UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD Unified Patents Inc. Petitioner v. PersonalWeb Technologies & Level 3 Communications Patent Owner Patent 5,978,791

MOTION FOR JOINDER PURSUANT TO 35 U.S.C. 315(c) and 37 C.F.R. 42.22 and 42.122(b)

Mail Stop PATENT Board Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

I. STATEMENT OF THE PRECISE RELIEF REQUESTED Unified Patents, Inc., (Unified or Petitioner) submits concurrently herewith a petition for inter partes review (IPR) of U.S. Patent No. 5,978,791 (the 791 Patent) and respectfully requests that its petition be granted. Unified also respectfully moves that this proceeding be joined with the pending IPR concerning the same patent in Rackspace US, Inc. and Rackspace Hosting, Inc., v. PersonalWeb Technologies, LLC and Level 3 Communications, LLC, Case IPR2014-00057 (the Rackspace IPR). Joinder is appropriate because it will promote efficient and consistent resolution of the patentability of a single patent and will not prejudice the Rackspace IPR parties. Absent joinder, Unified may be prejudiced because, without its involvement, the Rackspace IPR may terminate pursuant to a settlement before reaching a final written decision. This Motion for Joinder is timely under 37 C.F.R. 42.22 and 42.122(b), because it is submitted within one month of April 15, 2014, the institution date of the Rackspace IPR. II. STATEMENT OF MATERIAL FACTS 1. The 791 Patent has been the subject of several IPRs: IPR2013-0082 (pending), IPR2013-00319 (denied institution), and the Rackspace IPR (pending). 2. The Rackspace IPR was filed on October 10, 2013 and was instituted on April 15, 2014.
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3. Concurrent herewith, Unified Patents files a petition for inter partes review that is substantively identical to the Rackspace IPR petition, except that the one ground of unpatentability that was not authorized for institution in the Rackspace IPR has been removed. III. STATEMENT OF REASONS FOR RELIEF REQUESTED A. Introduction Unified Patents was founded by intellectual property professionals over concerns with the increasing risk of non-practicing entities (NPEs) asserting poor quality patents against strategic technologies and industries. The founders thus created a first-of-its-kind company whose sole purpose is to deter NPE litigation by protecting technology sectors, like cloud storage, the technology at issue in the 791 patent. Unified performs many NPE-deterrent activities, such as analyzing the technology sector, monitoring patent activity, conducting prior art research and invalidity analysis, providing a range of NPE advisory services to its subscribers, sometimes acquiring patents, and sometimes challenging patents at the United States Patent and Trademark Office (USPTO). By deterring NPE litigation in cloud storage, the companies in that industry can devote more resources to technological innovation and product development, rather than defending against specious NPE patent litigations. The Patent Owner, on the other hand, is a notorious NPE in the cloud storage
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industry, having filed over 20 patent litigations involving the 791 and related patents. B. The Legal Standard The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes review proceedings. The statutory provision governing joinder of inter partes review proceedings is 35 U.S.C. 315(c), which reads as follows: (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. In exercising its discretion to grant joinder, the Board considers the impact of substantive and procedural issues on the proceedings, as well as other considerations, while being mindful that patent trial regulations, including the rules for joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See Dell, Inc. v. Network-1 Security Solutions, Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) (Dell Joinder Order) at 3. The Board should consider the policy preference for joining a party that does not present new issues that might complicate or delay an existing proceeding. Id. at 10. Under this framework, joinder of the instant case with the Rackspace IPR is appropriate. The Dell Joinder Order states that [a] motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. Id. at 4. Each of these issues is addressed fully below and each leans heavily in favor of granting joinder. C. Joinder is appropriate in the instant case Joinder of the instant proceeding to the Rackspace IPR is appropriate because this motion is timely, Unifieds petition raises no new issues, granting joinder leads to efficiencies as well as consistent results, and neither party to the Rackspace IPR will be prejudiced. This motion is timely. The Rackspace IPR was instituted on April 15, 2014, and this motion is filed within one month thereafter. See 37 C.F.R. 42.122(b) Unifieds petition raises no new issues because it is substantively identical to the Rackspace IPR petition and, in fact, removes the one ground of unpatentability that was not authorized by the Board for institution. Unified argues for the exact same unpatentability grounds, proposes the exact same claim construction, and relies upon the exact same evidence. Joinder will avoid inefficiency and potential inconsistent results by combining two proceedings into one. Denying joinder, on the other hand, prejudices either the Patent Owner or Unified and leads to a waste of the Boards resources. In the event joinder is denied, the Board will also decide to either grant or deny
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institution of the instant proceeding. If granted, the Patent Owner will be forced to defend two trials on the same patent using the exact same grounds and the Board will hear two trials. This will lead to much duplication of effort not only for the Patent Owner, but also for the Board, and may lead to inconsistent results. The other alternative also results in prejudice and a waste of the Boards resources: if joinder is denied, the Board may likewise deny trial institution in the instant proceeding, possibly because such a trial would be cumulative due to Unifieds petition being substantively identical to the Rackspace IPR petition. In that situation, if Rackspace settles its case, that proceeding may not reach a final written decision. Unified would then be forced to file another petition, incurring additional cost, and be forced to wait perhaps another year or more before its case is decided. Such a delay will prejudice Unified as well as the entire clouding technology industry by enabling the Patent Owner to continue enforcing a specious patent before the Board renders a thorough review. Also, the Board would hear the same case yet again. If joinder is granted, however, neither Rackspace nor the Patent Owner is prejudiced, and the Board saves judicial resources. The Board will only have to hear this case once, and the Patent Owner will only have to defend it once. Unifieds grounds for instituting IPR are identical to those proposed by Rackspace in its petition. Thus, joinder will not affect the timing of the Rackspace IPR, and any minimal extension to the schedule that may be required is permitted by law and the applicable rules. 35 U.S.C.
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316(a)(11); 37 C.F.R. 42.100(c). By combining two proceedings into one, the interests of all parties and the Board will be well served. D. Joinder should be granted as a matter of right because Unifieds petition adds no new grounds of unpatentability The legislative history shows that two proceedings with identical petitionsthe situation hereshould be joined as a matter of right. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (The Office anticipates that joinder will be allowed as of right if an inter partes review is instituted on the basis of a petition, for example, a party that files an identical petition will be joined to that proceeding, and thus allowed to file its own briefs and make its own arguments.) (emphasis added). For this reason alone, joinder should be granted. Even if the Patent Owner raises a Unified-specific defense as a reason for why joinder should be denied, such cannot override the strong legislative intent and public policy in favor of joining identical petitions. Moreover, any Unified-specific defense can be accommodated easily by the normal briefing and trial schedule and would have no impact on the Rackspace IPR. E. Trial schedule will be impacted only minimally and will complete within one year Joinder will not impact the Boards ability to complete its review in a timely manner. 35 U.S.C. 316(a)(11) and associated rule 37 C.F.R. 42.100(c) provide that IPRs should be completed and the Boards final decision rendered within one year of
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institution. Joinder should not affect the Boards ability to issue its decision within this required one-year timeframe because the instant petition contains the identical grounds sought and instituted in the Rackspace IPR and Unified agrees to procedural safeguards (discussed below) that ensure speedy resolution. F. Discovery and briefing may be simplified Unified respectfully proposes procedural safeguards to ensure a speedy and simplified trial, thus minimizing any trial-schedule impact and minimizing the volume of materials submitted to the Board. Unified proposes procedural safeguards similar to those adopted in the Dell Joinder Order: 1) Rackspace and Unified will file papers, except for motions that do not

involve the other party, as consolidated filings. Rackspace will prepare such filings. 2) Unified may file an additional paper not to exceed seven pages, which may

address only points of disagreement with the consolidated filing. The Patent Owner may respond to any such paper, but may not exceed the number of pages in Unifieds filing and is limited to issues raised in such filing. 3) 4) Rackspace may question witnesses in depositions before Unified. Rackspace may present argument before Unified at any oral argument.

See Dell Joinder Order, at 11-12. Furthermore, Unified will rely upon Rackspaces expert, and will not offer additional expert testimony unless Rackspace terminates its involvement in the IPR.
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These procedural safeguards minimize any complication or delay and will result in a speedy trial with little impact on the Rackspace IPR parties or the Board. IV. CONCLUSION For the foregoing reasons, Unified Patents respectfully requests that its Petition for Inter Partes Review of U.S. Patent No. 5,978,791 be instituted and that this proceeding be joined with Rackspace US, Inc. and Rackspace Hosting, Inc., v. PersonalWeb Technologies, LLC and Level 3 Communications, LLC, Case IPR2014-00057.

Although Unified Patents believes that no fee is required for this Motion, the Commissioner is hereby authorized to charge any additional fees which may be required to Deposit Account No. 15-0030.

Respectfully submitted, OBLON SPIVAK Dated: April 28, 2014 /Michael L. Kiklis/ Michael L. Kiklis Reg. No. 38,939

Customer Number 22850 Tel. (703) 413-2707 Fax. (703) 413-2220

CERTIFICATE OF SERVICE The undersigned certifies service pursuant to 37 C.F.R. 42.6(e) and 42.105(b) on the Patent Owner by UPS Next Day Air of a copy of this Motion for Joinder at the correspondence address of record for the 791 patent:

NIXON & VANDERHYE, PC 901 North Glebe Road, 11th Floor Arlington, VA 22203

Dated: April 28, 2014

By:

/Michael L. Kiklis/ Michael L. Kiklis Reg. No. 38,939

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