Trials@uspto.gov
`571-272-7822
`
`
`Paper 11
`Date: February 23, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EBAY, INC.,
`Petitioner,
`
`v.
`
`LEXOS MEDIA IP, LLC,
`Patent Owner.
`____________
`
`IPR2024-00337
`Patent 6,118,449
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, JEFFREY S. SMITH, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, 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
`
`
`
`
`
`571-272-7822
`
`
`Paper 11
`Date: February 23, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EBAY, INC.,
`Petitioner,
`
`v.
`
`LEXOS MEDIA IP, LLC,
`Patent Owner.
`____________
`
`IPR2024-00337
`Patent 6,118,449
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, JEFFREY S. SMITH, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, 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
`
`
`
`
`
`
`IPR2024-00337
`Patent 6,118,449
`
`
`INTRODUCTION
`I.
`Lexos Media IP, LLC (“Patent Owner”) is the owner of U.S. Patent
`6,118,449 (“the ’449 patent”). Paper 5, 1. On December 20, 2023, eBay
`Inc. (“Petitioner”) filed a Petition for inter partes review challenging the
`patentability of claims 1, 27, 38, and 53 of the ’449 patent. Paper 2 (“Pet.”).
`The same day, Petitioner filed a Motion for Joinder, seeking that this
`proceeding be joined with pending inter partes review IPR2023-01001
`(“01001 IPR”). Paper 3 (“Mot.” or “Motion”). After requesting and
`receiving a one week extension of time, Patent Owner filed an Opposition to
`the Motion on January 26, 2024. Paper 7 (“Opp.”). Petitioner filed a Reply
`to the Opposition on February 1, 2024. Paper 8 (“Reply”).
`Petitioner represents that the instant Petition “is substantively
`identical” to the 01001 IPR, “containing only minor differences unrelated to
`the merits of the proposed grounds.” Mot. 7. Petitioner contends that it
`stands ready to maintain the schedule in the 01001 IPR should we join
`Petitioner to the 01001 IPR, in which a motion for termination has been filed
`by the petitioner in that proceeding and Patent Owner. Reply 5; see
`IPR2023-01001, Paper 11 (Joint Motion to Terminate).
`In the interest of more quickly resolving the questions of institution
`and joinder, we issued an order accelerating the timeframe for the
`preliminary response or for waiving a preliminary response. Paper 9. Patent
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`Owner timely filed its Preliminary Response1 within that shortened
`timeframe. Paper 10 (“PO Prelim. Resp.” or “Preliminary Response”).
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under
`35 U.S.C. § 314(a), an inter partes review may not be authorized 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
`the challenged claims of the ’449 patent on all grounds of unpatentability
`presented. We also grant Petitioner’s Motion.
`INTER PARTES REVIEW
`II.
`A. Real Parties In Interest
`Petitioner identifies only itself as a real party in interest. Pet. 1.
`Patent Owner identifies only itself as the real party in interest. Paper
`5 (Patent Owner’s Mandatory Notices), 1.
`Neither party challenges the other party’s identification.
`B. Related Matters
`In addition to the 01001 IPR, Petitioner identifies IPR2023-01000,
`IPR2024-00336, and IPR2018-01755 as related. Pet. 2, 6–7. Additionally,
`Petitioner identifies as related:
`(1) Lexos Media IP, LLC v. eBay, Inc., 3:23-cv-6314 (N.D. Cal.);
`
`1 Patent Owner styles its Preliminary Response as a “Preliminary Response
`to eBay’s Petitions and Motions for Joinder to Inter Partes Review,”
`however any response to Petitioner’s Motion for Joinder should have been
`included in the Opposition. 35 U.S.C. § 313; 37 C.F.R. §§ 42.22–42.25,
`42.107.
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`(2) Lexos Media IP, LLC v. Amazon.com, Inc., No. 2:22-cv-00169
`(E.D. Tex.);
`(3) Lexos Media IP, LLC v. Walmart Inc., No. 2:22-cv-00316 (E.D.
`Tex.);
`(4) Lexos Media IP, LLC v. Overstock.com, Inc., No. 2:22-cv-02324
`(D. Kan.);
`(5) Lexos Media IP, LLC v. Nike, Inc., No. 2:22-cv-00311 (E.D. Tex.);
`(6) Lexos Media IP, LLC v. Gap Inc., No. 2:22-cv-00299 (E.D. Tex.);
`(7) Lexos Media IP, LLC v. Ulta Beauty, Inc., 2:22-cv-00292 (E.D.
`Tex.);
`(8) Lexos Media IP, LLC v. Office Depot, LLC, No. 2:22-cv-00273
`(E.D. Tex.); and
`(9) Lexos Media IP, LLC v. Target Corp., No. 2:22-cv-00175 (E.D.
`Tex.). Pet. 3; see also Pet. 3–6 (listing terminated cases).
`Patent Owner identifies (1) and (3)–(7) listed above and Lexos Media
`IP, LLC v. MSC Industrial Direct Co., No. 3-22-cv-01736 (N.D. Tex.) as
`related. Paper 5, 1.
`C. The ’449 Patent (Ex. 1001)
`The ’449 patent is directed to “[a] system for modifying a cursor
`image, as displayed on a video monitor of a remote terminal, to a specific
`image having a desired shape and appearance.” Ex. 1001, 2 code (57). The
`context of the invention relates to a graphical user interface in which a
`
`
`2 Following the practice of both parties in the 01001 IPR, Petitioner
`references the specification of U.S. Patent No. 5,995,102 (Ex. 1001, “the
`’102 patent”), parent to the ’449 patent, rather than the ’449 patent itself.
`Pet. 2 n.2. We follow this practice for this Decision.
`
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`pointing device (e.g., a mouse) is used by the user to navigate a video
`display, and in which movement of the pointing device is indicated by a
`corresponding movement of a cursor on the video display. Id. at 3:22–26,
`8:24–37. A generic cursor may be an arrow, pointing hand, hourglass, etc.
`Id. at 3:57–61. The ’449 patent relates to changing that generic cursor by
`sending data and control signals from a remote computer to replace such a
`cursor with a cursor having an appearance that is associated with other
`content being displayed to the user, e.g., a logo, mascot, or an image of a
`product or service, related to the other content being displayed to the user.
`Id. at 3:4–9, 17:5–18:3. Figure 8 of the ’449 patent, reproduced below,
`shows a web page according to the invention.
`
`In Figure 8, shown above, web page 60a is displayed to a user, including
`banner ad 62 for cola. Id. at 5:30–32, 13:31–41. The cursor to be used with
`
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`this web page changes from a standard cursor (e.g., an arrow) to cola-bottle-
`shaped cursor 44a in association with the banner ad 62. Id.
`The ’449 patent describes interactions between a server system and a
`user’s terminal to effect the cursor change. Id. at 4:4–9, 5:37–65, 7:16–40.
`The user terminal is controlled by an operating system (“OS”), and
`application programs such as a browser running on the user terminal use an
`application programming interface (“API”) to interface with the OS. Id. at
`7:29–40, Fig. 2.
`The server system transmits specified content information to the user
`terminal, including information to be displayed on the user’s computer (such
`as a hypertext markup language (“HTML”) web page), cursor display
`instruction, and cursor display code. Id. at 8:4–23. The cursor display
`instruction indicates where the cursor image data corresponding to the new
`appearance of the cursor resides. Id. at 8:49–64. The cursor display code
`causes the user’s terminal to display that cursor image data in place of the
`original cursor, using the API of the operating system to effect these
`changes. Id. at 8:34–37, 8:52–57, 13:19–30.
`D. Challenged Claims
`Claims 1 and 53 are independent. Claim 38 depends from claim 27.
`As discussed in the institution decision in the 01001 IPR, claim 27, while
`listed as being challenged, has been cancelled. 01001 IPR, Paper 9, 8–10.
`Claim 1 is reproduced below.
`1. A server system for modifying a cursor image to a specific
`image having a desired shape and appearance displayed
`on a display of a remote user’s terminal, said system
`comprising:
`[a] cursor image data corresponding to said specific image
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`[b] cursor display code, said cursor display code operable to
`modify said cursor image; and
`[c.i] a first server computer for transmitting specified content
`information to said remote user terminal [c.ii] said
`specified content information including at least one
`cursor display instruction indicating a location of said
`cursor image data, [c.ii] said cursor display instruction
`and said cursor display code operable to cause said user
`terminal to display a modified cursor image on said
`user’s display in the shape and appearance of said
`specific image, [c.iii.1] wherein said specified content
`information is transmitted to said remote user terminal by
`said first server computer responsive to a request from
`said user terminal for said specified content information,
`[c.iii.2] and wherein said specified content information
`further comprises information to be displayed on said
`display of said user’s terminal, [c.iv] said specific image
`including content corresponding to at least a portion of
`said information to be displayed on said display of said
`user’s terminal, and wherein said cursor display code is
`operable to process said cursor display instruction to
`modify said cursor image to said cursor image in the
`shape and appearance of said specific image in response
`to movement of said cursor image over a display of said
`at least a portion of said information to be displayed on
`said display of said user’s terminal, and wherein said
`specific image relates to at least a portion of said
`information to be displayed on said display of said
`remote user’s terminal.
`Ex. 1002, 18:39–19:6.
`
`E. Evidence
`Petitioner relies on the following patent evidence.
`Name
`Patent Document
`Nakagawa et al.
`U.S. Patent No. 5,835,911
`(“Nakagawa”)
`
`Exhibit
`Ex. 1005
`
`7
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`Patent 6,118,449
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`
`Nielsen
`Malamud et. al.
`(“Malamud”)
`Petitioner also relies on a declaration from Dr. Craig Rosenberg
`(Ex. 1003).
`
`U.S. Patent No. 5,937,417
`U.S. Patent No. 6,437,800 B1
`
`Ex. 1006
`Ex. 1004
`
`
`
`Reference(s)/Basis
`Malamud
`Malamud, Nakagawa
`Nielsen, Malamud
`
`F. Asserted Grounds
`Petitioner asserts that claims 1, 27, 3 38, and 53 would have been
`unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §4
`1, 27, 53
`103
`1, 27, 53
`103
`1, 27, 38, 53
`103
`G. Analysis
`We instituted an inter partes review in the 01001 IPR on all
`
`challenged claims and all asserted grounds of unpatentability. 01001 IPR,
`Paper 9 (institution decision); see also 01001 IPR, Paper 2 (the “01001
`petition”). Petitioner here challenges the same claims and asserts the same
`grounds of unpatentability as those on which we instituted the 01001 IPR.
`Compare Pet. 9, with 01001 IPR, Paper 2, 6; see also Pet. 1 (asserting that
`“[t]he instant Petition is a copycat of the petition filed in the [01001] IPR”);
`Mot. 4 (asserting that the Petition “does not present any new grounds of
`unpatentability; rather it is substantively identical to the [01001] Petition”), 7
`
`
`3 As discussed above, claim 27 has been cancelled.
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the claims
`were issued before the effective date of the AIA’s amendments to 35 U.S.C.
`§ 103, we apply the pre-AIA version of § 103 in this Decision. See
`Ex. 1002, code (45).
`
`8
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`(asserting that the Petition “involves the same patent, challenges the same
`claim, relies on the same expert declaration, and is based on the same
`grounds and combinations of prior art submitted in the [01001] Petition”).
`As indicated, Petitioner also relies on the same declarant as did the petitioner
`in the 01001 IPR. Mot. 7; compare Ex. 1003 (Declaration of Dr. Craig
`Rosenberg), with 01001 IPR, Ex. 1003 (same).
`
`In addition to arguments relating more properly to the propriety of
`granting the Motion for Joinder, Patent Owner, in its Preliminary Response,
`presents arguments similar to those presented in the 01001 IPR. Compare
`PO Prelim. Resp. 9–145, 16–19 (arguing that Malamud does not teach an
`application providing specified content information that includes
`information that is to be displayed on a display of a user’s terminal because
`that content is provided by a Windows operating system and that the
`application would not contain the files and icons) with 01001 IPR, Paper 8
`(01001 IPR Preliminary Response), 38–41, 45–51 (arguing that Malamud’s
`application does not include the specific images displayed because they
`would be unknown at the time of download); compare PO Prelim. Resp. 19–
`20 (relating to the Petition’s grounds asserting unpatentability over a
`combination of Malamud and Nakagawa and asserting the same deficiencies
`with Malamud) with 01001 IPR, Paper 8, 55–57 (same). Patent Owner
`argues that in the Preliminary Response the “substantive failings of
`Malamud are being brought into better focus” (PO Prelim. Resp. 1) but it is
`
`5 Patent Owner argues that the 01001 IPR institution decision “did not
`address the testimony of Dr. Shamos” provided in Ex. 2002, but this
`testimony was not before the Board in the 01001 IPR and the Preliminary
`Response does not discuss this testimony other than in this argument
`regarding the prior institution decision. PO Prelim. Resp. 14.
`
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`not apparent to us that new arguments are being made against the grounds in
`the Petition, and Patent Owner does not cite new evidence with respect to its
`arguments regarding Malamud.
`
`With respect to obviousness over Malamud and obviousness over
`Malamud and Nakagawa, because the grounds of unpatentability in the
`instant Petition are identical to those in the 01001 IPR, for the same reasons
`stated in our Decision to Institute in the 01001 IPR we institute inter partes
`review. See 01001 IPR, Paper 10, 22–32 (analyzing the Malamud and
`Malamud and Nakagawa challenges in the 01001 petition).
`With respect to obviousness over Nielsen and Malamud, Patent
`Owner argues that Nielsen relies on the HTML protocol and modifications
`would require changes to the HTML protocol to provide tooltips that appear
`as part of a cursor, but that Petitioner did not adequately address the real
`possibility of such a change. PO Prelim. Resp. 21–24. Patent Owner
`additionally argues that there would not have been a motivation to make
`changes to Nielsen, because, in Nielsen, the tooltip is not “indiscriminately
`and automatically displayed in response to cursor movement” but rather is
`displayed only after cessation of movement over a part of the display with an
`associated tooltip. Id. at 24–25 (emphasis removed). These arguments are
`similar to those made in the preliminary response in the 01001 IPR. See
`01001 IPR, Paper 8, 59–61. In the institution decision in the 01001 IPR, we
`did not determine whether a likelihood of success had been shown for the
`Nielsen and Malamud ground, but provided initial views for the benefit of
`the parties, which are applicable in this proceeding as well. 01001 IPR,
`Paper 10, 34–35. As discussed above, we have made the decision to
`institute on other grounds, and we note that our institution is necessarily on
`
`10
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`Patent 6,118,449
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`all grounds in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting ... review, the
`Board will authorize the review to proceed on all of the challenged claims
`and on all grounds of unpatentability asserted for each claim.”).
`III. MOTION FOR JOINDER
`Joinder in an inter partes review is subject to the provisions of 35
`U.S.C. § 315(c):
`(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.
`To join Petitioner to the instituted 01001 IPR, the Board first
`determines whether the Petition “warrants” institution under § 314, which
`we determined above. See Facebook, Inc. Windy City Innovations, LLC,
`973 F.3d 1321, 1332 (Fed. Cir. 2020).
`The Board next determines whether to exercise “discretion to decide
`whether to ‘join as a party’ the joinder applicant,” who is the Petitioner in
`this proceeding. Id. Petitioner timely filed its Motion for Joinder on
`December 20, 2023 (i.e., within one month after the institution of the
`01001 IPR on December 12, 2023). See Mot.; 01001 IPR, Paper 9; 37
`C.F.R. § 42.122(b). As moving party, Petitioner bears the burden of proving
`that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding
`whether to join a case, we consider (1) the reasons why joinder is
`appropriate, (2) whether the petition raises any new grounds of
`unpatentability, (3) any impact that joinder would have on the cost and trial
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`schedule for the existing review, and (4) whether joinder will add to the
`complexity of briefing or discovery. Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal
`Board, Consolidated Trial Practice Guide, 76 (Nov. 2019),
`https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf.
`The Petition (1) is substantially identical to the 01001 IPR petition, (2)
`contains the same grounds based on the same evidence, and (3) relies on the
`same declaration of Dr. Craig Rosenberg. (Ex. 1003). Mot. 1, 7–10 & n.1.
`Petitioner represents that joinder will not impact the 01001 IPR schedule.
`Id. at 4; Reply 5. Petitioner also represents that it will accept an
`“understudy” role unless and until [the 01001 petitioner] is terminated from
`the proceeding. Mot. 4, 9–10. Petitioner represents that in its understudy
`role, it agrees that the following conditions will apply: (a) all filings by
`Petitioner in the joined proceeding be consolidated with the filings of the
`petitioner in the 01001 IPR, unless a filing solely concerns issues that do not
`involve the petitioner in the 01001 IPR; (b) Petitioner shall not be permitted
`to raise any new grounds not already instituted by the Board in the 01001
`IPR, or introduce any argument or discovery not already introduced by
`petitioner in the 01001 IPR; (c) Petitioner shall be bound by any agreement
`between Patent Owner and the petitioner in the 01001 IPR concerning
`discovery and/or depositions; and (d) Petitioner at deposition shall not
`receive any direct, cross-examination or redirect time beyond that permitted
`petitioner in the 01001 IPR alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and petitioner in the 01001 IPR. Mot. 9–
`10.
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`Patent Owner argues that Petitioner is time-barred from seeking inter
`
`partes review of the ’449 patent and is “improperly using the joinder
`procedure in an attempt to circumvent” the one-year time bar set forth in
`35 U.S.C. § 315(b). Opp. 1, 7–8. However, Patent Owner does not
`persuasively explain, and we do not discern, how filing a petition with a
`request for joinder properly under 37 C.F.R. § 42.122(b) is an improper use
`of the joinder procedure to circumvent the one-year time bar. 37 C.F.R.
`§ 42.122(b) (providing that joinder must be filed no later than one month
`after the institution date of the inter partes review for which joinder is
`requested and that the one-year time bar (§ 42.101(b)) “shall not apply
`when the petition is accompanied by a request for joinder.”)
`The parties discuss the precedential decision on sua sponte Director
`Review in Code200 v. Bright Data Ltd., IPR2022-00861, Paper 18 (Office
`of the Director of the USPTO Aug. 23, 2022) (precedential) (“Code200”).
`Mot. 4–6, 11–13; Opp. 13–14; Reply 2–4; PO Prelim. Resp. 7. Certain facts
`before us are not directly analogous to those in the Code200 proceeding, as
`the decision vacated in Code200 denied a joinder petition under the 35
`U.S.C. § 314(a) under the Board’s discretion to deny institution after
`considering the factors as set forth in General Plastic Indus. Co. v. Canon
`Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017)
`(precedential as to § II.B.4.i) (“General Plastic”). Here the General Plastic
`factors are not at issue; Petitioner here is not filing this Petition as a follow-
`on to prior petitions filed by Petitioner challenging claims of the same
`patent. See General Plastic 2–3, 15–19. To the extent that Patent Owner
`contends that Code200 requires us to grant joinder only upon a finding of
`“compelling evidence of invalidity” or that anticipation grounds have been
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`asserted, we disagree. See PO Prelim. Reply 3–4, 7–9 (citing IPR2022-
`00861, Paper 19). The argument that we must use a “compelling” standard
`is based on language in the subsequent Code200 decision evaluating the
`factors recited in our precedential decision in Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).
`See IPR2022-00861, Paper 19, 11–14 (PTAB October 19, 2022). Fintiv is
`also not at issue here. PO Prelim. Resp. 2 (“Patent Owner will not, in this
`proceeding, rely on the Fintiv factors.”)
`Patent Owner argues that joinder would add unnecessary procedural
`complexity and delay to the completion of the IPR proceedings, because the
`parties in the 01001 IPR have settled and, therefore, “[i]f joinder were
`granted, [Petitioner,] rather than serving an ‘understudy’ role, would serve in
`the primary role to continue proceedings that would otherwise be terminated
`completely.” Opp. 2–3. Patent Owner argues, in addition, that we should
`not allow joinder because public policy favors settlement between the parties
`to a proceeding, and even at the time of the filing of the Petition and Motion
`Petition in this proceeding was aware that a settlement was likely imminent.
`Id. at 6–7, 8–10. Patent Owner cites our precedential decision in Apple Inc.,
`v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020)
`(“Apple / Uniloc”) as standing for the proposition that “claims of assuming
`an ‘understudy’ role in an ongoing proceeding subject to a settlement by the
`original parties to the proceeding should be rejected.” Id. at 12–13.
`However, that case also applied the General Plastic factors and concluded
`that the situation involved multiple, staggered petitions by the same
`petitioner and that General Plastic applies to petitions filed with a motion
`for joinder. Apple / Uniloc, 4–7. Here, again, there is no contention the
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`Petition is a follow-up petition or that application of General Plastic is
`warranted.
`Patent Owner additionally cites several non-precedential instances in
`which joinder motions were denied in the face of a settlement in the
`proceeding to which joinder was requested. Id. at 9–13 (citing ZTE (USA)
`LLC v. Seven Networks, IPR2019-00460, Paper 18 (PTAB June 6, 2019)
`(“ZTE / Seven”); ZTE USA, Inc. v. Parthenon Unified Memory Architecture
`LLC, IPR2016-00664, Paper 10 (PTAB June 8, 2016) (“ZTE / Parthenon”);
`LG Elec., Inc. v. Cellular Commc’ns Equip. LLC, IPR2016-00711, Paper 7
`(PTAB May 13, 2016) (“LG Elec.”); CommScope, Inc. v. TQ Delta, LLC,
`IPR2022-01443, Paper 13 (PTAB Dec. 13, 2022) (“CommScope”). In each
`of these, however, the proceeding to which joinder had been requested had
`already been terminated. ZTE / Seven, 5; ZTE / Parthenon, 5; LG Elec., 3;
`CommScope, 4. Patent Owner argues that this should become a case like
`those – that we should grant the motion to terminate in the 01001 IPR
`consistent with the policy reasons that favor settlement, and then this
`proceeding would be in a similar posture. Opp. 2. Alternatively, Patent
`Owner argues that the imminent termination should guide us to not grant
`joinder, because of that policy favoring settlement. Id. However, we agree
`with Petitioner that Code200 is instructive in presenting a situation, in which
`the petitioner and patent owner in the proceeding to be joined had settled
`(Code200 v. Bright Data Ltd., IPR2022-00861, Paper 17, 5 (PTAB July 25,
`2022) (vacated)) and in which the Director nevertheless vacated a decision
`to deny a motion for joinder. Code200, 7. Furthermore, we take note of the
`emphasis in Code200 on “the Board’s mission to improve patent quality and
`restore confidence in the presumption of validity that comes with issued
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`
`patents” and “the benefits to the patent system of improving patent quality
`by reviewing the merits of the challenges raised in . . . petitions.” Code200,
`6. Those public policy considerations weigh heavily in this case.
`A grant of joinder would not implicate any issues of cooperation or
`duplication, as Petitioner here has agreed to serve as an understudy unless
`and until the petitioner in the 01001 IPR is terminated from that proceeding,
`and if that occurs, Petitioner will be the lead (and sole) petitioner in the
`01001 IPR. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the
`previously-set trial schedule in the 01001 IPR is not necessary when joinder
`is granted. See also 37 C.F.R. § 42.100(c). Even so, we anticipate that we
`would be able to conclude the 01001 IPR proceeding with a final written
`decision within one year of institution, given the possibility of stipulations
`among the parties to change certain dates in the scheduling order and our
`ability to make some additional changes in the scheduling order in that
`proceeding while still allowing time for us to issue a decision in that
`timeframe.
`For these reasons, we grant Petitioner’s Motion for Joinder and join
`Petitioner to IPR2023-01001, subject to the conditions set forth above.
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1, 38, and 53 of the ’449 patent on all
`the grounds set forth in the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and 37
`C.F.R. § 42.122, Petitioner’s Motion for Joinder is granted, and Petitioner is
`
`16
`
`
`
`IPR2024-00337
`Patent 6,118,449
`
`joined as a petitioner in IPR2023-01001, subject to the above-described
`limitations on Petitioner’s participation in that proceeding;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2023-01001 are
`unchanged and remain the only instituted grounds;
`FURTHER ORDERED that the Scheduling Order IPR2023-01001,
`and any modifications thereto, shall govern the schedule of the proceeding;
`FURTHER ORDERED that all further filings are to be made in
`IPR2023-01001;
`FURTHER ORDERED that the case caption in IPR2023-01001 for all
`further submissions shall be modified to add eBay, Inc. as a named
`Petitioner via footnote indicating the joinder of Petitioner as a party to that
`proceeding, as indicated in the attached sample case caption;6 and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record in IPR2023-01001.
`
`
`
`
`6 The parties shall modify the caption as appropriate in the event the Board
`terminates the petitioner in IPR2023-01001––i.e., replacing Amazon.com
`Inc. with eBay, Inc.
`
`17
`
`
`
`IPR2024-00337
`Patent 6,118,449
`
`FOR PETITIONER
`
`Heath J. Briggs
`Brian J. Prew
`Kathryn E. Albanese
`Joshua L. Raskin
`Vimal M. Kapadia
`GREENBERG TRAURIG, LLP
`briggsh@gtlaw.com
`prewb@gtlaw.com
`Katie.Albanese@gtlaw.com
`Joshua.Raskin@gtlaw.com
`Vimal.Kapadia@gtlaw.com
`
`
`FOR PATENT OWNER
`
`Sandeep Seth
`SETHLAW PLLC
`ss@sethlaw.com
`
`Michael W. Doell
`BUETHER JOE & COUNSELORS, LLC
`mike.doell@bjciplaw.com
`
`
`
`
`
`18
`
`
`
`
`
`Sample Case Caption
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC.,7
`Petitioner,
`v.
` DALI WIRELESS INC.,
`Patent Owner.
`____________
`
`IPR2023-01001
`Patent 6,118,449
`
`____________
`
`IPR2024-00337
`Patent 6,118,449
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7 The Board joined eBay, Inc. as (Petitioner) party to this proceeding in
`IPR2024-00337.
`
`19
`
`
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