`
`571-272-7822
`Date Entered: March 31, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FRIENDFINDER NETWORKS INC.
`STREAMRAY INC
`WMM, LLC
`WMM HOLDINGS, LLC, AND
`MULTI MEDIA, LLC.
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00784
`Patent 8,364,839 B2
`____________
`
`
`
`
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`PERRY, 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)
`
`
`
`
`
`IPR2017-00784
`Patent 8,364,839 B2
`
`
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether inter partes review
`of U.S. Patent No. 8,364,839 B2 (Ex. 1001, “the ’839 patent”) should be
`instituted under 35 U.S.C. §314(a) and if so, whether this case should be
`joined with IPR2016-01239 (the “1239 IPR” or the “WebPower IPR”),
`already in inter partes review of the ’839 patent. We conclude that the
`information presented demonstrates that there is a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of at least one of
`at least one of the challenged claims and therefore institute inter partes
`review. We also conclude that this case should be joined with IPR2016-
`01239 and that the joined cases should proceed according to the scheduling
`order governing IPR2016-01239. See IPR2016-01239, Paper 8.
`Petitioner, Friendfinder Networks Inc., Streamray Inc., WMM, LLC,
`WMM Holdings, LLC, and Multi Media, LLC filed a Petition (Paper 2,
`“Pet.”) and a Motion for Joinder (Paper 3, “Mot.”), to institute an inter
`partes review of claims 1–21 (the “challenged claims”) of the ’839 patent
`and to join with the 1239 IPR, already in trial. 35 U.S.C. § 311. We held a
`telephone conference with Counsel on February 6, 2017 and issued an Order
`(Paper 5) authorizing briefing on the Motion for Joinder. Patent Owner,
`Wag Acquisition, LLC, filed an Opposition to Petitioner’s Motion for
`Joinder (Paper 8, “Opp.”) and Petitioner filed a Reply in Support of its
`Motion for Joinder (Paper 9, “Reply”). Patent Owner waived the filing of a
`preliminary response. Paper 11, “Waiver.”
`The ’839 patent was the subject of inter partes review IPR2015-01036
`(“the ’1036 review”), brought by a different Petitioner (“Duodecad”). In the
`’1036 review, we issued a final written decision indicating that claims 1, 4,
`
`
`
`2
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`
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`IPR2017-00784
`Patent 8,364,839 B2
`
`
`6, 8, 11, 13, 15, 18, and 20 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Chen and Chen FH; and that claims 3, 10, and 17 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Chen, Chen FH, and
`ISO-11172. IPR2015-01036, Paper 17. No trial was declared as to claims 5,
`12, and 19 and they were not part of our Final Written Decision. In the
`WebPower IPR, we instituted inter partes review as to claims 5, 12, and 19
`only. That review is pending. The Petition now under consideration raises
`the same challenges as those enumerated in the Petition filed for IPR2016-
`01239.
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`In the 1239 IPR, we instituted an inter partes review of claims 5, 12,
`and 19 of the ’839 patent as allegedly unpatentable on the following asserted
`grounds:
`
`
`References
`
`Basis
`
`Claims Challenged
`
`Chen,1 Willebeek,2 and
`Chen FH3
`
`Chen, Cannon,4 and
`Chen FH
`
`
`
`35 U.S.C. § 103
`
`5, 12, and 19
`
`35 U.S.C. § 103
`
`5, 12, and 19
`
`
`1 U.S. Patent 5,822,524, issued October 13, 1998 (Ex. 1004, “Chen”).
`2 “Bamba-Audio and Video Streaming Over the Internet,” M.H. Willebeek-
`LeMair, et al. International Business Machines, Corporation, IBM J. RES.
`DEVELOP., Vol. 42, No. 2 (1998) (Ex. 1008, “Willebeek”).
`3 File History of U.S. Application 505,488 (Ex. 1010, “Chen FH”).
`4 U.S. Patent 6,014,706, issued Jan. 11, 2000 (Ex. 1009, “Cannon”).
`3
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`IPR2017-00784
`Patent 8,364,839 B2
`
`
`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 1239 IPR. Pet. 1; Mot. 2. Friendfinder
`represents that the Petition “copies verbatim the challenges set forth in the
`petition in [the 1239 IPR] and relies upon the same evidence, including the
`same expert declaration.” Pet. 4–5. Patent Owner waived filing a
`Preliminary Response and has not presented any arguments regarding the
`merits of the Petition. Patent Owner relies upon its arguments presented in
`the 1239 IPR. Paper 11.
`For the above reasons, in particular the fact that the present Petition
`virtually is identical to the petition in the 1239 IPR, we determine that
`Petitioner 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 1239 IPR.
`
`III. 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 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, Petitioner
`bears the burden of proving that it is entitled to the requested relief. 37
`C.F.R. § 42.20(c).
`
`
`
`4
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`IPR2017-00784
`Patent 8,364,839 B2
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`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 January 27, 2017,
`which is not later than one month after the 1239 IPR was instituted on
`December 27, 2016.
`Additionally, the Petition challenges the same claims of the same
`patent as those under inter partes review in the 1239 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. 1;
`compare Pet. 5, with 1239 IPR, Paper 2, 4–5. The Petition does not assert
`any other grounds of unpatentability, or present any new evidence not
`already of record in the 1239 IPR. Mot. 7–8. Indeed, the Petition is
`identical to the content of the petition in the 1239 IPR. See Pet. 1; Mot. 8–9.
`Petitioner further asserts that granting joinder would not require any
`alterations to the existing scheduling order in the 1239 IPR. Mot. 9.
`Petitioner agrees to:
`1. Adhere to the Scheduling Order issued in the WebPower
`IPR, including all applicable deadlines.
`2. Submit all papers as “consolidated” filings with the
`WebPower IPR petitioner. Petitioners would not submit any
`separate filings to the Board unless WebPower settles with
`Patent Owner.
`3. Refrain from requesting or reserving any additional
`discovery, including any depositions or deposition time.
`4. Will not seek to submit any new expert declarations from
`those entered by WebPower unless WebPower settles with
`Patent Owner and that settlement contractually prevents
`WebPower’s expert from continuing to support Petitioners.
`5. Refrain from requesting or reserving additional oral
`argument hearing time.
`6. Take an “understudy” role as long as the WebPower IPR
`petitioner remains in the proceeding.
`
`
`
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`5
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`IPR2017-00784
`Patent 8,364,839 B2
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`Mot. 9–10.
`Patent Owner opposes joinder because “the instant Petitions and
`motions are second bites at the apple for Petitioners.” Opp. 1. Patent Owner
`argues that Petitioner filed a petition in 2015, within a year of having been
`served with complaints alleging infringement of the ’839 patent. Opp. 1.
`According to Patent Owner, the Webpower IPR raised different grounds
`applying different combinations of references that could have been found
`using reasonable efforts for use in its original IPR filed in 2015. Opp. 4.
`Further, according to Patent Owner, Petitioner has not explained why its
`2015 petition did not raise the grounds and arguments presented in the
`Webpower IPR. Opp. 4.
`Petitioner, in its Reply, argues that efficiency weighs heavily in favor
`of granting joinder and that Patent Owner does not refute the “Dell” factors
`outlined by Petitioner in its Motion for Joinder. Reply 2.
`Based on the facts and circumstances discussed above, we determine
`Petitioner has met its burden of demonstrating that joinder of this proceeding
`with the 1239 IPR is warranted under the circumstances. Patent Owner’s
`arguments are unpersuasive. Patent Owner will not be prejudiced. It is
`already defending the 1239 IPR and there will be no schedule change or
`separate filings by Petitioner in the 1239 IPR.
`With respect to Patent Owner’s argument that Petitioner could have
`raised the arguments and evidence in its 2015 petition, we have considered
`that factor but conclude joinder is warranted nonetheless considering the
`totality of the facts and circumstances.
`Although the fact that a petition includes arguments and evidence that
`reasonably could have been raised in an earlier petition may weigh against
`
`
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`6
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`IPR2017-00784
`Patent 8,364,839 B2
`
`
`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 1239 IPR will not
`require any delay or modification to the scheduling order already in place for
`the 1239 IPR. We determine that Patent Owner will not be prejudiced
`unduly by the joinder of these proceedings, and joining the identical
`challenges to those in the 1239 IPR will lead to greater efficiency while
`reducing the resources necessary. 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.
`
`IV. ORDER
`
`For reasons given, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review in
`IPR2017-00784 is hereby instituted for claims 5, 12, and 19 of the ’839
`patent on the grounds of unpatentability set forth above;
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`granted;
`FURTHER ORDERED that IPR2017-00784 is hereby joined with
`IPR2016-01239;
`
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`7
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`IPR2017-00784
`Patent 8,364,839 B2
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`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2016-01239 are unchanged and remain the only
`grounds on which trial has been instituted;
`FURTHER ORDERED that the Scheduling Order and any
`modifications thereto entered in IPR2016-01239, is unchanged and shall
`govern the schedule of the joined proceeding;
`FURTHER ORDERED that Petitioner and the petitioner in
`IPR2016-01239 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 IPR2017-00784 is terminated under 37
`C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`made in IPR2016-01239;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-01239; and
`FURTHER ORDERED that the case caption in IPR2016-01239 shall
`be modified to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
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`8
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`IPR2017-00784
`Patent 8,364,839 B2
`
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`PETITIONER FRIENDFINDER NETWORKS INC.:
`
`Frank M. Gasparo
`Tamatane Aga
`VENABLE LLP
`fmgasparo@venable.com
`tjaga@venable.com
`
`PETITIONER WEBPOWER, INC.:
`
`Frank M. Gasparo
`Jonathan Falkler
`VENABLE LLP
`fmgasparo@venable.com
`JLFalkler@Venable.com
`
`PATENT OWNER:
`
`Ronald Abramson
`LEWIS BAACH PLLC
`ronald.abramson@lewisbaach.com
`
`Ernest Buff
`ERNEST D. BUFF & ASSOCIATES, L.L.C.
`ebuff@edbuff.com
`
`
`
`9
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