UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`AT&T SERVICES, INC.,
`
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS LLC,
`
`Patent Owner.
`
`__________________
`
`Patent No. 8,914,840 B2
`
`Title: METHOD AND APPARATUS FOR BROWSING
`USING ALTERNATIVE LINKBASES
`
`__________________
`
`PETITIONER’S MOTION FOR JOINDER TO RELATED INTER PARTES
`REVIEW OF U.S. PATENT NO. 8,914,840 (CASE NO. IPR2016-01814)
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`1
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`AT&T SERVICES, INC.,
`
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS LLC,
`
`Patent Owner.
`
`__________________
`
`Patent No. 8,914,840 B2
`
`Title: METHOD AND APPARATUS FOR BROWSING
`USING ALTERNATIVE LINKBASES
`
`__________________
`
`PETITIONER’S MOTION FOR JOINDER TO RELATED INTER PARTES
`REVIEW OF U.S. PATENT NO. 8,914,840 (CASE NO. IPR2016-01814)
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
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`1
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`
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`AT&T Services, Inc. (“Petitioner”) hereby moves the Patent Trial and
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`Appeal Board (“Board”) for joinder of its today-filed petition for inter partes
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`review (“AT&T IPR”) with a previously instituted IPR filed by Netflix, Inc. (Case
`
`No. IPR2016-01814, “Netflix IPR”). The AT&T IPR is substantially identical to
`
`the Netflix IPR.1 Both seek inter partes review of claims 1-5, 16, 18-20, 24, 32,
`
`34-35, 37-38, 42, 44, 47, 51-56, 59-62 (the “Challenged Claims”) of U.S. Patent
`
`No. 8,914,840 (the “’840 patent,” EX1031). Further, the AT&T IPR and Netflix
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`IPR rely upon the same analytical framework (e.g., the same grounds, the same
`
`supporting evidence, the same arguments, etc.) in addressing the Challenged
`
`Claims. Accordingly, resolving the AT&T IPR and Netflix IPR will necessarily
`
`involve considering the same issues by all parties and the Board. Patent Owner will
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`not be prejudiced by joinder, as no new grounds are being raised by AT&T, and no
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`alteration to the Netflix IPR schedule is necessary as a result of AT&T’s joinder.
`
`Petitioner is filing this petition and joinder motion to ensure that a petitioner
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`remains to complete the trial in the event that Netflix reaches a settlement with the
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`Patent Owner or is otherwise terminated from the proceeding. Unless Netflix’s
`
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`1 To simplify the proceedings, Petitioner adopts the same claim constructions that
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`Netflix proffered in its original Petition.
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`
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`2
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`
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`participation in the proceedings terminates, AT&T does not intend to introduce any
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`briefing, arguments or evidence separate from Netflix in the joined proceedings.
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`Petitioner has notified counsel for Netflix and Convergent Media Solutions
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`LLC (“Convergent”) regarding the subject of this motion. As of the filing of this
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`motion, counsel for Convergent has not yet indicated whether Convergent will
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`oppose this motion. Counsel for Netflix indicated that Netflix will oppose the
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`motion.
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`In light of the similarities of the proceedings, the potential benefit to the
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`public and the Board that would accrue by AT&T’s participation in this proceeding
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`in the event that Netflix’s participation terminates, and the lack of prejudice to
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`Patent Owner by AT&T’s joinder, Petitioner respectfully requests that the Board
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`join the Netflix IPR and AT&T IPR.
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`II. BACKGROUND
`Netflix filed a petition requesting inter partes review of the ’840 patent on
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`September 15, 2016. Netflix IPR, Paper 2. A decision granting institution of that
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`petition was granted on March 3, 2017. Netflix IPR, Paper 7.
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`The Netflix IPR and AT&T IPR involve different petitioner groups and real
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`parties-in-interest. Compare Netflix IPR, Paper 2 at 1-2 with AT&T IPR, Petition
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`at 2 (identifying real parties-in-interest). However, AT&T is a defendant in
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`infringement lawsuits involving the ’840 Patent filed by the Patent Owner in the
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`
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`3
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`
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`U.S. District Court for the Northern District of Texas. See Netflix IPR, Paper 2 at
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`2; AT&T IPR, Petition at 2 (listing related matters).
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`III. LEGAL STANDARD
`When more than one petition for inter partes review of the same patent is
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`properly filed and those petitions warrant institution, the Board has the authority
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`and discretion to join the proceedings. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
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`Normally, a petition for inter partes review filed more than one year after the
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`petitioner (or the petitioner’s real party-in-interest or privy) is served with a
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`complaint alleging infringement of the patent is barred. See 35 U.S.C. § 315(b); 37
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`C.F.R. § 42.101(b). The one-year time bar, however, does not apply to a petition
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`filed with a motion for joinder. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
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`Joinder of one inter partes review with another inter partes review is appropriate
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`where it secures the just, speedy, and inexpensive resolution of the inter partes
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`review proceedings. See 37 C.F.R. § 42.1(b).
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`A motion for joinder must be filed within one month of institution of any
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`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b); Taiwan
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`Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and IPR2014-782,
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`Paper 5 at 3 (May 29, 2014) (prior authorization not required before one month
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`deadline). In addition, the Board considers the following factors in deciding
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`whether to grant a motion for joinder: (1) the reasons why joinder is appropriate;
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`4
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`
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`(2) whether the party to be joined has presented any new grounds of
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`unpatentability; (3) what impact, if any, joinder would have on the trial schedule
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`for the existing review; and (4) how briefing and discovery may be simplified. See,
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`e.g., Hyundai Motor Co. v. Am. Vehicular Scis. LLC, IPR2014-01543, Paper No.
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`11 at 3 (Oct. 24, 2014); Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15
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`at 4 (Aug. 13, 2014) (quoting Kyocera Corp. v. Softview LLC, IPR2013-00004,
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`Paper 15 at 4 (April 24, 2013)). Petitioner addresses each of these points below.
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`IV. ANALYSIS
`As discussed below, this motion is timely and each factor weighs in favor of
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`joinder. Petitioner respectfully requests that the Board grant this motion for
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`joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) and enter an
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`order to that effect.
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`A. This Joinder Motion is Timely
`Joinder can be requested without prior authorization no later than one month
`
`after the institution date of the proceeding to which joinder is requested. 37 C.F.R.
`
`§ 42.122(b); Taiwan Semiconductor, IPR2014-00781 and IPR2014-782, Paper 5 at
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`3. Because this motion is being filed within one month of the Board’s decision
`
`instituting trial in the Netflix IPR, it meets the timeliness requirements of
`
`§ 42.122(b). See, e.g., Biotronik, Inc. v. Atlas IP LLC, IPR2015-00534, Paper 10
`
`
`
`5
`
`
`
`(Feb. 25, 2015) (granting motion for joinder filed concurrently with institution of
`
`IPR review).
`
`B.
`
`The Four Factors Weigh In Favor of Joinder
`1.
`AT&T seeks to join the Netflix IPR proceeding in order to ensure that an
`
`Joinder is Appropriate
`
`accused infringer with an active interest in the proceeding remains a party to this
`
`Trial in the event that Netflix’s participation is terminated prior to its completion.
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`Accordingly, joining the two IPRs is the most practical way to secure the just,
`
`speedy, and inexpensive resolution of the challenge to the ’840 Patent. See 37
`
`C.F.R. § 42.1(b).
`
`No New Grounds of Unpatentability
`
`2.
`The petition in the AT&T IPR is substantially identical to the petition in the
`
`Netflix IPR. That is, the same claims are challenged (Claims 1-5, 16, 18-20, 24, 32,
`
`34-35, 37-38, 42, 44, 47, 51-56, 59-62 of the ’840 patent) based on the same
`
`grounds, same arguments, and the same claim constructions. The same expert
`
`declarant is used, and the expert’s declarations in the two cases are identical.
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`Further, unity of exhibits and exhibit numbering with the Netflix IPR has also been
`
`maintained. Accordingly, no new grounds are being introduced and no disruption
`
`to the Netflix IPR schedule is necessary to resolve the issues raised in the AT&T
`
`IPR.
`
`
`
`6
`
`
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`No Impact on IPR Trial Schedule
`
`3.
`This motion is being filed within one month of institution of the Netflix IPR,
`
`and Petitioner agrees to adhere to all applicable deadlines set forth in the Netflix
`
`IPR Scheduling Order. AT&T is introducing no additional evidence or witnesses,
`
`so no additional depositions will be needed. Accordingly, the trial schedule for the
`
`Netflix IPR should not be adversely impacted by AT&T’s joinder.
`
`Discovery and Briefing Can Be Simplified
`
`4.
`As noted, no additional discovery should be needed based on AT&T’s
`
`participation. Additionally, because the AT&T IPR is identical to the Netflix IPR
`
`with respect to grounds of unpatentability raised in that petition and instituted, the
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`Board may adopt procedures like those used in similar cases to simplify briefing.
`
`See e.g., Hyundai Motor Co. v. Am. Vehicular Sciences LLC, IPR2014-01543,
`
`Paper No. 11 at 5 (Oct. 24, 2014); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-
`
`00385, Paper No. 17 at 8-10 (Jul. 29, 2013); Motorola Mobility LLC, IPR2013-
`
`00256, Paper 10 at 8-10 (Apr. 29, 2013). For example, AT&T anticipates it would
`
`work with Netflix to submit consolidated filings, and will not file separate papers
`
`without prior authorization from the Board upon a showing of good cause. See e.g.,
`
`Hyundai, IPR2014-01543, Paper No. 11 at 5.
`
`AT&T will also agree to consolidated discovery such that no additional
`
`deposition time would be needed. AT&T will cooperate with Netflix to complete
`
`
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`7
`
`
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`depositions within the time normally allotted for one party. These procedures
`
`should simplify briefing and discovery and alleviate any potential prejudice to
`
`Patent Owner.2
`
`Joinder Will Result in No Prejudice to Patent Owner
`
`5.
`As noted, AT&T’s participation in this proceeding should not result in any
`
`prejudice to Patent Owner. No additional grounds or arguments are being
`
`introduced, no new evidence or issues are being added, and no additional briefing
`
`should be necessary as a result of AT&T’s joinder.
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`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`institute inter partes review of claims 1-5, 16, 18-20, 24, 32, 34-35, 37-38, 42, 44,
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`47, 51-56, 59-62 of the ’840 patent and grant joinder of the Netflix IPR and AT&T
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`IPR.
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`The Patent Office is authorized to charge Deposit Account 02-0384 any fee
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`appurtenant to this filing.
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`2 For clarity, should Netflix’s participation in this IPR terminate, AT&T would
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`take over primary responsibility for subsequent filings and discovery.
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`8
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`
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`
`
`
`
`
`
`/s/Kurt Pankratz/
`Lead Counsel
`Kurt Pankratz (Reg. No. 46,977)
`2001 Ross Avenue, Suite 600
`Dallas, Texas 75201
`kurt.pankratz@bakerbotts.com
`
`
`
`
`Back-up Counsel
`Roger Fulghum (Reg. No. 39,678)
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002
`roger.fulghum@bakerbotts.com
`
`Eliot Williams (Reg. No. 50,822)
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`eliot.williams@bakerbotts.com
`
`Brian Johnston (Reg. No. 69,041)
`2001 Ross Avenue, Suite 600
`Dallas, Texas 75201
`brian.johnston@bakerbotts.com
`
`Attorneys for AT&T Services, Inc.
`
`
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`
`
`
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`
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`Dated:
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`
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`April 3, 2017
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`9
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`
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. §§ 42.6(e), the undersigned certifies that on
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`the 3rd day of April, 2017, a complete and entire copy of PETITIONER’S
`
`MOTION FOR JOINDER TO RELATED INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,914,840 (CASE NO. IPR2016-01814) UNDER 35 U.S.C.
`
`§ 315(c) AND 37 C.F.R. § 42.122(b) was served, by FedEx® mail delivery
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`service®, on the patent owner at the correspondence address of record for the
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`subject patent:
`
`BERKELEY LAW & TECHNOLOGY GROUP, LLP
`17933 NW Evergreen Parkway, Suite 250
`BEAVERTON OR 97006
`
`Additionally, the same were also served upon counsel for the subject patent’s
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`owner, Convergent Media Soultions, in the Netflix IPR,
`
`Matthew C. Juren
`Barry J. Bumgardner
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`
`
`
`
`and upon counsel for Petitioner, Netflix, Inc. in the Netflix IPR,
`
`Chun M. Ng
`Matthew C. Bernstein
`Patrick J. McKeever
`Vinay P. Sathe
`Miguel J. Bombach
`Kevin E. Kantharia
`
`
`
`10
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`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`
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`because that is likely to effect service.
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`
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`Dated:
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`April 3, 2017
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`
`
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`
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`
`
`/s/Kurt Pankratz/
`Lead Counsel
`Kurt Pankratz (Reg. No. 46,977)
`2001 Ross Avenue, Suite 600
`Dallas, Texas 75201
`kurt.pankratz@bakerbotts.com
`
`
`
`
`Back-up Counsel
`Roger Fulghum (Reg. No. 39,678)
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002
`roger.fulghum@bakerbotts.com
`
`Eliot Williams (Reg. No. 50,822)
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`
`
`eliot.williams@bakerbotts.com
`Brian Johnston (Reg. No. 69,041)
`2001 Ross Avenue, Suite 600
`Dallas, Texas 75201
`brian.johnston@bakerbotts.com
`
`Attorneys for AT&T Services, Inc.
`
`
`
`
`
`11
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`
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