UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`MICROSOFT CORP.,
`
`Petitioner,
`
` v.
`
`VIRTAMOVE, CORP.,
`
`Patent Owner.
`____________________
`
`Case No. IPR2025-00852
`
`U.S. Patent No. 7,519,814
`_________________
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2025-00566
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`MICROSOFT CORP.,
`
`Petitioner,
`
` v.
`
`VIRTAMOVE, CORP.,
`
`Patent Owner.
`____________________
`
`Case No. IPR2025-00852
`
`U.S. Patent No. 7,519,814
`_________________
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2025-00566
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ..................... 1
`STATEMENT OF MATERIAL FACTS .................................................... 1
`STATEMENT OF THE PRECISE RELIEF REQUESTED ........................ 2
`A.
`LEGAL STANDARD .................................................................................. 2
`B.
`PETITIONER’S MOTION FOR JOINDER IS TIMELY ...................................... 2
`C.
`EACH FACTOR WEIGHS IN FAVOR OF JOINDER ....................................... 2
`1.
`Joinder is Appropriate ................................................................ 3
`2.
`Petitioner Proposes No New Grounds of Unpatentability .......... 4
`3.
`Joinder Will Not Unduly Burden or Negatively Impact
`Any Forthcoming Trial Schedule for the 00566 IPR .................. 4
`Procedures to Simplify Briefing and Discovery .......................... 5
`4.
`IV. GENERAL PLASTIC IS INAPPLICABLE ................................................. 7
`V.
`CONCLUSION .............................................................................................. 8
`
`ii
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Microsoft Corp. (“Petitioner”) respectfully submits this Motion for Joinder,
`
`together with a Petition for Inter Partes Review of U.S. Patent No. 7,519,814 (“’814
`
`Patent”) (IPR2025-00852, “the 00852 IPR Petition”) filed contemporaneously
`
`herewith. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner
`
`requests institution of an inter partes review and joinder with the inter partes review
`
`in Amazon.com, Inc. v. VirtaMove, Corp., IPR2025-00566 (“the 00566 IPR” or
`
`“00566 IPR Petition”), filed by Amazon.com, Inc. (“Amazon”). The 00852 IPR
`
`Petition is substantively identical to the 00566 IPR Petition; i.e., it is narrowly
`
`tailored to the same claims, prior art, and grounds for unpatentability that are the
`
`subject of the 00566 IPR. In addition, Petitioner is willing to streamline discovery
`
`and briefing. Petitioner understands that Amazon does not oppose Petitioner’s
`
`request for joinder.
`
`Petitioner submits that joinder is appropriate because it will not unduly burden
`
`or prejudice the parties to the 00566 IPR while efficiently resolving the question of
`
`the ’814 Patent’s validity in a single proceeding.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`On January 31, 2025, Amazon filed a petition for inter partes review
`
`(IPR2025-00566) requesting cancellation of claims 3, 5, 7, 11-12, 15-16, and 31-34 of
`
`the ʼ814 Patent.
`
`1
`
`
`
`2.
`
`Contemporaneously with this Motion, Petitioner filed its Petition for
`
`Inter Partes Review requesting cancellation of claims 3, 5, 7, 11-12, 15-16, and 31-34
`
`of the ʼ814 Patent, which is substantively identical to the 00566 IPR.
`
`III.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`A.
`Legal Standard
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
`
`inter partes review petition to an instituted inter partes review proceeding. See 35
`
`U.S.C. § 315(c). A motion for joinder must be filed within one month of the Board
`
`instituting an original inter partes review. 37 C.F.R. § 42.122(b). In deciding
`
`whether to exercise its discretion and permit joinder, the Board considers factors,
`
`including: (1) the reasons why joinder is appropriate; (2) whether the new petition
`
`presents any new grounds of unpatentability; (3) what impact, if any, joinder would
`
`have on the trial schedule for the existing review; and (4) how briefing and discovery
`
`may be simplified. Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper
`
`15 at 4 (April 24, 2013).
`
`Petitioner’s Motion for Joinder is Timely
`B.
`This Motion for Joinder is timely because it is filed before any institution
`
`decision has been made in the 00566 IPR. 37 C.F.R. § 42.122(b).
`
`Each Factor Weighs in Favor of Joinder
`C.
`Each of the four factors considered by the Board weighs in favor of joinder
`
`here. Specifically, the 00852 IPR Petition does not present any new grounds of
`
`2
`
`
`
`unpatentability; rather it is substantively identical to the 00566 IPR Petition. Further,
`
`joinder will have minimal, if any, impact on any forthcoming trial schedule, as all
`
`issues are substantively identical and Petitioner will accept an “understudy” role. See
`
`Sony Corp. et al. v. Memory Integrity, LLC, IPR2015-01353, Decision Instituting
`
`IPR Review, Motion for Joinder, Paper 11 at 6; (granting IPR where petitioners
`
`requested an “understudy” role); see also IPR2015-01353, Motion for Joinder, Paper
`
`4 at 5-7. Lastly, the briefing and discovery will be simplified by resolving all issues
`
`in a single proceeding.
`
`Joinder is Appropriate
`1.
`Joinder with the 00566 IPR is appropriate because the 00852 IPR Petition
`
`involves the same patent, challenges the same claims, relies on the same expert
`
`declaration, and is based on the same grounds and combinations of prior art
`
`submitted in the 00566 IPR Petition. The 00852 IPR Petition is substantively
`
`identical to the 00566 IPR Petition, containing only minor differences related to only
`
`other issues associated with a different party filing the petition. The 00852 IPR
`
`Petition presents no changes to the facts, citations, evidence, or arguments related to
`
`patentability presented in the 00566 IPR Petition. Because these proceedings are
`
`substantively identical, good cause exists for joining this proceeding with the 00566
`
`IPR so that the Board can efficiently resolve all grounds in both the 00852 IPR
`
`Petition and 00566 IPR Petition in a single proceeding. Id.
`
`3
`
`
`
`Petitioner Proposes No New Grounds of Unpatentability
`2.
`The 00852 IPR Petition presents the same grounds of unpatentability as the
`
`00566 IPR Petition.
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact
`Any Forthcoming Trial Schedule for the 00566 IPR
`Because the 00852 IPR Petition is substantively identical to the 00566 IPR
`
`Petition, with the same grounds challenging the same claims as in the original 00566
`
`IPR Petition, there are no new substantive issues for Patent Owner to address. Due
`
`to the same issues being presented in the 00852 IPR Petition and the 00566 IPR
`
`Petition, Patent Owner will not be required to present any additional responses or
`
`arguments. See IPR2015-01353, Decision Instituting IPR, Motion for Joinder, Paper
`
`11 at 6 (granting IPR and motion for joinder where “joinder should not necessitate
`
`any additional briefing or discovery from Patent Owner beyond that already required
`
`in [the original IPR].”); see also IPR2015-01353, Motion for Joinder, Paper 4 at 5-
`
`7.
`
`The Patent Owner Response will also not be negatively impacted because the
`
`issues presented in the 00852 IPR Petition are identical to the issues presented in the
`
`00566 IPR Petition. Patent Owner will not be required to provide any additional
`
`analysis or arguments beyond what it will already provide in responding to the 00566
`
`IPR Petition. Also, because the 00852 IPR Petition relies on the same expert and an
`
`4
`
`
`
`identical declaration, only a single deposition is needed for the proposed joined
`
`proceeding.
`
`Joinder of this proceeding with the 00566 IPR does not unduly burden or
`
`negatively impact any forthcoming trial schedule in any meaningful way. Currently,
`
`the parties will not submit a proposed scheduling order in the district court litigation
`
`against Petitioner until April 25, 2025. Trial has not been scheduled and any final
`
`written decision in the 00566 IPR would issue at least two to three months before
`
`the earliest likely trial date. Further, even if a small adjustment of the trial schedule
`
`was necessary, this is already provided for in the rules and is a routine undertaking by
`
`parties in IPR proceedings. See 37 C.F.R. § 42.100(c). Thus, a slight adjustment in
`
`the trial schedule, should one be needed, is not enough of a reason to deny joining
`
`the present 00852 IPR Petition with the 00566 IPR.
`
`Procedures to Simplify Briefing and Discovery
`4.
`The 00566 IPR Petition and 00852 IPR Petition present substantively identical
`
`grounds of unpatentability, including the same art combinations against the same
`
`claims. Additionally, Petitioner explicitly agrees to take an “understudy” role, as
`
`described by the Board:
`
`“(a) all filings by [Petitioner] in the joined proceeding be consolidated
`with [the filings of the petitioner in the 00566 IPR], unless a filing
`solely concerns issues that do not involve [the petitioner in the 00566
`IPR]; (b) [Petitioner] shall not be permitted to raise any new grounds
`
`5
`
`
`
`not already instituted by the Board in the [00566] IPR, or introduce any
`argument or discovery not already introduced by [the petitioner in the
`00566 IPR]; (c) [Petitioner] shall be bound by any agreement between
`[Patent Owner] and [the petitioner in the 00566 IPR] concerning
`discovery and/or depositions; and (d) [Petitioner] at deposition shall not
`receive any direct, cross-examination or redirect time beyond that
`permitted for [the petitioner in the 00566 IPR] alone under either 37
`C.F.R. § 42.53 or any agreement between [Patent Owner] and [the
`petitioner in the 00566 IPR].”
`
`Noven Pharmaceuticals, Inc. et al. v. Novartis AG et al., IPR2014-00550, Paper 38
`
`at 5 (Apr. 10, 2015) (emphasis in original). Petitioner will assume the primary role
`
`only if Amazon ceases to participate in the 00566 IPR.
`
`By Petitioner accepting an “understudy” role, Patent Owner and Petitioner can
`
`comply with any forthcoming trial schedule and avoid any duplicative efforts by the
`
`Board or the Patent Owner. These steps will minimize any potential complications
`
`or delay that potentially may result by joinder. See IPR2015-01353, Decision
`
`Instituting IPR, Paper 11 at 6-7 (granting IPR and motion for joinder because
`
`“joinder would increase efficiency by eliminating duplicative filings and discovery,
`
`and would reduce costs and burdens on the parties as well as the Board” where
`
`petitioners agreed to an “understudy” role.); see also IPR2015-01353, Motion for
`
`Joinder, Paper 4 at 6-7.
`
`6
`
`
`
`Accordingly, joinder should be permitted. See IPR2015-01353, Decision
`
`Instituting IPR Review, Motion for Joinder, Paper 11 at 5-6 (granting institution of
`
`IPR and motion for joinder where petitioners relied “on the same prior art, same
`
`arguments, and same evidence, including the same expert and a substantively
`
`identical declaration.”); see also IPR2015-01353, Motion for Joinder, Paper 4 at 4-
`
`5.
`
`IV. GENERAL PLASTIC IS INAPPLICABLE
`Pursuant to and in reliance on Acting Director Coke M. Stewart’s March 26,
`
`2025, Memorandum regarding Interim Processes for PTAB Workload Management,
`
`Petitioner understands that discretionary denial issues, if any, will be raised in a
`
`separate brief to be filed by Patent Owner. To the extent that Patent Owner files
`
`such a brief implicating the General Plastic factors, Petitioner intends to respond in
`
`an opposition brief consistent with the aforementioned March 26, 2025,
`
`Memorandum. Accordingly, Petitioner will not address discretionary denial issues
`
`in this Motion other than to address a threshold issue, namely, that the General
`
`Plastic analysis is inapplicable here because the Petitioner is unrelated to and lacks
`
`any legally significant relationship to Amazon or any earlier Petitioner who has filed
`
`an IPR against the ’814 patent. Olympus Corp. et al. v. Optimum Imaging Techs.,
`
`LLC, IPR2024-01220, Paper 13 at 9 (P.T.A.B. Feb. 24, 2025) (citing Videndum
`
`Prod. v. Rotolight, IPR2023-01218, Paper 12 at 5–6 (PTAB Apr. 19, 2024)).
`
`7
`
`
`
`Furthermore, as this is a parallel petition by Microsoft to IPR2025-00849, which will
`
`be filed at the same time, General Plastic is not implicated.
`
`V.
`
`CONCLUSION
`Based on the factors discussed above, Petitioner respectfully requests that the
`
`Board grant the 00852 Petition for Inter Partes Review of U.S. Patent No. 7,519,814
`
`and then grant joinder with the Amazon IPR2025-00566 proceeding.
`
`Date: April 18, 2025
`
`Respectfully submitted,
`
`DLA PIPER LLP
`
`
`By: /James M. Heintz/
`James M. Heintz, Reg. No. 41,828
`DLA Piper LLP
`One Fountain Square
`11911 Freedom Drive, Suite 300
`Reston, VA 20190-5602
`
`ATTORNEY FOR PETITIONER
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies pursuant to 37 C.F.R. §§ 42.6(e) and 42.105 that
`
`on April 18, 2025, a true and correct copy of the Motion for Joinder was served by
`
`emailing a copy of same to the following attorneys, who have agreed to accept
`
`service on behalf of Patent Owner:
`
`Reza Mirzaie
`rmirzaie@raklaw.com
`Marc A. Fenster
`mfenster@raklaw.com
`Neil A. Rubin
`nrubin@raklaw.com
`Amy E. Hayden
`ahayden@raklaw.com
`Christian W. Conkle
`cconkle@raklaw.com
`Jonathan Ma
`jma@raklaw.com
`Daniel B. Kolko
`dkolko@raklaw.com
`Jacob R. Buczko
`jbuczko@raklaw.com
`James Milkey
`
`Date: April 18, 2025
`
`jmilkey@raklaw.com
`James S. Tsuei
`jtsuei@raklaw.com
`Mackenzie Paladino
`mpaladino@raklaw.com
`
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`
`Qi (Peter) Tong
`ptong@raklaw.com
`
`RUSS AUGUST & KABAT
`4925 Greenville Ave, Suite 200
`Dallas, TX 75206
`
`
`By: /James M. Heintz/
`James M. Heintz, Reg. No. 41,828
`DLA Piper LLP
`One Fountain Square
`11911 Freedom Drive, Suite 300
`Reston, VA 20190-5602
`P: +1 703 773 4000
`F: +1 703 773 5000
`jim.heintz@dlapiper.com
`
`ATTORNEY FOR PETITIONER
`
`9
`
`
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