Google Inc.v.PersonalWeb Technologies, LLC

Patent Trial and Appeal Board

Oct 30, 2014

11980687 (P.T.A.B. Oct. 30, 2014)

Trials@uspto.gov Paper 11
571-272-7822 Entered: October 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC. and YOUTUBE, LLC,
Petitioners,

v.

PERSONALWEB TECHNOLOGIES, LLC and
LEVEL 3 COMMUNICATIONS, LLC,
Patent Owners.
____________

Case IPR2014-00978
Patent 7,802,310 B2

Before KEVIN F. TURNER, JONI Y. CHANG, and
MICHAEL R. ZECHER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION
Denying Google’s Motion for Joinder and
Denying Institution of Inter Partes Review
37 C.F.R. §§ 42.108 and 42.122
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I. INTRODUCTION
Google Inc. and YouTube, LLC (collectively “Google”) filed a
Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1, 2, 5-
8, 10-12, 14, 16-19, 24, 29, 32, 70, 81, 82, and 86 of U.S. Patent No.
7,802,310 B2 (“the ’310 Patent,” Ex. 1001). Paper 1. Google filed its
Petition along with a Motion for Joinder requesting that we join Google as a
party with Rackspace US, Inc. v. PersonalWeb Techs. LLC, IPR2014-00062.
Paper 3, “Google Mot.” In IPR2014-00062, we instituted the same grounds
of unpatentability over the same claims at issue in this proceeding. Compare
IPR2014-00062, Paper 9, with Pet. 7–8, 23–54. PersonalWeb Technologies,
LLC and Level 3 Communications, LLC (collectively “PersonalWeb”)
timely filed a combined Preliminary Response and Opposition to Google’s
Motion for Joinder. Paper 8. We have jurisdiction under 35 U.S.C. § 314.
For the reasons discussed below, we deny Google’s Motion for
Joinder as untimely and, as a result, deny the Petition because it is barred
under 35 U.S.C. § 315(b).

II. BACKGROUND
Based on authority delegated to us by the Director, we have discretion
to join an inter partes review with another inter partes review under 35
U.S.C. § 315(c), which provides:
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.
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Our patent trial regulations for inter partes reviews address the appropriate
time frame for filing a motion for joinder. 37 C.F.R. § 42.122(b) provides,
in relevant part (emphasis added), “[a]ny request for joinder must be filed, as
a motion under § 42.22, no later than one month after the institution date of
any inter partes review for which joinder is requested.”
Normally, 35 U.S.C. § 315(b) bars institution of an inter partes
review when the petition is filed more than one year after the petitioner (or
petitioner’s real party in interest or privy) is served with a complaint alleging
infringement of the patent. Our patent trial regulations for inter partes
reviews include the same provision. 37 C.F.R. § 42.101(b). The one-year
time bar, however, does not apply to a request for joinder. 35 U.S.C.
§ 315(b) (final sentence); 37 C.F.R. § 42.122(b) (final sentence). This is an
important consideration here because it is undisputed that Google filed the
Petition on June 18, 2014, which is more than a year after Google was
served with a complaint alleging infringement of the ʼ310 Patent on
December 12, 2011. Ex. 2001; see also Pet. 3 (Google confirms that
PersonalWeb asserted the ’310 Patent against it in a district court case filed
on December 8, 2011); Google Mot. 8 (Google confirms that, in 2011,
PersonalWeb sued thirteen different companies, including Google, for
allegedly infringing the ’310 Patent). Thus, absent joinder of Google as a
party to IPR2014-000062, the Petition is barred.

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III. ANALYSIS
1. Google’s Motion for Joinder Was Untimely
First, we note that Google did not file its Motion for Joinder within
one month after we instituted an inter partes review in IPR2014-00062, as
required by 37 C.F.R. § 42.122(b). Notwithstanding that Google did not
file its Motion for Joinder within the one-month time limit imposed under §
42.122(b), Google contends that we should exercise our discretion under §
42.5(b) to waive this rule. Google Mot. 1–7. Section 42.5(b) provides that
“[we] may waive or suspend a requirement of parts 1, 41, and 42 and may
place conditions on the waiver or suspension.” Absent special
circumstances, we are reluctant to exercise our discretion under § 42.5(b) to
waive the one-month time limit for filing a motion for joinder under
§ 42.122 (b).
We instituted an inter partes review in IPR2014-00062 on April 15,
2014. IPR2014-00062, Paper 9. Pursuant to § 42.122(b), if Google desired
to join IPR2014-00062 as a party, it was required to file a motion for joinder
no later than May 15, 2014. Google, however, did not file its Motion for
Joinder until June 18, 2014. Google attempts to justify this delay by arguing
that the parties in IPR2014-00062 stipulated to a thirty day extension for
DUE DATES 1 and 2 (IPR2014-00062, Paper 14) and, at the time it filed its
Motion for Joinder, only the initial conference call had occurred (IPR2014-
00062, Paper 15). Google Mot. 2. Google asserts that given the revised
schedule stipulated to by the parties in IPR2014-00062, its request for
joinder was filed during a stage in IPR2014-00062 that is contemplated by
§ 42.122(b), i.e., shortly after the date of institution, but prior to
PersonalWeb filing its Patent Owner Response. Id.
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We are not persuaded by Google’s argument. Simply because the
parties in IPR2014-00062 stipulated to new dates for DUE DATES 1 and
2—a common practice in proceedings before us—does not constitute an
extraordinary circumstance that would persuade us to waive the one-month
time limit for Google to file its Motion for Joinder. In addition, merely
because, at the time Google filed its Motion for Joinder, IPR2014-00062 was
in the early stages of trial, e.g., only the initial conference call had occurred,
does not constitute a special circumstance that would persuade us to waive
the one-month time limit for Google to files its Motion for Joinder. Without
more compelling reasons, we decline to exercise our discretion under
§ 42.5(b) to waive the one-month time limit for Google to file its Motion for
Joinder under § 42.122(b). As such, Google’s Motion for Joinder was
untimely.

2. The Termination of IPR2014-00062 Renders
Google’s Motion for Joinder Moot

Although we deny Google’s Motion to Joinder as untimely, there is at
least one additional consideration that weighs in favor of dismissing
Google’s Motion for Joinder as moot. On October 10, 2013, Rackspace US,
Inc. and Rackspace Hosting, Inc. (collectively “Rackspace”) filed a Petition
requesting an inter partes review of claims 1, 2, 5-8, 10-12, 14, 16-19, 24,
29, 32, 70, 81, 82, and 86 of the ’310 Patent. IPR2014-00062, Paper 1.
PersonalWeb timely filed a Preliminary Response. IPR2014-00062, Paper
8. As we discussed previously, on April 15, 2014, upon consideration of the
information presented in Rackspace’s Petition, as well as the arguments
presented in PersonalWeb’s Preliminary Response, we authorized an inter
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partes review to be instituted as to the challenged claims of the ’310 Patent.
IPR2014-00062, Paper 9. On October 16, 2014, Rackspace and
PersonalWeb requested that we terminate IPR2014-00062 as to all parties by
filing a Joint Motion to Terminate, as well as a true copy of their written
settlement agreement, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(b). IPR2014-00062, Paper 30; Ex. 1026. Upon consideration of
this request, we terminated IPR2014-00062. IPR2014-00062, Paper 33.
Given that IPR2014-00062 is no longer pending, it cannot serve as a
proceeding to which another proceeding may be joined. As such, the
termination of IPR2014-00062 renders Google’s Motion for Joinder moot.

3. The Petition is Barred under 35 U.S.C. § 315(b)
As we explained previously, absent joinder of Google as a party to
IPR2014-00062, the Petition is barred under § 315(b). Given that we deny
Google’s Motion for Joinder as untimely, along with the additional
consideration that it is moot because the proceeding that it sought to join—
IPR2014-00062—has been terminated, the Petition now stands alone. It is
undisputed that the Petition was filed on June 18, 2014, which is more than
one year after Google was served with a complaint alleging infringement of
the ʼ310 Patent on December 12, 2011. Ex. 2001. As a consequence,
Google is barred from pursuing an inter partes review of the ’310 Patent.

IV. CONCLUSION
In summary, we deny Google’s Motion for Joinder as untimely and,
as a result, deny the Petition because it is barred under 35 U.S.C. § 315(b).
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V. ORDER
Accordingly, it is:
ORDERED that Google’s Motion for Joinder is DENIED; and
FURTHER ORDERED that the Petition is DENIED and no trial is
instituted.
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For PETITIONERS:
Jennifer A. Sklenar
Alissa H. Faris
Emily C. Hostage
ARNOLD & PORTER LLP
Jennifer.Sklenar@aporter.com
Alissa.Faris@aporter.com
Emily.Hostage@aporter.com

For PATENT OWNERS:
Joseph A. Rhoa
Updeep S. Gill
NIXON & VANDERHYE P.C.
jar@nixonvan.com
usg@nixonvan.com