Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OHIO FARMERS INSURANCE COMPANY and PREGIS LLC,
`Petitioner,
`v.
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2022-00217
`Patent 7,231,379 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`McNEILL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Ohio Farmers Insurance Company d/b/a Westfield and Pregis LLC
`(collectively “Petitioner”), filed a Petition (Paper 2, “Pet.”) requesting an
`
`
`
`
`571-272-7822
`
`Paper 9
`Date: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OHIO FARMERS INSURANCE COMPANY and PREGIS LLC,
`Petitioner,
`v.
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2022-00217
`Patent 7,231,379 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`McNEILL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Ohio Farmers Insurance Company d/b/a Westfield and Pregis LLC
`(collectively “Petitioner”), filed a Petition (Paper 2, “Pet.”) requesting an
`
`
`
`
`
`IPR2022-00217
`U.S. Patent 7,231,379
`inter partes review of claims 1‒7 of U.S. Patent No. 7,231,379 B2
`(Ex. 1001, “the ’379 patent”). On the same day, Petitioner filed a Motion for
`Joinder with Elastic N.V. v. Guada Technologies, LLC, IPR2021-00875
`(“the Elastic IPR”). Paper 3 (“Mot.”). Guada Technologies, LLC (“Patent
`Owner”) did not file a Preliminary Response or an opposition to Petitioner’s
`Motion for Joinder.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and any preliminary response “shows that 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 that follow,
`we institute an inter partes review as to claims 1‒7 of the ’379 patent on all
`grounds of unpatentability asserted in the Petition and grant Petitioner’s
`Motion for Joinder.
`B. Real Parties in Interest
`Petitioner identifies Ohio Farmers Insurance Company d/b/a
`Westfield, Westfield Insurance Company, Westfield National Insurance
`Company, and Pregis LLC as the real parties-in-interest. Pet. 10.
`C. Related Matters
`Petitioner identifies Elastic N.V. v. Guada Technologies LLC,
`IPR2021-00875 as a related matter. The Elastic IPR Decision on Institution
`lists other related matters. IPR2021-00875, Paper 7 at 2‒3 (“Elastic Dec.”).
`D. Evidence
`Petitioner relies on the following prior art:
`U.S. Patent No. 6,731,724, issued May 4, 2004, filed June
`22, 2001 (Ex. 1004, “Wesemann”);
`
`2
`
`
`
`IPR2022-00217
`U.S. Patent 7,231,379
`U.S. Patent No. No. 6,366,910, issued April 2, 2002 (Ex. 1005,
`“Rajaraman”); and
`U.S. Patent No. 7,539,656, issued May 26, 2009, filed
`March 6, 2001 (Ex. 1006, “Fratkina”).
`E. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1‒7 would have been unpatentable on the
`following grounds:
`Claim(s) Challenged
`1, 2, 7
`3‒6
`1, 2, 7
`3‒6
`
`
`
`35 U.S.C. §
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Reference(s)/Basis
`Wesemann
`Wesemann, Rajaraman
`Fratkina
`Fratkina, Rajaraman
`
`II. ANALYSIS
`
`A. The Elastic Petition
`On May 3, 2021, Elastic N.V. filed a petition requesting an inter
`partes review of claims 1‒7 of the ’379 patent. See IPR2021-00875, Paper 1
`(“Elastic Petition” or “Elastic Pet.”). On October 28, 2021, we instituted an
`inter partes review of claims 1‒7 of the ’379 patent in the Elastic IPR.
`Elastic Dec.
`B. Reasonable Likelihood of the Instant Petition
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see
`37 C.F.R § 42.4(a) (delegating authority to institute trial to the Board). We
`address whether the Petition in this proceeding reaches the institution
`threshold before turning to Petitioner’s Motion for Joinder.
`
`3
`
`
`
`IPR2022-00217
`U.S. Patent 7,231,379
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the grounds on which we instituted review in the Elastic
`IPR. Compare Pet. 1, 11‒91, with Elastic Pet. 1, 12‒91; see also Elastic
`Dec. 5‒25 (discussing asserted grounds). The Petition relies on an expert
`declaration that is substantively identical to the expert declaration relied on
`in the Elastic Petition. Compare Ex. 1007 with IPR2021-00875, Ex. 1007.
`Petitioner contends, and we agree, that the Petition and the Elastic Petition
`“are substantially identical; they contain the same grounds (based on the
`same prior art combination and supporting evidence) against the same
`claims.” See Mot. 2.
`For the reasons set forth in our institution decision in the Elastic IPR,
`we determine the information presented in the instant Petition shows a
`reasonable likelihood that Petitioner would prevail in showing claims 1–7
`would have been obvious over the asserted references. See Elastic Dec. 5‒
`25.
`
`Petitioner’s Motion for Joinder
`C.
`We have authority under 35 U.S.C. § 315(c) to join a properly filed
`inter partes review petition to an instituted inter partes review. A motion for
`joinder must be filed “no later than one month after the institution date of
`any inter partes review for which joinder is requested.”
`37 C.F.R. § 42.122(b).
`The Petition in this proceeding was accorded a filing date of
`November 22, 2021. Paper 4 (Notice of Filing Date Accorded). Petitioner’s
`Motion for Joinder was filed the same day. Paper 3. The Elastic IPR was
`instituted on October 28, 2021. Elastic Dec. 1. Petitioner contends that its
`Motion for Joinder is timely because joinder was requested no later than one
`
`4
`
`
`
`IPR2022-00217
`U.S. Patent 7,231,379
`month after the institution of the Elastic IPR. Mot. 3. We agree that
`Petitioner’s Motion for Joinder is timely.
`In its Motion, Petitioner contends that joining this proceeding with the
`Elastic IPR will allow the Board to “efficiently ‘secure the just, speedy, and
`inexpensive resolution’ of the [present] Petition and Elastic IPR in a single
`proceeding.” Mot. 4. (quoting 37 C.F.R. § 42.1(b)).
`As noted previously, Petitioner asserts the same unpatentability
`grounds on which we instituted review in the Elastic IPR. See Mot. 4 (“[T]he
`[present] Petition introduces the same prior art and the same grounds raised
`in the existing Elastic proceeding.”). Petitioner relies on the same prior art
`analysis and a substantively identical expert declaration as presented in the
`Elastic Petition. See Mot. 4 (“Other than minor differences, such as
`differences related to the formalities of a different party filing the petition,
`there are no changes to the facts, citations, evidence, or grounds introduced
`in the Elastic IPR petition.”).
`Accordingly, this inter partes review does not present any ground or
`matter not already at issue in the Elastic IPR. Furthermore, if joinder is
`granted, Petitioner will participate in the proceeding in a limited understudy
`capacity absent termination of Elastic as a party. Mot. 6‒8; Mot. 1 (“if
`Petitioners join the Elastic IPR, Petitioner will act as an ‘understudy’ and
`will not assume an active role unless the current petitioner ceases to
`participate in the instituted IPR”). Petitioner proposes its understudy role to
`be the following:
`(a) Petitioners will not make any substantive filings;
`(ii) Petitioners will not present any argument at the oral hearing
`or make any presentation at the oral hearing for the IPR;
`
`5
`
`
`
`IPR2022-00217
`U.S. Patent 7,231,379
`(iii) Petitioners will not seek to take cross examination testimony
`of any witness or have a role in defending the cross-examination
`of a witness in the IPR;
`(iv) Petitioners will not seek discovery from Patent Owner in the
`IPR; and
`(v) Petitioners will otherwise remain completely inactive.
`Mot. 7‒8. Petitioner represents that it will abide by the “completely inactive”
`role described by the Board in Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-
`00376, Paper 8 at 3. Mot. 7.
`Because Petitioner expects to participate only in this limited capacity,
`Petitioner submits that joinder will not impact the trial schedule for the
`Elastic IPR. Mot. 8 (“By Petitioners accepting ‘understudy’ roles, Patent
`Owner and Elastic can comply with the current trial schedule set by the
`Board and avoid any duplicative efforts by the Board or the Patent Owner.”).
`In view of the particular circumstances of this case, we agree with
`Petitioner that joinder is appropriate in these circumstances because joinder
`will not unduly burden the parties to the Elastic IPR while efficiently
`resolving the question of the unpatentability of claims 1–7 of the ’379 patent
`in a single proceeding. See, e.g., Mot. 1.
`III. CONCLUSION
`Having determined the Petition meets the threshold of institution, we
`institute an inter partes review on the same grounds as the ones on which we
`instituted review in the Elastic IPR. Having instituted review and having
`determined joinder of Petitioner to the Elastic IPR is appropriate in these
`circumstances, we grant Petitioner’s Motion for Joinder.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`
`6
`
`
`
`IPR2022-00217
`U.S. Patent 7,231,379
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is instituted as to claims 1‒7 of the ’379 patent with respect to all
`grounds of unpatentability presented in the Petition;
`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`00875 is granted, and Ohio Farmers Insurance Company d/b/a Westfield and
`Pregis LLC are joined as petitioners in IPR2021-00875;
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2021-00875 remain unchanged;
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2021-00875 (Paper 8) remains unchanged;
`FURTHER ORDERED that in IPR2021-00875, the Elastic Petitioner
`and Petitioner will file each paper, except for a motion that does not involve
`the other party, as a single, consolidated filing, as set forth in 37 C.F.R.
`§ 42.24, and shall identify each such filing as a consolidated filing of the
`petitioners;
`FURTHER ORDERED that subject to Petitioner’s “understudy role”
`as defined herein, the Elastic Petitioner 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 the
`Elastic Petitioner and Petitioner, within the timeframes set forth in 37 C.F.R.
`§ 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that subject to Petitioner’s “understudy role,”
`the Elastic Petitioner 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 IPR2021-00875 shall
`be changed to reflect joinder of Ohio Farmers Insurance Company d/b/a
`
`7
`
`
`
`IPR2022-00217
`U.S. Patent 7,231,379
`Westfield and Pregis LLC as petitioners in accordance with the below
`example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00875.
`
`
`
`8
`
`
`
`IPR2022-00217
`U.S. Patent 7,231,379
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ELASTIC N.V., OHIO FARMERS INSURANCE COMPANY,
`and PREGIS LLC,
`Petitioner,
`v.
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2021-008751
`Patent 7,231,379 B2
`
`
`
`
`
`
`1 Ohio Farmers Insurance Company and Pregis LLC, who filed a petition in
`IPR2022-00217, have been joined as petitioners in this proceeding.
`
`9
`
`
`
`IPR2022-00217
`U.S. Patent 7,231,379
`FOR PETITIONER:
`
`Jeff E. Schwartz
`Ryan N. Miller
`FOX ROTHSCHILD LLP
`jeschwartz@foxrothschild.com
`rmiller@foxrothschild.com
`
`Matthew Argenti
`Michael Rosato
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`
`
`FOR PATENT OWNER:
`
`Sanjay Pant
`PRA Law
`spant@pralawllc.com
`
`Gautham Bodepudi
`gbodepudi@outlook.com
`
`10
`
`
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