Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 8
`Entered: October 15, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALVE CORP.,
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01243
`Patent 6,226,686 B1 & 6,226,686 C1
`____________
`
`
`Before THU A. DANG, KARL D. EASTHOM, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 8
`Entered: October 15, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALVE CORP.,
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01243
`Patent 6,226,686 B1 & 6,226,686 C1
`____________
`
`
`Before THU A. DANG, KARL D. EASTHOM, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01243
`Patent 6,226,686 & 6,226,686 C1
`
`
`I.
`INTRODUCTION
`On June 14, 2018, Valve Corp. (“Petitioner”) filed a Petition,
`seeking inter partes review of claims 1, 3, 7, 12, 18, 22–27, 36, 41–
`46, 55, and 58–63 of U.S. Patent No. 6,226,686 B1 (“the ’686
`patent”). Paper 2 (“Pet.”). Paltalk Holdings, Inc. (“Patent Owner”)
`waived its preliminary response. Paper 7.
`Along with the Petition, Petitioner filed a Motion for Joinder to
`join this proceeding with IPR2018-00132. Paper 3 (“Mot.”). Patent
`Owner does not oppose the Motion.
`As explained further below, we institute an inter partes review
`on the same grounds as instituted in IPR2018-00132 and grant
`Petitioner’s Motion for Joinder.
`II. DISCUSSION
`In IPR2018-00132, Riot Games, Inc. challenged claims 1, 3, 7,
`12, 18, 22–27, 36, 41–46, 55, and 58–63 of the ’686 patent based on
`the following grounds:
`Claims
`Basis
`References
`Aldred1 and RFC 16922 § 103 1, 3, 7, 12, 18, 26, 27, 45, 46, 62, and
`63
`§ 103 22–27, 41–46, and 58–63
`
`Aldred, RFC 1692, and
`Ulrich3
`Aldred, RFC 1692, and
`Denzer4
`
`§ 103 36 and 55
`
`
`1 WO 94/11814 (May 26, 1994) (“Aldred”; Ex. 1009).
`2 Request for Comments (RFC) 1692 (Aug. 1994) (“RFC 1692”; Ex. 1010).
`3 US 5,466,200 (Nov. 14, 1995) (“Ulrich”; Ex. 1012).
`4 US 5,307,413 (Apr. 26, 1994) (“Denzer”; Ex. 1014).
`2
`
`
`
`
`
`IPR2018-01243
`Patent 6,226,686 & 6,226,686 C1
`
`
`On May 15, 2018, we instituted an inter partes review to
`review the patentability of those claims. Riot Games, Inc. v. Paltalk
`Holdings, Inc., IPR2018-00132, Paper 11.
`The Petition in this case is substantively identical to the one in
`IPR2018-00132. Compare IPR2018-00132, Paper 1 with IPR2018-
`01243, Paper 2. For the same reasons stated in our Decision on
`Institution in IPR2018-00132, we institute an inter partes review in
`this proceeding on the same grounds. See IPR2018-00132, Paper 11.
`Having determined that institution is appropriate, we now turn
`to Petitioner’s Motion for Joinder. Under the statute, “[i]f 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.” 35 U.S.C. § 315(c).
`When determining whether to grant a motion for joinder we consider
`factors such as timing and impact of joinder on the trial schedule, cost,
`discovery, and potential simplification of briefing. Kyocera Corp. v.
`SoftView, LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24,
`2013) (Paper 15).
`Under the circumstances of this case, we determine that joinder
`is appropriate. Petitioner filed the Petition and Motion for Joinder in
`the present proceeding within one month of our institution of an inter
`partes review in IPR2017-00132, and thus, satisfies the requirement
`of 37 C.F.R. § 42.122(b). Petitioner represents that the Petition in this
`case is “substantially identical to the petition, filed by Riot Games,
`Inc. (‘Riot’), on which the Board instituted IPR2018-00132.” Mot. 1.
`According to Petitioner, the Petition “challenges the same claims of
`
`
`
`3
`
`
`
`IPR2018-01243
`Patent 6,226,686 & 6,226,686 C1
`
`the ’686 patent based on the same grounds and the same evidence as
`Riot’s petition in IPR2018-00132.” Id. Petitioner asserts that it will
`“take an understudy role in the proceedings for as long as Riot
`remains a party.” Id. As a result, Petitioner avers that joinder “does
`not raise any new grounds and will not impact the schedule or impose
`substantial costs on the parties to IPR2018-00132 or the Board." Id.
`Therefore, Petitioner asserts, joinder will result in no prejudice to
`either Riot or Paltalk. Id. at 6. Petitioner also asserts that joinder will
`not affect the schedule, and will simplify discovery and briefing. Id.
`at 7–8.
`Where, as in the present case, a party seeks to take a secondary
`role in an on-going IPR, joinder promotes economy and efficiency,
`thereby reducing the burden on the Patent Owner and on the limited
`resources of the Board, as compared to distinct, parallel proceedings.
`See 37 C.F.R. § 42.1(b) (instructing that an inter partes review must
`be conducted to “secure the just, speedy, and inexpensive resolution”).
`In view of the foregoing, we find that joinder based upon the
`conditions stated by Petitioner in its Motion for Joinder will have little
`or no impact on the timing, cost, or presentation of the trial on the
`instituted ground. Discovery and briefing will be simplified if the
`proceedings are joined. Having considered Petitioner’s Motion, the
`Motion is granted.
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that trial is instituted in IPR2018-01243 on the following
`grounds:
`
`
`
`4
`
`
`
`IPR2018-01243
`Patent 6,226,686 & 6,226,686 C1
`
`
`1. claims 1, 3, 7, 12, 18, 26, 27, 45, 46, 62, and 63 as obvious over
`Aldred and RFC 1692;
`2. claims 22–27, 41–46, and 58–63 as obvious over Aldred, RFC
`1692, and Ulrich
`3. claims 36 and 55 as obvious over Aldred, RFC 1692, and Denzer;
`FURTHER ORDERED that Petitioner’s Motion for Joinder
`with IPR2018-00132 is granted;
`FURTHER ORDERED that IPR2018-01243 is terminated and
`joined to IPR2018-00132, pursuant to 37 C.F.R. §§ 42.72, 42.122;
`
`FURTHER ORDERED that absent leave of the Board, Valve
`Corp. shall maintain an understudy role with respect to Riot, Inc.,
`coordinate filings with Riot, Inc., not submit separate substantive
`filings, not participate substantively in oral argument, and not actively
`participate in deposition questioning except with the assent of all
`parties;
`
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2018-00132 shall govern the joined proceedings;
`FURTHER ORDERED that all future filings in the joined
`proceeding are to be made only in IPR2018-00132;
`FURTHER ORDERED that the case caption in IPR2018-00132
`for all further submissions shall be changed to add Valve Corp. as a
`named Petitioner after Riot, Inc., and to indicate by footnote the
`joinder of IPR2018-01243 to that proceeding, as indicated in the
`attached sample caption;
`FURTHER ORDERED that a copy of this Decision shall be
`entered into the record of IPR2018-00132.
`5
`
`
`
`
`
`IPR2018-01243
`Patent 6,226,686 & 6,226,686 C1
`
`FOR PETITIONER VALVE:
`Sharon A. Israel
`Patrick A. Lujin
`Kyle Friesen
`SHOOK, HARDY & BACON L.L.P.
`sisrael@shb.com
`plujin@shb.com
`kfriesen@shb.com
`
`Reynaldo C. Barcelo
`BARCELO, HARRISON & WALKER, LLP
`rey@bhiplaw.com
`
`FOR PATENT OWNER:
`
`Gregory M. Howison
`Keith D. Harden
`Brian D. Walker
`MUNCK, WILSON, MANDALA, LLP
`ghowison@munckwilson.com
`kharden@munckwilson.com
`bwalker@munckwilson.com
`
`
`
`FOR PETITIONER RIOT (IPR2018-00132):
`
`
`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`
`
`
`6
`
`
`
`Paper No. 8
`Entered: October 15, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`Sample Case Caption
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`RIOT, INC., and
`VALVE CORP.,
`Petitioners,
`
`v.
`
`PALTALK HOLDINGS, INC,
`
`Patent Owner.
`
`____________
`
`Case IPR2018-001321
`Patent 6,226,686 B1 & 6,226,686 C1
`
`____________
`
`
`1 Case IPR2018-01243 has been joined with this proceeding.
`
`
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