the AIA. As an initial matter, a final
`
`written decision involving the same Petitioner and some of the same claims
`
`has been issued in the prior completed proceedings, making relevant 35
`
`U.S.C. § 315(e)(1). Furthermore, Petitioner seeks to invoke our
`
`discretionary joinder under 35 U.S.C. § 315(c). Additionally, as there are
`
`multiple proceedings involving the same patent, it also renders relevant our
`
`8
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`
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`IPR2016-01534
`Patent 7,516,177 B2
`
`
`discretionary authority under 35 U.S.C. § 315(d), and as the petitions in the
`
`instant proceeding and IPR2016-01434 are substantively identical, our
`
`discretionary authority under 35 U.S.C. § 325(d) is also relevant. And
`
`finally, the Board generally has also addressed serial petitions from the same
`
`petitioner under our general discretionary authority to institute trial under 35
`
`U.S.C. § 314(a). See NVIDIA Corp. v. Samsung Elecs. Co., Case IPR2016-
`
`00134, slip op. at 6–7 (PTAB May 4, 2016) (Paper 9). Ultimately, we
`
`determine that consideration of the above provisions from Sections 315(c),
`
`315(d), and 325(d) in the aggregate informs our discretionary authority
`
`under 35 U.S.C. § 314(a).6 To arrive at that decision, however, we
`
`determine it necessary to evaluate each of the above statutory provisions in
`
`turn. Each exercise of discretion is highly fact dependent inquiry.
`
`a.
`
`Final Written Decision Issued in Related Proceedings
`
`Section 315(e)(1) reads,
`
`The petitioner in an inter partes review of a claim in a patent
`under this chapter that results in a final written decision under
`section 318(a), or the real party in interest or privy of the
`petitioner, may not request or maintain a proceeding before the
`Office with respect to that claim on any ground that the petitioner
`raised or reasonably could have raised during that inter partes
`review.
`
`Emphasis added; see also 37 C.F.R. § 42.73(d) (applicable rule). Section
`
`318(a), in turn, provides “[i]f an inter partes review is instituted and not
`
`
`6 A predicate to granting joinder under Section 315(c) is that a petition
`merits institution under Section 314(a). Conversely, whether or not to grant
`joinder under Section 315(c) informs our analysis herein under Section
`314(a). It is for this reason that we treat our analysis under Section 315(c) as
`a factor to inform our discretionary authority under Section 314(a).
`
`9
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`
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`IPR2016-01534
`Patent 7,516,177 B2
`
`
`dismissed under this chapter, the Patent Trial and Appeal Board shall issue a
`
`final written decision with respect to the patentability of any patent claim
`
`challenged by the petitioner.” The Patent Office has stated that “35 U.S.C.
`
`315(e), as amended, provides for estoppel on a claim-by-claim basis, for
`
`claims in a patent that result in a final written decision,” Changes to
`
`Implement Inter Partes Review Proceedings, Post-Grant Review
`
`Proceedings, and Transitional Program for Covered Business Method
`
`Patents, 77 Fed. Reg. 48,680, 48,703 (Aug. 14, 2012) (Response to
`
`Comment 60), and that
`
`[t]he Board’s determination not to institute an inter partes review
`. . . is not a final written decision within the meaning of 35 U.S.C.
`318(a), as amended, and 35 U.S.C. 328(a), and thereby does not
`trigger the estoppel provisions under 35 U.S.C. 315(e), as
`amended, and 35 U.S.C. 325(e).
`
`Id. at 48,703–48,704 (Response to Comment 66). See also Westlaw
`
`Services, LLC v. Credit Acceptance Corp., Case CBM2014-00176, slip op.
`
`at 3–5 (PTAB May 14, 2015) (Paper 28) (precedential) (“We agree with
`
`Petitioner that estoppel is applied on a claim-by-claim basis. By its terms,
`
`estoppel is invoked under Section 325(e)(1) as to ‘a claim in a patent’ that
`
`‘results in a final written decision under’ 35 U.S.C. § 328(a).”)
`
`As an initial matter, the parties agree that Petitioner is not estopped
`
`from maintaining a challenge against dependent claim 14. PO Brief 4 (“The
`
`Board should also deny institution and joinder on non-estopped claim 14”);
`
`Pet. Brief 5. Furthermore, concerning claims 11–13 and 15–20, neither
`
`party disputes that the Petitioner in this proceeding and the prior completed
`
`proceedings are the same, and that a final written decision was issued in the
`
`prior completed proceedings. PO Brief 1–2; Pet. Brief 2. Accordingly, the
`
`10
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`IPR2016-01534
`Patent 7,516,177 B2
`
`
`entire dispute between the parties with respect to Section 315(e)(1) is the
`
`scope of “any ground that the petitioner raised or reasonably could have
`
`raised during that inter partes review,” i.e., IPR2015-01706 and IPR2015-
`
`01707. While the grounds set forth in the instant proceeding are over
`
`various combinations of Robinson, Bezos, Coates, and Excite, the parties
`
`largely direct their arguments to the primary reference asserted in the instant
`
`proceeding, i.e., Robinson, a reference that was not at issue in the prior
`
`completed proceedings. PO Brief 3–4; Pet. Brief 3–4. For that reason, we
`
`focus our analysis on whether Petitioner “reasonably could have raised” a
`
`ground of unpatentability based on Robinson during the prior completed
`
`proceedings.
`
`Petitioner begins with the following:
`
`[T]he Federal Circuit has interpreted the “reasonably could have
`raised during that inter partes review” language of Section 315(e)
`as limited to those grounds actually litigated in an inter partes
`review after the institution decision. Shaw Indus. Grp., Inc. v.
`Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir.)
`(“The IPR does not begin until it is instituted. . . . Thus, Shaw
`did not raise—nor could it have reasonably raised—the Payne-
`based ground during the IPR.”). Shaw’s interpretation of Section
`315(e) is binding on the Board. Indeed, this particular
`interpretation of Section 315(e) was adopted at the insistence of
`the Commissioner. See 817 F.3d at 1300. This is then the stated
`policy of the Office, and binding on the Board for this additional
`reason. Shaw’s reasoning, moreover, has also been held to apply
`with equal weight “to prior art references that were never
`presented to the PTAB at all.” Intellectual Ventures I LLC v.
`Toshiba Corp., No. CV 13-453-SLR, 2016 WL 7341713, at *13
`(D. Del. Dec. 19, 2016).
`
`Pet. Brief. 2–3; see also Verinata Health, Inc. v. Ariosa Diagnostics, Inc.,
`
`No. 12-CV-05501-SI, 2017 WL 235048, at *3 (N.D. Cal. Jan. 19, 2017)
`
`11
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`IPR2016-01534
`Patent 7,516,177 B2
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`(“limiting IPR estoppel to grounds actually instituted ensures that estoppel
`
`applies only to those arguments, or potential arguments, that received (or
`
`reasonably could have received) proper judicial attention”) (emphasis
`
`added). As an initial matter, it is axiomatic that any decision from our
`
`reviewing courts, such as Shaw Industries Group, is binding on the Board.
`
`Accordingly, whether or not any holding in Shaw Industries Group is also a
`
`position of the Commissioner or a policy of the Office that is binding on the
`
`Board is immaterial.
`
`We disagree, however, that Shaw Industries Group stands for the
`
`proposition for which Petitioner asserts. Specifically, we are unpersuaded
`
`that the words “reasonably could have raised during that inter partes review”
`
`from Section 315(e)(1) should be interpreted as limited to grounds actually
`
`raised during the prior completed proceedings. Primarily, the relevant part
`
`of Section 315(e)(1) reads, in full, “any ground that the petitioner raised or
`
`reasonably could have raised.” We discern that Congress would not have
`
`included the additional words “or reasonably could have raised” after
`
`“raised” if Congress had desired to limit the estoppel to grounds actually
`
`raised. Indeed, by contrast, in Section 18(a)(1)(D) of the America Invents
`
`Act, which governs the transitional program for covered business method
`
`patent reviews, Congress expressly limited estoppel to “any ground that the
`
`petitioner raised during that transitional proceeding.” Leahy-Smith America
`
`Invents Act (“AIA”) § 18, Pub. L. No. 112-29, 125 Stat. 284, 329–31
`
`(2011). To that end, we discern that Shaw Industries Group held that
`
`estoppel does not apply to any ground of unpatentability that was presented
`
`in a petition, but denied institution. That is consistent with our above
`
`analysis of Section 315(e)(1).
`
`12
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`IPR2016-01534
`Patent 7,516,177 B2
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`Petitioner appears to place heightened emphasis on the word “during”
`
`of “during that inter partes review,” in that because an inter partes review
`
`does not begin until a trial has been instituted, and that trial is limited to the
`
`instituted grounds, no other grounds “reasonably could have [been] raised”
`
`during that proceeding. We disagree. As set forth above, such an
`
`interpretation of Section 315(e)(1) would render superfluous “reasonably
`
`could have raised.” Moreover, we discern a substantive distinction between
`
`a ground that a petitioner attempted to raise, but was denied a trial, and a
`
`ground that a petitioner could have raised, but elected not to raise in its
`
`previous petition or petitions. Basic principles of fairness and due process
`
`dictate that the petitioner should not be estopped in the former. See HP Inc.
`
`v. MPHJ Tech. Invs., LLC, 817 F.3d 1339, 1347 (Fed. Cir. 2016) (“[T]he
`
`noninstituted grounds do not become a part of the IPR . . . . [T]he
`
`noninstituted grounds were not raised and, as review was denied, could not
`
`be raised in the IPR.”) In the latter, a petitioner makes an affirmative choice
`
`to avail itself of inter partes review only on certain grounds. That choice,
`
`however, comes with consequences, most prominently, that grounds
`
`petitioner elects not to raise in its petition for inter partes review may be
`
`subject to the consequences of Section 315(e)(1).
`
`Finally, with respect to Petitioner’s reference to a district court
`
`decision in Intellectual Ventures I LLC that purportedly supports its
`
`proposition (see Pet. Brief. 2–3), while the Board has considered the relevant
`
`portions of that decision, and respectfully accord it all due deference, we are
`
`unpersuaded that the district court’s reasoning should be adopted here, for
`
`several reasons. First, a decision in a district court proceeding is generally
`
`not binding on the Board. Second, Shaw Industries Group does not address
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`13
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`IPR2016-01534
`Patent 7,516,177 B2
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`the fact scenario in either the district court proceeding or the instant
`
`proceeding, for the reasons set forth above. Finally, the district court
`
`decision acknowledges the following:
`
`Although IV’s argument in this regard is perfectly plausible, in
`the sense that Toshiba certainly could have raised these
`additional obviousness grounds based on public documents at the
`outset of their IPR petition, the Federal Circuit has construed the
`above language quite literally. See Shaw Indus. Grp., Inc. v.
`Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016).
`More specifically, the Court determined in Shaw that, because
`the PTAB rejected a certain invalidity ground proposed by the
`IPR petitioner, no IPR was instituted on that ground and,
`therefore, petitioner “did not raise—nor could it have reasonably
`raised—the [rejected] ground during the IPR.” Id. at 1300
`(emphasis in original). Although extending the above logic to
`prior art references that were never presented to the PTAB at all
`(despite their public nature) confounds the very purpose of this
`parallel administrative proceeding, the court cannot divine a
`reasoned way around the Federal Circuit’s interpretation in
`Shaw.
`
`Intellectual Ventures I LLC, 2016 WL 7341713, at *13 (underlining added).
`
`In our view, our analysis comports with Shaw Industries Group, which did
`
`not address the scenario presented here.
`
`Petitioner next asserts that even if the Board disagrees with its
`
`interpretation of Section 315(e)(1), a ground based on Robinson is,
`
`nevertheless, not a ground that Petitioner “reasonably could have raised”
`
`because (1) Petitioner was unaware of Robinson prior to the filing of the
`
`petition in IPR2016-01434 “despite an exhaustive, litigation-motivated prior
`
`art search,” and (2) “there is not a shred of evidence suggesting that
`
`Robinson could be found in the types of places a diligent prior art searcher
`
`14
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`IPR2016-01534
`Patent 7,516,177 B2
`
`
`would look or that it would be adequately described in those places.” Pet.
`
`Brief 3–4.
`
`Against these assertions, we weigh Patent Owner’s assertions that
`
`Robinson “was readily identifiable in a diligent search.” PO Brief 1–3
`
`(citing Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (PTAB Sept.
`
`16, 2015) (Paper 8) (quoting 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011)
`
`(“What a petitioner ‘could have raised’ was broadly described in the
`
`legislative history of the America Invents Act (‘AIA’) to include ‘prior art
`
`which a skilled searcher conducting a diligent search reasonably could have
`
`been expected to discover.’”))). In particular, Patent Owner asserts:
`
`Oracle’s petition explains, for example, that “Robinson would
`have appeared as a result in a search of the subject ‘web portals’
`in the Library of Congress’s database.” Id. at 6. Moreover, as
`explained in IV’s prior papers, Robinson would also have been
`found in a search of www.worldcat.org, a popular online library
`catalog. Paper 6 at 6–7; Paper 8 at 13.
`
`PO Brief 3. Patent Owner asserts further that Petitioner has exhibited
`
`familiarity with the Excite web site system, and, thus, that Robinson, which
`
`is entitled “OFFICIAL EXCITE INTERNET YELLOW PAGES,” was a
`
`reference sufficiently related to the Excite web site system that Petitioner
`
`reasonably could have been expected to discover. PO Brief 3–4.
`
`In the aggregate, we agree with Patent Owner. With respect to
`
`Petitioner’s assertion (1), above, we accept at face value that it conducted an
`
`extensive search which did not turn up the Robinson reference. We,
`
`nevertheless, discount that assertion somewhat because Petitioner did not
`
`present search parameters such that we could evaluate the “reasonableness”
`
`of its search. Mot. 7–8; Pet. Brief 3. Petitioner’s assertion (2) above,
`
`however, is persuasively refuted by Patent Owner. Specifically, while
`
`15
`
`
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`IPR2016-01534
`Patent 7,516,177 B2
`
`
`Patent Owner’s assertions concerning www.worldcat.org may perhaps be
`
`discounted somewhat as litigation inspired posturing, the explanation and
`
`evidence presented in the petition in IPR2016-01434, by unrelated
`
`petitioners, as to the indexing of Robinson at the Library of Congress under
`
`“web portal,” coupled with Petitioner’s undisputed familiarity with the
`
`Excite web site system generally, strongly supports Patent Owner’s assertion
`
`that Robinson “was readily identifiable in a diligent search” (157 Cong. Rec.
`
`S1375 (daily ed. Mar. 8, 2011)), and, thus, that a ground based on Robinson
`
`is one that Petitioner “reasonably could have raised” in the prior completed
`
`proceedings. See Oracle America Inc., v. Intellectual Ventures II LLC, Case
`
`IPR2016-01434, Paper 4 (PTAB July 14, 2016) (citing paragraphs 6–12 of
`
`Ex. 1010 in IPR2016-01434).
`
`In light of the above, and on these facts, we determine that Petitioner
`
`is estopped under Section 315(e)(1) from challenging claims 11–13 and 15–
`
`20 of the ’177 patent in this proceeding.
`
`b. Motion for Joinder7
`
`The AIA created administrative trial proceedings, including inter
`
`partes review, as an efficient, streamlined, and cost-effective alternative to
`
`district court litigation. The AIA permits the joinder of like proceedings.
`
`The Board, acting on behalf of the Director, has the discretion to join an
`
`inter partes review with another inter partes review. 35 U.S.C. § 315(c).
`
`Section 315(c) provides (emphasis added):
`
`
`7 We address Petitioner’s Motion for Joinder for all claims, and assess the
`interplay between joinder and estoppel below in our analysis of Section
`314(a).
`
`16
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`
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`IPR2016-01534
`Patent 7,516,177 B2
`
`
`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.
`
`35 U.S.C. § 315(b) bars institution of an inter partes review when the
`
`petition is filed more than one year after the petitioner (or the petitioner’s
`
`real party-in-interest or privy) is served with a complaint alleging
`
`infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The
`
`one-year time bar, however, does not apply to a request for joinder. 35
`
`U.S.C. § 315(b) (“The time limitation set forth in the preceding sentence
`
`shall not apply to a request for joinder under subsection (c).”); 37 C.F.R.
`
`§ 42.122(b). Petitioner was served with a complaint alleging infringement
`
`of the ʼ177 patent on January 20, 2015—more than one year before filing the
`
`instant Petition. See Mot. 1; Opp. 1. Thus, absent joinder with IPR2016-
`
`01434, the Petition in the instant proceeding is time-barred.
`
`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The
`
`Board determines whether to grant joinder on a case-by-case basis, taking
`
`into account the particular facts of each case, substantive and procedural
`
`issues, and other considerations. See 157 CONG. REC. S1376 (daily ed. Mar.
`
`8, 2011) (statement of Sen. Kyl) (when determining whether and when to
`
`allow joinder, the Office may consider factors including “the breadth or
`
`unusualness of the claim scope” and claim construction issues). When
`
`exercising its discretion, the Board is mindful that the regulations governing
`
`trial practice and procedure before the Board, including the rules for joinder,
`
`17
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`
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`IPR2016-01534
`Patent 7,516,177 B2
`
`
`must be construed to secure the just, speedy, and inexpensive resolution of
`
`every proceeding. See 37 C.F.R. § 42.1(b).
`
`As the moving party, Petitioner has the burden of proof in establishing
`
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
`
`motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new ground(s) of unpatentability asserted in the
`
`petition; and (3) explain what impact (if any) joinder would have on the trial
`
`schedule for the existing review. See Frequently Asked Question H5 on the
`
`Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp. Petitioner
`
`should address specifically how briefing and/or discovery may be simplified
`
`to minimize schedule impact. See Kyocera Corp. v. SoftView LLC, Case
`
`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)
`
`(representative).
`
`Petitioner addresses the aforementioned factors in its Motion for
`
`Joinder. Among them, Petitioner asserts (1) that the instant Petition and the
`
`petition in IPR2016-01434 are substantially identical, including presenting
`
`the same grounds and references, and using the same expert, (2) that due to
`
`the timing of the Motion, the trial schedule in IPR2016-01434 will not be
`
`affected, (3) that “Petitioners, Oracle, and HCC will engage in consolidated
`
`filings and discovery, which will simplify the briefing and discovery
`
`process. Petitioners will assume an ‘understudy’ role, and only assume an
`
`active role in the event that Oracle and HCC settle with Patent Owner,” and
`
`(4) that there is no prejudice to Patent Owner. Mot. 2–8.
`
`As an initial matter, we note that our discretionary authority to grant
`
`joinder cannot be invoked unless it is determined that “a petition under
`
`section 311 . . . warrants the institution of an inter partes review under
`
`18
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`IPR2016-01534
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