UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________
`
`CASE IPR2013-00071
`U.S. Patent No. 6,218,930
`____________________
`
`Before the honorable Jameson Lee, Joni Y. Chang, and Justin T. Arbes
`____________________
`
`
`
`PETITIONER AVAYA INC.’S OPPOSITION TO MOTION
`FOR JOINDER FILED BY THIRD PARTY DELL INC.
`
`
`
`
`
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________
`
`CASE IPR2013-00071
`U.S. Patent No. 6,218,930
`____________________
`
`Before the honorable Jameson Lee, Joni Y. Chang, and Justin T. Arbes
`____________________
`
`
`
`PETITIONER AVAYA INC.’S OPPOSITION TO MOTION
`FOR JOINDER FILED BY THIRD PARTY DELL INC.
`
`
`
`
`
`
`Petitioner Avaya’s Opposition to Dell’s Joinder Request
`
`
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`TABLE OF CONTENTS
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`IPR2013-0071
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. ARGUMENT ................................................................................................... 1
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`A. Dell’s Petition Is Untimely .................................................................... 1
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`B.
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`Joinder Is Unnecessary and Would Result in Increased
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`Inefficiency, Expense, and Would Prejudice Avaya ............................. 5
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`C.
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`The Board Should Deny to Discourage Future Parties From
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`Delaying to Seek Joinder ....................................................................... 7
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`D.
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`If The Board Grants Dell’s Joinder Motion, It Should Adopt
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`Several Procedural Conditions In The Interest Of Fairness .................. 8
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`III. CONCLUSION ..............................................................................................10
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`I.
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`INTRODUCTION
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`IPR2013-0071
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`Pursuant to the Board’s Order in Paper No. 26, Petitioner Avaya Inc.
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`(“Avaya”) opposes Dell Inc.’s (“Dell”) Motion for Joinder on the following
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`grounds. First, Dell’s Petition is untimely pursuant to 35 U.S.C. § 315(b) and must
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`be denied on that basis. Second, Dell’s Petition is redundant, unnecessary,
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`inefficient, and would undoubtedly increase Avaya’s burden and expense. Third,
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`Dell was not diligent in submitting its joinder motion and petition. Finally, if the
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`Board nevertheless grants Dell’s Motion, in light of Avaya’s timely-filed petition,
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`Avaya alternatively requests the adoption of specific conditions identified below in
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`order to limit the prejudice that such joinder would otherwise impose.
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`II. ARGUMENT
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`A. Dell’s Petition Is Untimely
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`Dell’s Petition was filed on June 24, 2013, more than 18 months after it was
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`served with a complaint for infringement of the ‘930 patent by Network-1 Security
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`Solutions LLC (“Network-1”). Despite being filed beyond the one-year bar, Dell
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`nevertheless asserts that its Petition is timely because it was filed within one month
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`after the Board granted Avaya’s Petition, and effectively argues that such a motion
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`for joinder provides an end-around to the one-year bar for filing a petition for inter
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`partes review (“IPR”). See Dell Motion, p. 4. Dell’s statutory interpretation,
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`1
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`IPR2013-0071
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`
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`however, is improper, and the Board should deny Dell’s Motion. See IPR2013-
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`00319, Paper No. 16 (including authorities cited within).
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`IPR petition timeliness is defined by 35 U.S.C. § 315(b)-(c), which reads in
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`relevant part as follows (emphasis added):
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`(b) . . . An inter partes review may not be instituted if the
`petition requesting the proceeding is filed more than 1 year
`after the date on which the petitioner, real party in interest, or
`privy of the petitioner is served with a complaint alleging
`infringement of the patent. The time limitation set forth in the
`preceding sentence shall not apply to a request for joinder
`under subsection (c).
`(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.
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`The plain language in subsection (b) establishes that an IPR petition is
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`barred if filed more than one year after the petitioner was served with a complaint
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`alleging infringement of the patent. While Dell relies on the final sentence of
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`subsection (b) – which states that the one-year bar “shall not apply to a request for
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`joinder under subsection (c)” – that sentence relates to “requests for joinder,” not
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`2
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`
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`IPR2013-0071
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`
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`the filing of a new petition. Dell improperly conflates the phrase “request for
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`joinder” with a “petition.” But a party can only request joinder if the petition has
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`been “properly file[d] under section 311.” See 35 U.S.C. § 315(c). Put another
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`way, a condition precedent to a request for joinder is that the party in question
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`already have properly filed a petition (i.e., a petition filed within the one-year bar).
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`See 35 U.S.C. § 315(b) (defining a petition is not “properly filed” if it has been
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`filed more than one year after a complaint).
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`In enacting the America Invents Act, Congress made clear that there are no
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`exceptions to the one-year bar:
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`[I]n his 2008 remarks on a substantially identical joinder
`provision in the bill that he introduced that year, Senator Kyl
`commented . . . time deadlines for filing petitions must be
`complied with in all cases.
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`(Ex. AV-1021 at 613-14) (emphasis added).
`
`A few more words about joinder . . . additional petitions can be
`joined only if, among other things, they are properly filed. The
`words “properly filed” are a term of art that . . has been given
`content no less than three times during this decade by the U.S.
`Supreme Court . . . The gist of these decisions is that time
`deadlines for filing petitions must be complied with in all cases.
`154 Cong. Rec. S9988 (daily ed. Sep. 27, 2008) (statement of Sen. Kyl) (Ex. AV-
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`1022 at S9988) (emphasis added).
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`3
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`IPR2013-0071
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`Thus, the one-year bar applies “in all cases” to petitions (as opposed to
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`requests for joinder). Subsection (c) is consistent with subsection (b) and indicates
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`that one may request joinder only if that person properly files a petition. Here,
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`Dell’s Petition was not properly filed because it was not filed within one year from
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`service of the complaint alleging infringement. Dell’s motion for joinder should
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`therefore be denied.
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`While Dell has cited to two decisions in which the Board has granted joinder
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`on petitions filed after the one year deadline (see Dell Motion, p. 5), neither
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`decision is applicable here.
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`In Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, the Board permitted
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`joinder of a second petition filed by the same petitioner, Microsoft, “after learning
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`that additional claims were being asserted by Patent Owner in concurrent district
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`court litigation.” (Paper No. 15). In filing its first petition, Microsoft had already
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`“properly file[d] a petition” within the one-year bar, and thus was entitled to seek
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`joinder after the one-year bar for its second petition. Unlike Microsoft, Dell has
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`not “properly file[d] a petition” within the one-year bar, and accordingly the
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`Microsoft decision does not help Dell.
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`In Motorola v. Softview LLC, IPR2013-00256, the Board permitted joinder
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`of a petition filed by third party Motorola after the one-year bar, but the Board was
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`4
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`IPR2013-0071
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`not presented with the above statutorily-based argument for consideration in those
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`cases. (Paper No. 10). Thus, the Motorola decision is inapplicable here.
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`Dell’s improper statutory interpretation would also lead to a possible infinite
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`string of follow-on IPR petitions. For instance, applying Dell’s interpretation,
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`other third parties could file a third wave of IPR petitions and requests for joinder
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`within 30 days of Dell’s IPR request being granted. If the Board were to grant this
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`third wave, the other parties’ requests could be followed by a fourth, fifth, and
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`subsequent waves ad infinitum. Clearly, Congress did not such a result that would
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`naturally flow from Dell’s improper statutory construction.
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`B.
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`Joinder Is Unnecessary and Would Result in Increased
`Inefficiency, Expense, and Would Prejudice Avaya
`
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`Dell’s motion for joinder should also be denied because, it is unnecessary
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`and will undoubtedly result in additional expense and prejudice to Avaya. Dell’s
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`Petition contains the verbatim grounds that are included in Avaya’s Petition, relies
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`upon the same prior art, the same expert, and the same expert declaration. Thus,
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`joinder will not lead to the advancement or resolution of this proceeding, as there
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`will be no additional arguments that can be raised by Dell that cannot be raised by
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`Avaya alone. Instead, granting Dell’s Motion to join this IPR will only impose an
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`undue and unnecessary burden on Avaya. Avaya will be required to consult with
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`Dell and its counsel prior to every action taken, whether with respect to strategy,
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`5
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`
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`IPR2013-0071
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`
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`procedure, briefing or depositions. The imposition of such added burdens and the
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`loss of control to a late-comer (who chose not to file an IPR petition at the
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`statutory one-year deadline and who did not undertake such initial work or
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`expense) would be unnecessary and manifestly unfair.
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`As a specific example of such burden, briefing will become more
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`complicated and more expensive. Any order preventing Avaya from having full
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`use of page limits set forth for briefing (including, for example, the 15 pages to
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`which it is entitled to reply to Network-1’s response to Avaya’s Petition) would
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`prejudice Avaya, because it is unlikely that counsel for Avaya and Dell will be in
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`complete harmony on the content of briefs and, in any event, a joint reply will
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`require in all probability multiple exchanges of drafts, which will increase
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`attorneys’ fees. Such a result will be likely, even if the Board grants Dell’s
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`proposal to allow Avaya to maintain responsibility for consolidated briefs.
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`Similarly, depositions will also be more complicated and more expensive for
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`a number of reasons. Specifically, Avaya will lose control over, and be required to
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`split its deposition time of Network-1’s expert(s), and possibly on redirect of its
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`own expert. As a result, Avaya is not only likely to incur additional attorneys’ fees
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`for coordinating with counsel for Dell, but it may also be prejudiced by not being
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`able to fully question Network-1’s expert(s) or its own expert.
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`6
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`IPR2013-0071
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`C. The Board Should Deny to Discourage Future Parties From
`Delaying to Seek Joinder
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`Diligence in filing a request for joinder is another factor that the Board may
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`consider when determining whether to grant a request for joinder. See Microsoft
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`Corp. v. Proxyconn, Inc., IPR2013-00109 (Paper No. 15). Here, in the district
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`court action, Dell was served with the patent infringement complaint by Network-1
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`on December 16, 2011, one day after Avaya was served.1 Since Avaya filed its
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`petition on December 5, 2012, Dell had 12 days prior to the expiration of the one-
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`year time period during which it could have filed a petition2. In crafting the AIA,
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`Congress noted that “[t]he [USPTO] has made clear that it intends to use [its
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`discretionary authority to allow joinder] to encourage early requests for joinder and
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`to discourage late requests.” 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011)
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`(statement of Sen. Kyl) (AV-1021 at 613). If Dell had properly filed a petition of
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`its own (within the one year bar), it could have sought joinder with Avaya’s
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`1 The district court’s docket indicates that Dell was served on December 16, 2012,
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`which is contrary to Network-1’s statement in Paper No. 28, p. 3 that Dell was
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`served on December 14, 2012.
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`2 Dell’s petition would have been due on December 17, 2012, since December 16,
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`2012 was a Sunday.
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`
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`7
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`IPR2013-0071
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`
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`petition as early as March 12, 2013, after Network-1 filed its preliminary patent
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`owner response. See 35 U.S.C. § 315(c). Dell, however, took no such action. Nor
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`did it seek joinder immediately after Avaya’s petition was granted on May 24,
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`2013. Rather, it waited a full 30 days after Avaya’s petition was granted. In its
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`papers, Dell has offered no justification for its delay. Accordingly, Dell’s lack of
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`diligence weighs against the Board granting its motion for joinder. As a matter of
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`policy, allowing Dell to join under these circumstances will create a disincentive
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`for future parties to lodge early joinder requests.
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`D.
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`If The Board Grants Dell’s Joinder Motion, It Should Adopt
`Several Procedural Conditions In The Interest Of Fairness
`
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`Avaya conditionally requests that, should the Board grants Dell’s Motion, a
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`number of procedural conditions be adopted in this proceeding that will reduce the
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`prejudice to Avaya and reduce the disruption to the present proceeding.
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`In particular, the Board should adopt several of the conditions suggested by
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`Dell in its motion for joinder, including the following: (1) authorize consolidated
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`filings on the existing briefing schedule and provide for Avaya to maintain
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`responsibility for all such briefs; (2) limit any separate filings of Dell to no more
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`than seven pages directed to points of disagreement with Avaya; and (3) limit
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`discovery of Dr. Zimmerman (the expert that submitted a declaration in both
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`8
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`
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`IPR2013-0071
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`
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`Avaya’s and Dell’s Petitions) to that which Network-1 has already asked for in the
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`Avaya IPR. See Dell Joinder Motion, p. 8.
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`In addition to the above three conditions, and as a way to further reduce
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`prejudice, Avaya would also conditionally request the adoption of the following
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`conditions: (4) Avaya shall be given control and responsibility for any depositions
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`of any Network-1 witness, including any experts, where Dell will be able to ask
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`questions only after Avaya has completed its questioning and within the remaining
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`time allowed for such depositions; (5) Avaya shall be given control and
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`responsibility for any redirect depositions of Dr. Zimmerman, where Dell will be
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`able to ask questions only after Avaya has completed its questioning and within the
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`remaining time allowed for such depositions; (6) all motions filed by petitioners
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`must be authorized by Avaya; and (7) Avaya is to be responsible for all oral
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`arguments, where Dell will be able to present arguments only after Avaya has
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`completed its arguments and within the remaining time allowed.
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`Avaya submits that each of the above conditions would help mitigate the
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`concerns mentioned above. And Dell should not be prejudiced by these conditions
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`since its invalidity positions are identical to Avaya. Any argument by Dell that
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`such conditions would not allow its views to be fully input would ring flat since, if
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`Dell was satisfied to simply copy Avaya’s petition, it should also be satisfied to
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`have Avaya handle the trial. Furthermore, Dell’s major concern of being left out
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`9
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`Petitioner Avaya’s Opposition to Dell’s Joinder Request
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`IPR2013-0071
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`
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`of this Proceeding – e.g. purported prejudice if Avaya were to settle – would not be
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`affected in that, if Avaya were to settle, Dell would be able to take over the
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`proceeding at that point.
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`III. CONCLUSION
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`For the reasons set forth above, Petitioner respectfully submits that the
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`Board should reject Dell’s motion for joinder. However, if it grants Dell’s
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`position, Petitioner respectfully requests that the Board adopt the suggested
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`conditions to address Avaya’s concerns.
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`Respectfully submitted,
`
`
`
`/Jonathan M. Lindsay/
`Jeffrey D. Sanok, Reg. No. 32,169
`Jonathan M. Lindsay, Reg. No. 45,810
`CROWELL & MORING LLP
`Intellectual Property Group
`P.O. Box 14300
`Washington, DC 20044-4300
`
`10
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`July 1, 2013
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)
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`I hereby certify that on this 1st day of July 2013, a true and correct copy of
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`the foregoing “PETITIONER AVAYA INC.’S OPPOSITION TO MOTION FOR
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`JOINDER FILED BY THIRD PARTY DELL INC.” was served, in accordance
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`with the parties’ electronic service agreement, by electronic mail upon the
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`following lead and backup counsel of record for the Patent Owner:
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`Robert G. Mukai, Lead Counsel
`Buchanan, Ingersoll & Rooney P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Service E-mail: Robert.Mukai@BIPC.com
`
`Charles F. Wieland III, Back-up Counsel
`Buchanan, Ingersoll & Rooney P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Service E-mail: Charles.Wieland@BIPC.com
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`Respectfully submitted,
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`July 1, 2013
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`DCACTIVE-23638574.1
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`
` /Jonathan M. Lindsay/
`Jonathan M. Lindsay, Reg. No. 45,810
`(Back-up Counsel)
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
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