throbber
Trials@uspto.gov
`571-272-7822 
`
`Paper 12
`Date Entered: April 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DUODECAD IT SERVICES LUXEMBOURG S.A.R.L.,
`ACCRETIVE TECHNOLOGY GROUP, INC.,
`ICF TECHNOLOGY, INC, and
`RISER APPS LLC
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00785
`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)
`
`
`
`

`

`IPR2017-00785
`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 IPR2016-012391 (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.
`Duodecad IT Services Luxembourg S.A.R.L., Accretive Technology
`Group, Inc., ICF Technology, Inc., and Riser Apps LLC filed a Petition
`(Paper 1, “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 WebPower 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 Duodecad IT Services Luxembourg
`
`                                                            
`1 IPR2016-00784 was recently joined with IPR2016-01239.
`2 
`

`
`

`

`IPR2017-00785
`Patent 8,364,839 B2


`S.A.R.L. (“Duodecad”). In the ’1036 review, we issued a final written
`decision indicating that claims 1, 4, 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 WebPower 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:
`
`

`
`3 
`
`

`

`IPR2017-00785
`Patent 8,364,839 B2


`References
`
`Chen,2 Willebeek,3 and
`Chen FH4
`
`Chen, Cannon,5 and
`Chen FH
`
`Basis
`
`Claims Challenged
`
`35 U.S.C. § 103
`
`5, 12, and 19
`
`35 U.S.C. § 103
`
`5, 12, and 19
`
`
`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 WebPower IPR. Pet. 9; Mot. 1. Petitioner
`represents that
`Petitioners agree to adhere to all applicable deadlines in the
`WebPower IPR and coordinate all filings with WebPower.
`Petitioners will not seek additional depositions or deposition
`time, and will coordinate deposition questioning and hearing
`presentations with WebPower. Joinder will not complicate or
`delay the WebPower IPR and will not adversely affect the
`schedule set in that proceeding.
`
`Pet. 1–2. 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 WebPower IPR. Paper 11.
`For the above reasons, in particular the fact that the present Petition
`virtually is identical to the petition in the WebPower IPR, we determine that
`Petitioner has demonstrated sufficiently under 35 U.S.C. § 314 that an inter
`
`                                                            
`2 U.S. Patent 5,822,524, issued October 13, 1998 (Ex. 1004, “Chen”).
`3 “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”).
`4 File History of U.S. Application 505,488 (Ex. 1010, “Chen FH”).
`5 U.S. Patent 6,014,706, issued Jan. 11, 2000 (Ex. 1009, “Cannon”).
`4 
`

`
`

`

`IPR2017-00785
`Patent 8,364,839 B2


`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).
`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 WebPower 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 WebPower 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. 9, 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. 8–9.
`

`
`5 
`
`

`

`IPR2017-00785
`Patent 8,364,839 B2


`Petitioner further asserts that granting joinder would not require any
`alterations to the existing scheduling order in the WebPower 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.
`
`Mot. 1–3.
`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. Id.. 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. 1–4.
`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.
`

`
`6 
`
`

`

`IPR2017-00785
`Patent 8,364,839 B2


`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 1–3.
`Based on the facts and circumstances discussed above, we determine
`Petitioner has met its burden of demonstrating that joinder of this proceeding
`with the WebPower IPR is warranted under the circumstances. Patent
`Owner’s arguments are unpersuasive. Patent Owner will not be prejudiced.
`It is already defending the WebPower IPR and there will be no schedule
`change or separate filings by Petitioner in the WebPower 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
`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 WebPower IPR will
`not require any delay or modification to the scheduling order already in
`place for the WebPower IPR. We determine that Patent Owner will not be
`prejudiced unduly by the joinder of these proceedings, and joining the
`

`
`7 
`
`

`

`IPR2017-00785
`Patent 8,364,839 B2


`identical challenges to those in the WebPower 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
`IPR2017-00785 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 IPR2017-00785 is hereby joined with
`IPR2016-01239;
`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;
`

`
`8 
`
`

`

`IPR2017-00785
`Patent 8,364,839 B2


`FURTHER ORDERED that IPR2017-00785 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.
`
`
`
`
`9 
`
`
`

`
`

`

`IPR2017-00785
`Patent 8,364,839 B2


`PETITIONER:
`
`Kevin M. O’Brien
`Richard V. Wells
`Matt Dushek
`BAKER & MCKENZIE LLP
`kevin.obrien@bakermckenzie.com
`richard.wells@bakermckenzie.com
`matt.dushek@bakermckenzie.com
`
`Brian G. Bodine
`Alan D. Minsk
`LANE POWELL PC
`bodineb@lanepowell.com
`minska@lanepowell.com
`
`Frank M. Gasparo
`Jonathan Falkler
`VENABLE LLP
`FMGasparo@Venable.com
`JLFalkler@Venable.com
`
`
`
`PATENT OWNER:
`
`Ronald Abramson
`Ernest D. Buff
`LEWIS BAACH PLLC
`ronald.abramson@lewisbaach.com
`ebuff@edbuff.com
`
`

`
`10 
`
`

`


`
`  
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WEBPOWER, INC.
`
`FRIENDFINDER NETWORKS, INC., STREAMRAY INC., WMM, LLC,
`WMM HOLDINGS, LLC, AND MULTI MEDIA, LLC
`
`DUODECAD IT SERVICES LUXEMBOURG S.A.R.L., ACCRETIVE
`TECHNOLOGY GROUP, INC., ICF TECHNOLOGY, INC, and
`RISER APPS LLC
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01239
`Patent 8,364,839 B2
`____________
`
`
`
`

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