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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
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`CHEGG, INC., MATCH GROUP, LLC, AND RPX CORPORATION
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`Petitioners,
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`v.
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`NETSOC, LLC
`
`Patent Owner
`
`_________________________
`
`Case No. IPR2019-01171
`
`U.S. Patent No. 9,978,107
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`_________________________
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`PATENT OWNER NETSOC, LLC’S REQUEST FOR JOINDER
`PURSUANT TO 37 C.F.R. § 42.122 (b)
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`Table of Contents
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`I.
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`PATENT OWNER REQUESTS JOINDER OF
`CASE NO. IPR2019-01165 AND CASE NO. IPR2019-01171……….1
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`II. TWO IPRS ON THE SAME CLAIMS OF THE
`SAME PATENT ARE NOT AN EFFICIENT USE
`OF JUDICIAL RESOURCES…………………………………………2
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`III. RELIEF REQUESTED………………………………………………...6
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`i
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`Patent Owner’s Exhibits
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`
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`Exhibit
`No.
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`2001 U.S. Patent App. Publ. No. 2004/0117528Al (“Beacher”)
`
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`Description
`
`2002 U.S. Patent App. Publ. No. 2007/0005750Al (“Lunt”)
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`2003 U.S. Patent App. Publ. No. 2002/0059201Al (“Work”)
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`2004
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`Cumulative Reference Citation Chart
`
`2005
`
`Neil Ziegman, N.P.Z., Inc. v. Stephens, IPR2015-01860, Paper 11
`
`2006
`
`Chegg, Inc. Match Group, LLC, and RPX Corp. v. NetSoc, LLC,
`
`Petition for Inter Partes Review of U.S. Patent No. 9,978,107
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`(Claims 1-11), IPR2019-01171, filed June 6, 2019.
`
`2007
`
`NetSoc, LLC v. Match Group, LLC, Defendant Match Group,
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`LLC’s Motion to Dismiss, Civil Action No. 3:18-CV-01809-N,
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`Document 33 (N.D. Tex. Jan. 4, 2019).
`
`2008
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`NetSoc, LLC v. Match Group, LLC, Memorandum Opinion and
`
`Order, Civil Action No. 3:18-CV-01809-N, Document 62 (N.D.
`
`Tex. July 22, 2019).
`
`ii
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`
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`
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`2009
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`NetSoc, LLC v. Match Group, LLC, Defendant Match Group,
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`LLC’s Motion for New Trial, Civil Action No. 3:18-CV-01809-N,
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`Document 66 (N.D. Tex. Aug. 19, 2019).
`
`2010 Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, Decision
`
`Denying Petitioner’s Requests for Rehearing, IPR2016-01357;
`
`IPR2016-01358; IPR2016-01359; IPR2016-01360; IPR2016-
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`01361 Paper 19 at 15-16 (PTAB Sept. 6, 2017).
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`2011
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`Chegg, Inc. Match Group, LLC, and RPX Corp. v. NetSoc, LLC,
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`IPR2019-01165 and IPR2019-01171, Paper 10, at 5 (PTAB Aug.
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`15, 2019).
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`2012
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`NHK Spring v. Intri-Plex Techs, IPR2018-00752, Paper 8 at 20-21
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`(PTAB Sept. 12, 2018).
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`2013
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`Facebook v. EveryMD.com, IPR2017-02027, Paper 24 at 2 (Oct. 9,
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`2018).
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`2014
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`83 FR 51340.
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`2015
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`35 U.S.C. § 316(a)(11).
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`2016
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`37 C.F.R. § 42.72.
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`2017
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`Cloudflare, Inc. v. Blackbird Tech LLC, Case IPR2018-00804,
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`Paper 19 (PTAB June 5, 2019).
`
`iii
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`2018
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`Facebook, Inc. v. Silver State Intellectual Techs., Inc., Cases
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`IPR2018-00888 and IPR2018-00889, Paper 7 (PTAB June 28,
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`2018).
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`2019
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`Facebook, Inc. v. Bascom Research, LLC, Case CBM2014-00138,
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`Paper 16 (PTAB Feb. 24, 2015).
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`2020
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`Ex Parte Wada and Murphy, BPAI Appeal No. 2007-3733
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`(January 14, 2008)
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`2021
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`CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed.
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`Cir. 2003)
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`2022
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`In re Royka, 490 F.2d 981, 985 (CCPA 1974)
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`2023
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`Plaintiff’s Opening Claim Construction Brief in NetSoc, LLC v.
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`Match Group, LLC, Defendant Match Group, LLC’s Motion to
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`Dismiss, Civil Action No. 3:18-CV-01809-N (Documents 49)
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`April 18, 2019.
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`2024
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`Plaintiff’s Responsive Claim Construction Brief NetSoc, LLC v.
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`Match Group, LLC, Defendant Match Group, LLC’s Motion to
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`Dismiss, Civil Action No. 3:18-CV-01809-N (Document 53) May
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`9, 2019.
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`2025
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`37 C.F.R. 42.104(b)(2).
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`iv
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`I. PATENT OWNER REQUESTS JOINDER OF CASE NO. IPR2019-
`01165 AND CASE NO. IPR2019-01171
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`Patent Owner NETSOC, LLC (“NETSOC”) files this Request for Joinder
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`
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`pursuant to 37 C.F.R. § 42.122 (b), setting forth reasons why multiple inter partes
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`review (“IPR”) proceedings challenging claims 1-11 of U.S. Patent No. 9,978,107
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`(“the ‘107 patent”) (“Ex. 1001”) are unnecessary. The same patent is the subject of
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`both Petitions and the Petitioners are the same. The same expert declaration was used
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`for both petitions. In addition, the same exhibit list, with various exhibits marked as
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`**Reserved was used in each petition. Clearly, the Petitioner is treating the
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`proceedings as one with the benefit of twice the word limit. As both inter partes
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`review proceedings have been instituted, Patent Owner requests that Case No.
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`IPR2019-01165 and Case No. IPR2019-01171 be joined for the sake of efficiency.
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`In addition to Patent Owner’s previous arguments for combining the IPRs in Patent
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`Owner NETSOC, LLC’s Response to Petitioners’ Notice Pursuant to Order
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`Regarding Conduct of the Proceeding 37 C.F.R. § 42.5 filed September 10, 20191,
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`Patent Owner hereby stipulates that it will not attempt to antedate the references in
`
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`1 Patent Owner NETSOC, LLC’s Response to Petitioners’ Notice Pursuant to
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`Order Regarding Conduct of the Proceeding 37 C.F.R. § 42.5 filed September 10,
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`2019.
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`1
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`IPR2019-01171 proceeding.2 Patent Owner stipulates that Collins3 and Abrams4
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`qualify as prior art.5 Therefore, a material difference between the Petitions no longer
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`exists.6
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`II. TWO IPRS ON THE SAME CLAIMS OF THE SAME PATENT ARE
`NOT AN EFFICIENT USE OF JUDICIAL RESOURCES
`
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`Chegg, Match Group, and RPX filed a Notice stating that the differences
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`between the two Petitions7 are 1) different obviousness rationales and 2) different
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`2 Decision Granting Institution of Inter Parties Review 35 U.S.C. § 314(a) in
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`IPR2019-01171 at pages 14-15.
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`3 Ex. 1010.
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`4 Ex. 1008.
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`5 Decision Granting Institution of Inter Parties Review 35 U.S.C. § 314(a) in
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`IPR2019-01171 at page 15.
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`6 Decision Granting Institution of Inter Parties Review 35 U.S.C. § 314(a) in
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`IPR2019-01171 at page 15.
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`7 Ex. 2006; Chegg, Inc. Match Group, LLC, and RPX Corp. v. NetSoc, LLC,
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`Petition for Inter Partes Review of U.S. Patent No. 9,978,107 (Claims 1-11),
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`IPR2019-01165, filed June 6, 2019 and Chegg, Inc. Match Group, LLC, and RPX
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`Corp. v. NetSoc, LLC, Petition for Inter Partes Review of U.S. Patent No.
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`9,978,107 (Claims 1-11), IPR2019-1171, filed June 6, 2019 (hereinafter
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`2
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`priority dates. The alleged different obviousness rationales and alleged different
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`priority dates do not warrant two separate IPRs. The same claims of the same
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`patent are addressed in each Petition. Petitioners filed 26,189 words between the
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`two parallel Petitions, almost double the words allowed in a single petition. The
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`Petitions appear to have been prepared as one Petition that was split to fit within
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`the 14,000-word limit. The same Expert Declaration was filed for both Petitions.8
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`The caption style on Dr. Goldberg’s Declaration lists both Petitions. Petitioner
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`marked the Exhibit Numbers for the other Petition as “**Reserved” in each Exhibit
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`List. Pages 1-13 of the Petitions appear to be identical except for reference to the
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`respective art cited in each Petition. The Petitioners avoided paring down their
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`arguments to fit within the word limit of a single petition, while increasing the
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`amount of work for the current Panel and the Patent Owner. The multiple Petitions
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`are not a good use of judicial resources and expend the finite resources of the
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`Board. It is an unfair that the Patent Owner must expend time and money to
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`participate in multiple IPRs, on the same claims of the same patent from the same
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`Petitioners. The Trial Practice Guide Update states “[i]n addition, multiple
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`“Petition”).
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`8 Ex. 1004; Declaration of Dr. Benjamin Goldberg.
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`3
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`petitions by a petitioner are not necessary in the vast majority of cases.”9
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`a)
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`Different obviousness rationales: The Petitioners asserted that both Petitions
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`should be considered because of different obviousness rationales. The obviousness
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`rationales put forth by the Petitioners could have and should have been included in
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`one Petition. The same claims of the same patent are being challenged. The
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`asserted different obviousness rationales are merely directed to the following claim
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`elements “shielding contact information associated with each of the multiple
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`participants”; “updating the rating associated with each of the one or more
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`participants based at least in part on the tracked response time”; and “displaying an
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`image that is included in the information associated with each of the multiple
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`participants”. The different obviousness rationales are not material because the
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`different obviousness rationales are not a justification to file multiple petitions,
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`they are a justification for multiple grounds within a petition. 37 C.F.R.
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`42.104(b)(2) allows for multiple grounds within a single petition.10 Patent Owner
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`disputes the obviousness rationales alleged by the Petitioners.
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`Different priority dates: Petitioners cited to the Trial Practice Guide Update
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`b)
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`9 Practice Guide Update (July 2019) at 26.
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`10 Ex. 2025; 37 C.F.R. 42.104(b)(2).
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`4
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`(July 2019) at page 26 in an effort to support that more than one petition may be
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`necessary. However, the sentence in the Trial Practice Guide Update following the
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`cited text states that “this should be rare”.11 Different priority dates are not material
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`because all references could have been included in one petition. The Board
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`instituted IPR2019-01165 and IPR2019-01171.12 Patent Owner stipulates that it
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`will not attempt to antedate references in the IPR2019-01171 proceeding.13 Patent
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`Owner stipulates that Collins14 and Abrams15 qualify as prior art.16
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`11 Practice Guide Update (July 2019) at 26.
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`12 Decision Granting Institution of Inter Parties Review 35 U.S.C. § 314(a) in
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`IPR2019-01165; Decision Granting Institution of Inter Parties Review 35 U.S.C. §
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`314(a) in IPR2019-01171.
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`13 Decision Granting Institution of Inter Parties Review 35 U.S.C. § 314(a) in
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`IPR2019-01171 at pages 14-15.
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`14 Ex. 1010.
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`15 Ex. 1008.
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`16 Decision Granting Institution of Inter Parties Review 35 U.S.C. § 314(a) in
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`IPR2019-01171 at page 15.
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`5
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`III. RELIEF REQUESTED
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`Patent Owner requests joinder of Case No. IPR2019-01165 and Case No.
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`IPR2019-01171 pursuant to 37 C.F.R. § 42.122 (b).
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`Dated: January 6, 2020
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`Respectfully submitted,
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`________________________
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`William P. Ramey, III
`Ramey & Schwaller, LLP
`Registration No. 44,295
`Lead Counsel for Patent Owner
`5020 Montrose Blvd., Suite 750
`Houston, Texas 77006
`(713) 426-3923 (telephone)
`(832) 900-4941 (fax)
`wramey@rameyfirm.com
`
`Counsel for Patent Owner
`NETSOC, LLC
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`6
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`CERTIFICATE OF SERVICE
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`I the undersigned, counsel with the law firm of Ramey & Schwaller, LLP, hereby
`certify that the following statements are true and correct under penalty of perjury,
`pursuant to 28 U.S.C.§ 1746:
`
`On January 6, 2020 this PATENT OWNER NETSOC, LLC’s REQUEST FOR
`JOINDER PURSUANT TO 37 C.F.R. § 42.122 (b) were served via email to the
`addresses below:
`
`Nathan J. Rees (Reg. No. 63,820)
`NORTON ROSE FULBRIGHT US LLP
`2200 Ross Avenue, Suite 3600
`Dallas, Texas 75201-7932
`Tel: 214.855.7164
`Fax: 214.855.8200
`nate.rees@nortonrosefulbright.com
`RPX_IPR_Service@nortonrosefulbright.com
`Attorney for Petitioners
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`Dated: January 6, 2020
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`__________
`____
`William P. Ramey, III
`Ramey & Schwaller, LLP
`Registration No. 44,295
`Lead Counsel for Patent Owner
`5020 Montrose Blvd., Suite 750
`Houston, Texas 77006
`(713) 426-3923 (telephone)
`(832) 900-4941 (fax)
`wramey@rameyfirm.com
`Counsel for Patent Owner
`NETSOC, LLC
`
`7
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