Paper No. 11
`Trials@uspto.gov
`571-272-7822 Entered: April 3, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00111
`Patent 5,699,275
`____________
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: April 3, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00111
`Patent 5,699,275
`____________
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2019-00111
`Patent 5,699,275
`
`I. INTRODUCTION
`
`Google LLC (“Petitioner”) filed a Petition for inter partes review of
`
`claim 1 of U.S. Patent No. 5,699,275 (Ex. 1001, “the ’275 patent”). Paper 2
`
`(“Pet.”). Petitioner also filed a Motion for Joinder with Samsung Electronics
`
`Co., Ltd. v. Iron Oak Technologies, Case IPR2018-01553 (“the 1553 IPR”).
`
`Paper 7 (“Mot.”). Iron Oak Technologies, LLC (“Patent Owner”) filed a
`
`Preliminary Response. Paper 6 (“Prelim. Resp.”). Patent Owner indicates
`
`that it does not oppose the Motion for Joinder. Paper 9. We have authority
`
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`
`not be instituted “unless . . . there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.”
`
`For the reasons described below, we institute an inter partes review of
`
`the challenged claim and grant Petitioner’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`
`The parties indicate that the ’275 patent is the subject of several court
`
`proceedings. Pet. 1–2; Paper 3, 2–3. The ’275 patent also is the subject of
`
`the 1553 IPR, IPR2018-01552, IPR2019-00106, and IPR2019-00110.
`
`
`
`
`
`
`
`2
`
`
`
`IPR2019-00111
`Patent 5,699,275
`
`In the 1553 IPR, we instituted an inter partes review of claim 1 of the
`
`’275 patent on the following grounds:
`
`References
`
`Hapka1 and Parrillo2
`Hapka, Parrillo, and
`Wortham3
`
`Basis
`
`§ 103
`
`§ 103
`
`Challenged Claim
`
`1
`
`1
`
`Samsung Electronics Co., Ltd. v. Iron Oak Technologies, Case IPR2018-
`
`01553, slip op. at 4, 19 (PTAB February 27, 2019) (Paper 9) (“1553 Dec.”).
`
`III. INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds of
`
`unpatentability as the ones on which we instituted review in the 1553 IPR.
`
`Compare Pet. 17–64, with 1553 Dec. 4, 19. Indeed, Petitioner contends that
`
`the Petition “is substantially identical to the Samsung Petition, with only
`
`formal matters (such as the caption, mandatory notices, signature of counsel
`
`and certificate of service) changed.” Mot. 3. Petitioner further explains that
`
`it relies on the same declaration from the same expert. Id. at 5.
`
`Patent Owner’s Preliminary Response is “substantively identical to
`
`the Preliminary Response filed by Patent Owner in IPR2018-01553.”
`
`Prelim. Resp. 1. For the same reasons set forth in our institution decision in
`
`the 1553 IPR, we determine that the information presented in the Petition
`
`shows a reasonable likelihood that Petitioner would prevail in showing that
`
`claim 1 is unpatentable. See 1553 Dec. 8–18. Accordingly, we institute an
`
`
`
`1 U.S. Patent No. 5,619,412, issued Apr. 8, 1997 (Ex. 1008, “Hapka”).
`2 U.S. Patent No. 5,442,553, issued Aug. 15, 1995 (Ex. 1009, “Parrillo”).
`3 U.S. Patent No. 5,155,689, issued Oct. 13, 1992 (Ex. 1014, “Wortham”).
`
`3
`
`
`
`IPR2019-00111
`Patent 5,699,275
`
`inter partes review on the same grounds as the ones on which we instituted
`
`review in the 1553 IPR.
`
`IV. GRANT OF MOTION FOR JOINDER
`
`The Petition in this proceeding was accorded a filing date of October
`
`24, 2018. See Paper 5. The 1553 IPR was instituted on February 27, 2019.
`
`Petitioner filed a Motion for Joinder on March 6, 2019. Paper 7. Thus,
`
`Petitioner’s Motion for Joinder is timely because joinder was requested no
`
`later than one month after the February 27, 2019 institution date of the 1553
`
`IPR. See 37 C.F.R. § 42.122(b).
`
`The statutory provision governing joinder in inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads:
`
`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.
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition;
`
`(3) explain what impact (if any) joinder would have on the trial schedule for
`
`the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`The Petition in this case asserts the same unpatentability grounds on
`
`which we instituted review in the 1553 IPR. See Mot. 3. Petitioner further
`
`explains that it relies on the same prior art analysis and declaration from the
`
`4
`
`
`
`IPR2019-00111
`Patent 5,699,275
`
`same expert. Id. at 5. Thus, this inter partes review does not present any
`
`ground or matter not already at issue in the 1553 IPR.
`
`If joinder is granted, Petitioner anticipates participating in the
`
`proceeding in a limited capacity absent termination of the petitioner in the
`
`1553 IPR (“Samsung”) as a party. Id. at 6–8. Petitioner agrees to assume an
`
`“understudy” role in the 1553 IPR, “so long as Samsung remains an active
`
`party in IPR2018-01553.” Id. at 6. Petitioner further represents that it will
`
`not “raise any new grounds not already instituted by the Board, or introduce
`
`any argument or discovery not already introduced by Samsung.” Id. at 7–8.
`
`Because Petitioner expects to participate only in a limited capacity,
`
`Petitioner submits that joinder will not impact the trial schedule for the 1553
`
`IPR. Id. at 6–8.
`
`We agree with Petitioner that joinder with the 1553 IPR is appropriate
`
`under the circumstances. Accordingly, we grant Petitioner’s Motion for
`
`Joinder.
`
`
`
`Accordingly, it is:
`
`V. ORDER
`
` ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claim 1 of the ’275 patent is instituted in IPR2019-00111;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`
`01553 is granted, and Google LLC is joined as a petitioner in IPR2018-
`
`01553;
`
`FURTHER ORDERED that IPR2019-00111 is terminated under
`
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2018-
`
`01553;
`
`5
`
`
`
`IPR2019-00111
`Patent 5,699,275
`
`
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`
`trial in IPR2018-01553 remain unchanged;
`
`
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`
`Order in place for IPR2018-01553 (Paper 10) remains unchanged;
`
`FURTHER ORDERED that in IPR2018-01553, Samsung and
`
`Petitioner will file each paper, except for a motion that does not involve the
`
`other party, as a single, consolidated filing, subject to the page limits set
`
`forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
`
`consolidated filing;
`
`FURTHER ORDERED that for any consolidated filing, if Petitioner
`
`wishes to file an additional paper to address points of disagreement with
`
`Samsung, Petitioner must request authorization from the Board to file a
`
`motion for additional pages, and no additional paper may be filed unless the
`
`Board grants such a motion;
`
`FURTHER ORDERED that Samsung and Petitioner shall collectively
`
`designate attorneys to conduct the cross-examination of any witness
`
`produced by Patent Owner and the redirect of any witness produced by
`
`Samsung and Petitioner, within the timeframes set forth in 37 C.F.R.
`
`§ 42.53(c) or agreed to by the parties;
`
`FURTHER ORDERED that Samsung and Petitioner shall collectively
`
`designate attorneys to present at the oral hearing, if requested and scheduled,
`
`in a consolidated argument;
`
`FURTHER ORDERED that the case caption in IPR2018-01553 shall
`
`be changed to reflect joinder of Google LLC as a petitioner in accordance
`
`with the attached example; and
`
`6
`
`
`
`IPR2019-00111
`Patent 5,699,275
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the record of IPR2018-01553.
`
`
`
`PETITIONER:
`
`Matthew A. Smith
`Andrew S. Baluch
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`
`PATENT OWNER:
`
`Albert Deaver
`JONES WALKER LLP
`adeaver@joneswalker.com
`
`Robert McAughan
`Jeffrey Andrews
`Christopher Lonvick
`YETTER COLEMAN LLP
`bmcaughan@yettercoleman.com
`jandrews@yettercoleman.com
`clonvick@yettercoleman.com
`
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`7
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`IPR2019-00111
`Patent 5,699,275
`
`
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`EXAMPLE CAPTION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-015534
`Patent 5,699,275
`_______________
`
`
`
`
`4 Google LLC, who filed a petition in IPR2019-00111, has been joined as a
`petitioner in this proceeding.
`
`8
`
`
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