Paper 15
`Trials@uspto.gov
`Date: March 25, 2020
`
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLOOMREACH, INC.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2019-01304 (Patent 7,231,379 B2)
`____________________________________________
`
`ORACLE CORP.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2020-00598 (Patent 7,231,379 B2)
`____________
`
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`ORDER
`Denying Request to Maintain IPR2019-01304
`37 C.F.R. § 42.5
`
`
`Trials@uspto.gov
`Date: March 25, 2020
`
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLOOMREACH, INC.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2019-01304 (Patent 7,231,379 B2)
`____________________________________________
`
`ORACLE CORP.,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`IPR2020-00598 (Patent 7,231,379 B2)
`____________
`
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`ORDER
`Denying Request to Maintain IPR2019-01304
`37 C.F.R. § 42.5
`
`
`
`IPR2019-01304
`Patent 7,231,379
`
`
`On January 23, 2020, we instituted inter partes review of claims 1‒7
`of U.S. Patent No. 7,231,379 B2 (“the ’379 patent”). Paper 11. On February
`19, 2020, Oracle Corp. filed a Petition in IPR2020-00598 seeking inter
`partes review of claims 1‒7 of the ’379 patent. IPR2020-00598, Paper 2.
`Oracle also filed a Motion for Joinder seeking to join IPR2020-00598 with
`IPR2019-01304. IPR2020-00598, Paper 3. Oracle states the Petition in
`IPR2020-00598 is intentionally identical to the Petition filed in IPR2019-
`01304. Id. at 1. The motion for joinder has not yet been decided.
`On February 21, 2020, BloomReach and Guada Technologies filed a
`Joint Motion to Terminate IPR2019-01304. IPR2019-01304, Paper 13. The
`parties also filed a Joint Request to Treat Settlement Agreement as Business
`Confidential. IPR2019-01304, Paper 14.
`On February 26, 2020, the Board received an email from Oracle
`seeking authorization to request, via motion or other means, that
`IPR2019-01034 be maintained until such time as the motion for joinder in
`IPR2020-00598 is decided.
`On March 3, 2020, Judges McNeill, McGraw, and Quinn participated
`in a conference call with Oracle, BloomReach, and Guada Technologies
`regarding Oracle’s request. Oracle asserted that maintaining IPR2019-01304
`until the Motion for Joinder in IPR2020-00598 is decided would promote
`Board efficiency, specifically by ensuring the same panel decides IPR2019-
`01304 and IPR2020-00598. Oracle indicated that the Petition in IPR2020-
`00598 was filed within the one year deadline under 35 U.S.C. § 315(b).
`Oracle also made two contingent requests in the event that the Board
`maintains IPR2019-01304. First, Oracle requested that the Board vacate the
`scheduling order in IPR2019-01304 until the Motion for Joinder in
`
`2
`
`
`
`IPR2019-01304
`Patent 7,231,379
`
`IPR2020-00598 is decided. Second, Oracle also requested that the Board set
`an earlier deadline for Patent Owner’s Preliminary Response in IPR2020-
`00598 to expedite the process of joining the cases.
`Guada Technologies, Patent Owner in both IPR2019-01304 and
`IPR2020-00598, opposed Oracle’s requests. In particular, Guada
`Technologies opposed Oracle’s request to maintain IPR2019-01304, arguing
`a Petitioner should not be permitted to choose the panel for an inter partes
`review. Guada Technologies opposed Oracle’s request for an earlier
`deadline for Patent Owner’s Preliminary Response in IPR2020-00598,
`arguing this would prejudice Patent Owner.
`The Board may determine a proper course of conduct in a proceeding
`for any situation not specifically covered by Board Rules. 37 C.F.R. § 42.5.
`Based on the totality of the circumstances, Oracle has not shown sufficient
`reason to grant its request for authorization to file a motion to maintain
`IPR2019-01304 until the motion for joinder in IPR2020-00598 has been
`decided. Oracle admitted during the conference call that there is no statutory
`bar under 35 U.S.C. § 315 that would prevent the Board from considering
`the Petition in IPR2020-00598 in the event Oracle’s joinder motion is
`denied. Moreover, Oracle’s argument for efficiency is premised on a
`presumption that Oracle’s joinder motion must be granted in order for the
`same panel to decide the later filed IPR2020-00598. Board procedures for
`paneling a new case in which a request for joinder has been filed, however,
`include a presumption that the new case should be assigned to the same
`panel as the existing case to which joinder is requested. See PTAB Standard
`Operating Procedure 1 (Rev. 15) Assignment of Judges to Panels, at 10,
`available at
`
`3
`
`
`
`IPR2019-01304
`Patent 7,231,379
`
`https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20
`FINAL.pdf.
`Accordingly, we deny Oracle’s request to maintain IPR2019-01304
`until the motion for joinder in IPR2020-00598 is decided. We also deny
`Oracle’s contingent requests regarding the Scheduling Order in IPR2019-
`01304 and the deadline for Patent Owner’s Preliminary Response in
`IPR2020-00598.
`
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Oracle’s Request for authorization to file a motion to
`maintain IPR2019-01304 is denied, and
`FURTHER ORDERED that Oracle’s Request to set vacate the
`Scheduling Order in IPR2019-01304 is denied, and
`FURTHER ORDERED that Oracle’s Request to set an earlier
`deadline for Patent Owner’s Preliminary Response in IPR2020-00598 is
`denied.
`
`
`
`
`4
`
`
`
`IPR2019-01304
`Patent 7,231,379
`
`PETITIONER:
`
`Dion Bregman
`Michael Lyons
`Ahren Hsu-Hoffman
`MORGAN LEWIS
`dion.bregman@morganlewis.com
`michael.lyons@morganlewis.com
`ahren.hsu-hoffman@morganlewis.com
`
`
`PATENT OWNER:
`
`Isaac Rabicoff
`RABICOFF LAW
`isaac@rabilaw.com
`
`5
`
`
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