Trials@uspto.gov
`571-272-7822
`
` Paper No. 19
` Entered: January 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHEGG INC., MATCH GROUP, LLC, AND RPX CORPORATION,
`Petitioner,
`
`v.
`
`NETSOC, LLC,
`Patent Owner.
`____________
`
`IPR2019-01165 (Patent 9,978,107 B2)
` IPR2019-01171 (Patent 9,978,107 B2)1
`
`____________
`
`
`Before KALYAN K. DESHPANDE, SHEILA F. McSHANE, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Patent Owner’s Requests for Joinder
`35 U.S.C. § 42.122(b)
`
`
`
`
`1 This Order applies to each of the listed cases. Given the similarities of
`issues, we issue one Order to be docketed in each case. The parties are not
`authorized to use this caption style.
`
`
`571-272-7822
`
` Paper No. 19
` Entered: January 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHEGG INC., MATCH GROUP, LLC, AND RPX CORPORATION,
`Petitioner,
`
`v.
`
`NETSOC, LLC,
`Patent Owner.
`____________
`
`IPR2019-01165 (Patent 9,978,107 B2)
` IPR2019-01171 (Patent 9,978,107 B2)1
`
`____________
`
`
`Before KALYAN K. DESHPANDE, SHEILA F. McSHANE, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Patent Owner’s Requests for Joinder
`35 U.S.C. § 42.122(b)
`
`
`
`
`1 This Order applies to each of the listed cases. Given the similarities of
`issues, we issue one Order to be docketed in each case. The parties are not
`authorized to use this caption style.
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`
`
`
`I. BACKGROUND
`On December 5, 2019, trials were instituted in IPR2019-01165 and
`IPR 2019-01171. On January 6, 2010, NETSOC, LLC (“Patent Owner”)
`filed Requests for Joinder Pursuant to 37 C.F.R. § 42.122(b) in both
`IPR2019-01165 (Paper 17) and IPR 2019-01171 (Paper 19) (“Joinder
`Req.”). Patent Owner did not seek Board authorization to file the Joinder
`Requests. On January 8, 2020, a teleconference between the parties, and
`Judges Amundson, Deshpande, and McShane was convened to discuss the
`Joinder Requests.
`
`Patent Owner argues that IPR2019-01165 and IPR2019-01171 should
`be joined for increased efficiency. Joinder Req. 1. Patent Owner asserts,
`similar to arguments made in its Responses to Petitioners’ Notice Pursuant
`to Order Regarding Conduct of the Proceeding (Paper 13),2 that multiple
`proceedings are not necessary. Id. at 1–2. Patent Owner contends that the
`same patent and claims are the subject of both proceedings, and the
`Petitioner is the same. Id. at 2. Patent Owner asserts that, given that
`Petitioner used the same expert declaration in both cases and the same
`exhibit list were used with some “Reserved” designations, that “Petitioner is
`treating the proceedings as one with the benefit of twice the word limit.” Id.
`Patent Owner argues that the alleged different obviousness rationales and
`alleged different priority dates of the prior art between the cases do not
`warrant two separate proceedings. Id. at 3. Patent Owner asserts that
`
`
`2 Citations are to IPR2019-01165 as representative, unless otherwise noted
`or ordered.
`
`2
`
`
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`Petitioner could have included the different obviousness challenges in one
`petition, that is, “[t]he different obviousness rationales are not material
`because the different obviousness rationales are not a justification to file
`multiple petitions, they are a justification for multiple grounds within a
`petition.” Id. at 4. Patent Owner also addresses differences in the priority
`dates of the prior art in the respective cases, which was one of the factors
`that was considered in deciding to institute trial on more than one petition
`because of the potential for the Patent Owner to antedate some of the
`references in one of the cases. See Joinder Req. 4–5; Decision Granting
`Institution (“Dec.”), Paper 14, 7–10. Prior to institution of the cases, Patent
`Owner declined to stipulate that it would not attempt to antedate, that is, it
`declined to stipulate that Collins and Abrams (prior art asserted in IPR2019-
`01171) qualify as prior art. See Dec. at 9–10. In the Joinder Requests,
`Patent Owner now indicates that it will stipulate that Collins and Abrams
`qualify as prior art, so there are no longer material differences between the
`cases. Joinder Req. 2, 4–5. Patent Owner argues that the cases could be
`more efficiently conducted if they are joined and it is an unfair that Patent
`Owner must expend time and money to participate in multiple proceedings.
`Id. at 3.
`
`During the teleconference, Patent Owner indicated that joinder of the
`cases would result in increased efficiency because less briefing would be
`permitted. Patent Owner indicated that it was unaware of the Board’s
`requirements for prior authorization of motions under § 42.20, and Patent
`Owner offered to withdraw and refile the Joinder Requests if the Board
`wished.
`
`
`
`3
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`During the teleconference, Petitioner argued that joinder was
`
`inappropriate at this stage and under the circumstances of the proceedings.
`Petitioner further objected to joinder if it results in the elimination of any of
`the grounds raised in either petition. Petitioner did not object to a reduction
`in briefing limits if the cases were joined, under the assumption that there
`would be no elimination of any ground from either petition.
`II. ANALYSIS
`The statutory provision governing joinder of inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads as follows:
`(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 partes review under section 314.
`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). As the
`moving party, Patent Owner bears the burden of proving that it is entitled to
`the requested relief. 37 C.F.R. § 42.20(c). Joinder requests are typically
`raised for petitions with similar grounds challenging the same or
`predominantly the same claims of the same patent and joinder is typically
`considered in the pre-institution phase of proceedings. In that context,
`panels of the Board have determined that a motion for joinder generally
`should: (1) set forth the 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
`
`
`
`4
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`review; and (4) specifically address how briefing and discovery may be
`simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004,
`Paper 15 at 4 (PTAB Apr. 24, 2013); FAQ H5 on the Board’s website at
`http://www.uspto.gov/patents-application-process/appealing-patent-
`decisions/trials/patent-review-processing-system-prps-0. Our determination
`of whether to exercise our discretion to join the cases is based on the specific
`facts and circumstances of these proceedings.
`
`Here, we excuse Patent Owner’s failure to request authorization to file
`the Joinder Requests, although we remind Patent Owner to seek such
`authorization in the future.
`
`
`While the Board generally grants motions for joinder of a new petition
`where the party seeking joinder introduces identical arguments and the same
`grounds raised in the existing proceeding, that is not the case here. See
`Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016–00962, Paper 12 at 9
`(PTAB Aug. 24, 2016). As noted above, trials have been already instituted
`in both IPR2019-01165 and IPR2019-01171. And, as discussed in the
`Institution Decisions, the prior art relied upon in the challenges in the
`respective proceedings is different, as shown in the table below:
`Claims Challenged
`IPR2019-01165
`IPR2019-01171
`1–3, 5–8, 10, 11
`Beaudoin, Shubov
`Collins, Walker
`Beaudoin, Shubov,
`4, 9
`Collins, Walker, Herz
` Herz
`Collins, Walker,
`
`Abrams
`
`3, 8
`
`See Dec. 7.
`
`Here, Patent Owner does not point us to any improvement in the case
`schedule that would be gained by joinder of the proceedings. Patent Owner
`5
`
`
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`only argues that less briefing which would result in greater judicial
`efficiencies. See Joinder Req. 2–4. Although Patent Owner emphasizes
`only the amount of words in the briefing in the respective petitions (see id.),
`trial has been instituted on these petitions as they stand. We do not discern
`that there will be greater simplicity or greater efficiencies that would be
`afforded to either the parties or the Board by a per se reduction in the total
`future briefing limits if the cases were joined in view of the different prior
`art and different records in the respective proceedings. Although there may
`be overlap of arguments and issues in the respective briefing—which could
`be copied over as required between the case briefs—there are issues specific
`to respective differing prior art in each proceeding that will likely need to be
`addressed separately. And because there are the separate records in the
`cases, cross-referencing and citing the two records in combined briefing
`would be cumbersome for both the parties and the Board. And we remind
`the parties that they can address issues at their discretion and, accordingly,
`full briefing allowances permitted do not have to be utilized. For instance,
`nothing compels Patent Owner to approach the 14,000-word limit in either
`of its responses.
`
`We also do not discern that joinder of the cases would result in
`increased efficiencies in discovery. The parties are expected to cooperate to
`efficiently conduct discovery, including depositions. If issues arise in the
`course of discovery, the parties may contact the Board.
`
`In sum, we are not persuaded that joinder of IPR2019-01165 and
`IPR2019-01171 will result in increased efficiencies in the proceedings.
`Accordingly, we decline to exercise our discretion to join the cases.
`
`
`
`6
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`
`ORDER
`Patent Owner’s Requests for Joinder Pursuant to 37 C.F.R.
`
`§ 42.122(b) in IPR2019-01165 and IPR 2019-01171 are denied.
`
`
`PETITIONER:
`
`Nathan J. Rees
`R. Ross Viguet
`Robert L. Greeson
`Erik Janitens
`NORTON ROSE FULBRIGHT US LLP
`nate.rees@nortonrosefulbright.com
`ross.viguet@nortonrosefulbright.com
`robert.greeson@nortonrosefulbright.com
`erik.janitens@nortonrosefulbright.com
`
`
`
`PATENT OWNER:
`
`William P. Ramey, III
`Melissa D. Schwaller
`RAMEY & SCHWALLER, LLP
`wramey@rameyfirm.com
`mschwaller@rameyfirm.com
`
`
`
`
`
`
`
`7
`
`
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