Terremark North America LLCv.JOAO Control & Monitoring Systems, LLC

Patent Trial and Appeal Board

Dec 28, 2015

10263554 (P.T.A.B. Dec. 28, 2015)

Trials@uspto.gov Paper 13
571-272-7822 Entered: December 28, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS
NETWORK SERVICES INC., VERIZON SERVICES CORP., TIME
WARNER CABLE INC., ICONTROL NETWORKS, INC., and
COXCOM, LLC
Petitioner,

v.

JOAO CONTROL & MONITORING SYSTEMS, LLC,
Patent Owner.
____________

Case IPR2015-01484
Patent 7,277,010 B2
____________

Before HOWARD B. BLANKENSHIP, STACEY G. WHITE, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, Terremark North America LLC, Verizon Business
Network Services Inc., Verizon Services Corp., Time Warner Cable Inc.,
Icontrol Networks, Inc., and Coxcom, LLC, filed a Petition1 requesting an
inter partes review of claims 139, 157, 158, 169–171, 193, 194, 196–198,
201, 202, 211, 213, 215, 217, 219, 222–225, 227, 228, and 234–236 of
U.S. Patent No. 7,277,010 B2 (Ex. 1001, “the ’010 patent”). Paper 2
(“Pet.”). Patent Owner, Joao Control & Monitoring Systems, LLC, filed a
Preliminary Response. Paper 12 (“Prelim. Resp.”). In addition, on August
5, 2015, Petitioner filed a Motion to Recognize June 23, 2015 as the filing
date. Paper 8 (“Motion”). On August 19, 2015, in response to Petitioner’s
Motion, Patent Owner filed Patent Owner’s Opposition to Motions to
Recognize June 23 as the filing date. Paper 11 (“Opposition”). We have
jurisdiction under 35 U.S.C. § 314, which provides that an inter partes
review may not be instituted “unless . . . the information presented in the
petition . . . 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 set forth below, we determine that the Petition was not
filed timely within the statutory period of 35 U.S.C. § 315(b). We, thus,
deny inter partes review of the ’010 patent.

1 Petitioner was assigned two case numbers when filing for inter partes
review: (1) IPR2015-01480; and (2) IPR2015-01484. Paper 8, 2–6.
Because Petitioner is moving to recognize June 23, 2015 as the filing date in
IPR2015-01484, rather than IPR2015-01480, we refer to IPR2015-01484 as
the “Petition.”
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Related Matters
Petitioner indicates that the ’010 patent has been asserted in the
following proceedings: (1) Joao v. LifeShield, Inc., No. 2-15-cv-02772
(E.D. Pa.); (2) Joao v. Slomin’s Inc., No. 2-14-cv-02598 (E.D.N.Y.);
(3) Joao v. Time Warner Cable, Inc., No. 1-14-cv-00524 (D. Del.); (4) Joao
v. Cox Communications, Inc., No. 1-14-cv-00520 (D. Del.); (5) Joao v.
Verizon Communications, Inc., No. 1-14-cv-00525 (D. Del.); (6) Alarm.com
Inc. v. Joao, No. 1-14-cv-00284 (D. Del.); (7) Joao v. Protect America, Inc.,
No. 1-14-cv-00134 (W.D. Tex.); (8) Joao v. FrontPoint Security Solutions
LLC, No. 1-13-cv-01760 (D. Del.); (9) Joao v. Lowe’s Cos., Inc., No. 5-13-
cv-00056 (W.D.N.C.); (10) Joao v. Vivint Inc., No. 1-13-cv-00508 (D. Del.);
(11) Joao v. American Traffic Solutions, Inc., 1-13-cv-00243 (E.D. Mich.);
(12) Joao v. City of Yonkers, No. 1-12-cv-07734 (S.D.N.Y.); (13) Joao v.
Digital Playground, Inc., No. 1-12-cv-06781 (S.D.N.Y.); (14) Joao v. Liquid
Cash, LLC, No. 1-12-cv-06315 (S.D.N.Y.); (15) Joao v. Xanboo, Inc.,
No. 2-12-cv-03698 (C.D. Cal.); (16) Joao v. Smartvue Corp., No. 1-12-cv-
03641 (C.D. Cal.); (17) Joao v. Digital Playground Inc., No. 2-12-cv-00417
(C.D. Cal.); (18) Joao v. Ahava Inc., No. 2-11-cv-09638 (C.D. Cal);
(19) Joao v. GSMC Inc., No. 2-11-cv-09636 (C.D. Cal.); (20) Joao v. GSMC
Inc., 2-11-cv-08697 (C.D. Cal); (21) Joao v. Webcamnow.com Inc., No. 2-
11-cv-08257 (C.D. Cal.); and (22) Joao of Texas v. Playboy Enterprises,
Inc., No. 6-09-cv-00499 (E.D. Tex.). Pet. 3–4; Paper 6.
According to Patent Owner, the ’010 patent also is the subject of four
ex parte reexaminations, Reexamination Control Nos.: (1) 90/013,303;
(2) 90/013,301; (3) 90/013,302; and (4) 90/013,300. Paper 6, 5–6.
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Petitioner concurrently filed petitions requesting an inter partes review of
the following U.S. Patent Nos.: (1) 6,549,130 (Case IPR2015-01509);
(2) 6,542,077 B2 (Case IPR2015-01466); (3) 6,587,046 (Case IPR2015-
01477); (4) 6,549,130 (Case IPR2015-01486); (5) 6,542,076 (Case
IPR2015-01478); (6) 6,542,076 (Case IPR2015-01508); (7) 7,397,363 (Case
IPR2015-01482); and (8) 7,397,363 (Case IPR2015-01485). Id. at 4–5.
II. ANALYSIS
Because at least one of the petitioning parties was served with a
complaint on June 23, 2014 (Exs. 2002–2005), the statutory bar date for
IPR2015-01484 is June 23, 2015. 35 U.S.C. § 315(b); 37 C.F.R.
§ 42.101(b). Petitioner, however, was accorded a filing date of June 24,
2015. Paper 3. Petitioner filed, served, and paid the fee for IPR2015-01484
on June 24, 2015, which is one day after the statutory bar date. Motion 2–6
(citing Ex. 1008 ¶¶ 1–13; Ex. 1009 ¶¶ 1–12).
Petitioner contends that it is not barred or estopped from requesting an
inter partes review of the ’010 patent, thus, satisfying the requirements of
§ 315(b) for the following three reasons: (1) Petitioner uploaded timely a
petition that was assigned case number IPR2015-01480, served timely the
IPR2015-01480 petition and supporting documents; (2) the Board has the
authority, as demonstrated in past decisions, to recognize the filing date for
this inter partes review as June 23, 2015; and (3) there is no injustice to
Patent Owner because immediate remedial measures were taken right away
by Petitioner. Motion 2–11 (citing Ex. 1008 ¶¶ 1–13; Ex. 1009 ¶¶ 1–12).
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We disagree that Petitioner is not barred or estopped from requesting an
inter partes review. We address Petitioner’s arguments in turn.
A. Petitioner’s Arguments Pertaining to Timely Filing IPR2015-01480
are Misplaced
Petitions for inter partes review must be filed within one year after
Petitioner was served with a complaint alleging infringement. 35 U.S.C.
§ 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a
filing date once: (1) a petition has been filed; (2) payment has been made;
and (3) the complete petition is served on the patent owner. 35 U.S.C.
§ 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-
statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit
a party to file a motion to correct a “clerical or typographical mistake.” 37
C.F.R. § 42.104(c). The burden of proof rests with the moving party, which
is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.
It is undisputed that at least two of the petitioning parties were served
with a complaint alleging infringement of the ’010 patent on June 23, 2014.
Ex. 2001 ¶¶ 1–4; Exs. 2002–2005. On June 23, 2015, Petitioner failed to
comply with the statutory requirements of 35 U.S.C. § 312(a) by not paying
the required fee and failing to meet the requirements of 37 C.F.R.
§ 42.106(a) by not filing and serving the Petition and its supporting
evidence. Motion 2–6 (citing Ex. 1008 ¶¶ 1–13; Ex. 1009 ¶¶ 1–12). On
June 24, 2015, one day after the one year statutory deadline, Petitioner
completed filing of the Petitions at issue. Id. at 5–6 (citing Ex. 1008 ¶¶ 1–
13; Ex. 1009 ¶¶ 1–12).
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Petitioner was assigned two case numbers when filing for inter partes
review: (1) IPR2015-01480; and (2) IPR2015-01484. Motion 2–6.
Petitioner, first, uploaded a petition and supporting documents, and was
assigned IPR2015-01480 by PRPS on June 23, 2015; Petitioner also served
the petition and supporting documents for IPR2015-01480 on June 23, 2015.
Id. at 2–3. Petitioner, however, was unable to pay the filing fee on June 23,
2015, for IPR2015-01480 because it included a hyphen in the deposit
account number. Id. at 4–6. Petitioner, instead, had its backup counsel,
Venable LLP, refile the Petition and supporting documents on June 24,
2015, which is one day after the statutory deadline, and was assigned
IPR2015-01484 by PRPS; Petitioner’s backup counsel also paid the filing
fee for IPR2015-01484 and served the IPR2015-01484 Petition and
supporting documents on June 24, 2015. Id. at 5–6 (citing Ex. 1008 ¶¶ 10–
11).
The burden of proof, as stated supra, rests with Petitioner. Petitioner
alleges that the filings were timely because they were assigned the case
number IPR2015-01480 by the Patent Review Processing System (“PRPS”).
Id. at 2–3. Petitioner, however, did not move to recognize June 23, 2015 as
the filing date of IPR2015-01480. Rather, Petitioner moved to recognize
June 23, 2015 as the filing date of IPR2015-01484. Id. at 2–11. Petitioner’s
arguments pertaining to timely filing the IPR2015-01480 petition and
supporting documents, thus, are misplaced. We, therefore, decline to
address whether Petitioner filed timely IPR2015-01480.
Petitioner also argues that it served timely, the petition and supporting
documents in IPR2015-01480 on June 23, 2015. Motion 4–5. Petitioner
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alleges the petition served in IPR2015-01480 had no substantive changes
from the filed IPR2015-01484 Petition. Ex. 1008 ¶¶ 4–5, 12; Ex. 1009 ¶ 6.
Moreover, Petitioner alleges the only differences noted between the petition
served in IPR2015-01480 and the IPR2015-01484 Petition are a change in
deposit account information in the Petition, a different cover sheet for the
powers of attorneys, a different signature block in the Petition, different
labels on the exhibits, and a different certificate of service. Ex. 1008 ¶ 12.
Patent Owner, however, notes that Petitioner fails to acknowledge the
myriad substantive changes between the petition served in IPR2015-01480
and the IPR2015-01484 Petition (the Board counts at least sixteen additional
changes apart from the changes noted by Petitioner). Opposition 7–11. At
this juncture, we decline to decide whether the documents served on June
23, 2015, are substantively different than the documents filed on June 24,
2015. Nevertheless, we remind Petitioner’s counsel of its responsibilities of
candor and good faith under the United States Patent and Trademark Office
Trial Practice Rules as set forth in 37 C.F.R. § 42.11.
Petitioner, furthermore, did not move to recognize June 23, 2015 as
the service date of IPR2015-01480. Rather, Petitioner moved to recognize
June 23, 2015 as the service date of IPR2015-01484. Id. at 2–11.
Petitioner’s arguments pertaining to timely serving the IPR2015-01480
petition and supporting documents, thus, are misplaced. We, therefore,
decline to address whether Petitioner served timely the petition and
supporting documents in IPR2015-01480.
As stated supra, it is undisputed that on June 24, 2015, one day after
the one year statutory deadline, Petitioner filed the Petition and supporting
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documents, paid the filing fees, and served the Petition and supporting
documents. Petitioner, thus, has not shown persuasively how filing and
service in IPR2015-01480, in which Petitioner did not move to recognize
June 23, 2015 as the filing date, justifies the relief requested.
B. The Board’s Prior Decisions are Distinguishable
Petitioner cites a number of non-precedential Board decisions to
support its arguments. These cases, however, are distinguishable because
none of them addressed the combination of a failure to file, serve, and pay
the required fee as set out in our Rules and governing statute.
In ABB Inc. v. Roy-G-Biv Corp., Case IPR2013-00063 (PTAB Jan. 16,
2013) (Paper 21), the Board addressed a Motion to Correct Petition. The
petitioner in ABB served timely the petition, and paid timely the filing fee.
The petitioner in ABB failed to timely file the correct exhibits. The Board,
however, granted the motion based on a finding that although the petitioner
filed the wrong exhibits, the petitioner served timely the correct exhibits on
the patent owner. ABB, slip op. at 2, 5–11.
As for Apple Inc. v. Whitserve, LLC, Case IPR2014-00268 (PTAB
Feb. 5, 2014) (Paper 16), the Board addressed a Motion to Correct Filing
Date of Petition. The petitioner in Apple served timely the petition, paid
timely the filing fee, uploaded timely the petition and supporting documents,
and emailed timely the petition. The petitioner in Apple, however, was
accorded a filing date one day after the statutory deadline. The Board,
however, granted the motion based on a finding that PRPS indicated that
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petitioner had filed timely the petition and exhibits, served timely the
petition and exhibits, and paid timely the filing fee. Apple, slip op. at 2–8.
Regarding Pacific Market Int’l, LLC v. Ignite USA, LLC, Case
IPR2014-00561 (PTAB May 12, 2015) (Paper 40), the Board addressed a
Motion to Deem the Filing of Petitioner’s Reply as Timely. The petitioner
in Pacific served timely the petition, paid timely the filing fee, and filed
timely the petition and supporting documents. The petitioner in Pacific,
however, filed untimely the petitioner’s reply. The Board, however, granted
the motion based on a finding that the patent owner would not oppose the
motion. Pacific, slip op. at 2–5.
In Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148
(PTAB Sept. 15, 2014) (Paper 19), the Board addressed a Motion to Deem
the Filing of the Patent Owner Response as Timely. The patent owner in
Standard filed untimely the patent owner response. The Board, however,
granted the motion based on a finding that the filing deadline of the patent
owner response was not a statutory deadline; rather, it is an intermediate
deadline that may be altered by agreement. Standard, slip op. at 2–3.
As for ConMed Corp. v. Bonutti Skeletel Innovations LLC, Case
IPR2013-00624 (PTAB Mar. 14, 2014) (Paper 22), the Board addressed a
Motion to Correct Filing Date. The petitioner in ConMed paid timely the
filing fee, and served timely the petition on the patent owner. The petitioner
in ConMed filed the petition and supporting documents, but because the
petitioner failed to click “Submit” when filing those documents, the
proceeding was accorded a filing date after the statutory bar. The petitioner
in ConMed did not hit the submit button until several days after the statutory
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bar date when it refiled exhibits with the corrected labels. The Board,
however, granted the motion primarily because all three filing requirements
were met; in particular, the documents were uploaded and filed timely but
for an omission to click a “Submit” button, fees were paid timely, and the
documents were served timely. ConMed, slip op. at 2–6.
Regarding 2Wire, Inc. v. TQ Delta, LLC, Case IPR2015-00239
(PTAB Jan. 15, 2015) (Paper 10), the Board addressed a Motion to Correct
Filing Date. In 2Wire, counsel pressed the “submit” button after midnight.
The Board, however, granted the motion because all three filing
requirements were met; in particular, the documents were uploaded timely,
fees were paid timely, and the documents were served timely. 2Wire, slip
op. at 4–8.
In Oracle Corp. v. Maz Encryption Techs. LLC, Case IPR2014-00472
(PTAB May 1, 2014) (Paper 9), the Board addressed a Motion to Recognize
March 1, 2014 as Filing Date. The petitioner in Oracle paid timely the filing
fee, and served timely the petition on the patent owner. The petitioner in
Oracle was unable to timely file the petition because PRPS was
malfunctioning. The Board, however, granted the motion because its
“internal investigation confirm[ed] that PRPS access . . . was indeed
compromised.” Oracle, slip op. at 2.
As for E*Trade Financial Corp. v. Droplets, Inc., Case IPR2015-
00470 (PTAB Apr. 20, 2015) (Paper 17), the Board addressed a Motion to
Change the Filing Date. In E*Trade, the petitioner received a notice from
PRPS that the system was “currently down” when the petitioner attempted to
file the petition. Moreover, in E*Trade, a Board employee, acting with the
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authority of the Board, instructed the petitioner to email its petition and
supporting documents as an attachment. The petitioner in E*Trade paid
timely the filing fee, and served timely the petition on the patent owner. The
petitioner in E*Trade refiled the petition and supporting documents when
PRPS functioned properly. The Board granted the motion because all three
filing requirements were met; in particular, the documents were emailed
timely, fees were paid timely, and the documents were served timely.
E*Trade, slip op. at 3–4.
Regarding Micron Tech., Inc. v. e.Digital Corp., Case IPR2015-00519
(PTAB Mar. 24, 2015) (Paper 14), the Board addressed a Motion to Deny a
Petition a Filing Date based on Improper Service. The petitioner in Micron
filed timely the petition, and paid timely the filing fee. In addition, in
Micron, the petitioner served a copy of the petition and supporting
documents on the patent owner’s litigation counsel via email more than two
weeks prior to expiration of the statutory bar date, and email correspondence
between the parties indicated that the patent owner’s litigation counsel was
in receipt of the documents prior to the statutory bar date. The petitioner in
Micron failed to timely serve the patent owner at the correspondence address
of record. The Board, however, denied the patent owner’s motion because
the patent owner, through its litigation counsel, actually received the petition
prior to the one year statutory bar date. Micron, slip op. at 4–6.
In Schott Gemtron Corp. v. SSW Holding Co. Inc., Case IPR2014-
00367 (PTAB Sept. 22, 2014) (Paper 30), the Board addressed a Motion to
Correct Filing Date. The petitioner in Schott served timely the petition, and
paid timely the filing fee. In Schott, the petitioner filed timely an incorrect
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exhibit. The Board, however, granted the motion because the petitioner
served timely the petition and supporting documents, which the patent owner
acknowledged during a conference call. Schott, slip op. at 2–4.
As for Syntroleum Corp. v. Neste Oil OYJ, Case IPR2013-00178
(PTAB July 22, 2013) (Paper 21), the Board addressed a Motion to Correct
Petition. The petitioner in Syntroleum paid timely the filing fee. In
Syntroleum, the petitioner filed timely and served timely the petition, but
filed an incorrect reference and served the same incorrect reference. The
petitioner in Syntroleum intended to file a published European application,
but instead, the petitioner filed inadvertently and served inadvertently a
patent that issued from the publication. The Board, however, granted the
motion because both the petitioner’s original petition and declaration cited
the published European application. Syntroleum, slip op. at 2–6.
Thus, as described above, all of these cases are distinguishable from
the facts currently before us. Petitioner has not directed us to any case
where the petitioning party failed to file, serve, and pay the required fee by
the statutory bar date.
C. Petitioner’s Arguments Pertaining to Injustice to Patent Owner is
Misplaced
Petitioner contends there is no injustice to Patent Owner because
immediate remedial measures were taken right away by Petitioner. Motion
9. Petitioner’s argument, however, is misplaced because the standard for
permitting a late filing is not dependent solely on whether there was injustice
to Patent Owner.
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We, therefore, decline to grant the relief requested.
III. CONCLUSION
For the foregoing reasons, the Petition falls outside the one-year time
bar set forth in 35 U.S.C. § 315(b). We, thus, deny inter partes review of
the ’010 patent.
IV. ORDER
For the foregoing reasons, it is
ORDERED that the Petition is denied as to all challenged claims and
no trial is instituted.

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PETITIONER:

Jackson Ho
David A. Simons
K&L GATES LLP
jackson.ho@klgates.com
david.simons@klgates.com

Frank C. Cimino
Megan S. Woodworth
VENABLE LLP
fccimino@venable.com
mswoodworth@venable.com

Vaibhav Kadaba
D. Clay Holloway
KILPATRICK TOWNSEND & STOCKTON LLP
wkadaba@kilpatricktownsend.com
cholloway@kilpatricktownsend.com

PATENT OWNER:

Raymond Joao
rayjoao@optonline.net

René A.Vazquez
HENINGER GARRISON DAVIS, LLC
rvazquez@hgdlawfirm.com