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

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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) Rackspace may question witnesses in depositions before Unified.

4) 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.

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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

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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