Filed on behalf of Patent Owner Network—1 Security Solutions, Inc.
`
`By: Robert G. Mukai, Esq.
`Charles F. Wieland, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2727
`Telephone (703) 836-6620
`Facsimile (703) 836-2021
`robert.mukai@bipc.com
`charles.Wie1and@bipc.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY CORPORATION OF AIVIERICA; AXIS COMMUNICATIONS AB;
`AXIS COMMUNICATIONS INC.; and I—IEWLETT—PACKARD CO. Petitioner
`
`V.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`
`Patent 6,218,930
`Administrative Patent Judges Jameson Lee, Joni Y. Chang and Justin T. Arbes
`
`Case IPR2013-00071
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`
`JOINDER FILED IN IPR2013-00386
`
`
`
`By: Robert G. Mukai, Esq.
`Charles F. Wieland, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2727
`Telephone (703) 836-6620
`Facsimile (703) 836-2021
`robert.mukai@bipc.com
`charles.Wie1and@bipc.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY CORPORATION OF AIVIERICA; AXIS COMMUNICATIONS AB;
`AXIS COMMUNICATIONS INC.; and I—IEWLETT—PACKARD CO. Petitioner
`
`V.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`
`Patent 6,218,930
`Administrative Patent Judges Jameson Lee, Joni Y. Chang and Justin T. Arbes
`
`Case IPR2013-00071
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`
`JOINDER FILED IN IPR2013-00386
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR2013—00071
`
`Sony and Axis filed an IPR petition. The board rejected it. Rather than just
`
`relying on their motion for reconsideration, Sony, Avaya, and HP (“Defendants”)
`
`want a second bite of the apple, attempting to correct the flaws in their first petition
`
`by adding additional art and a declaration that they failed to include in their
`
`original petition. Defendants seek to (a) institute a new IPR based on their second
`
`petition filed six months after the one-year statutory deadline, and (b) join their
`
`proposed IPR into the existing Avaya IPR (IPRZO13-00071).
`
`The controlling statute, 35 U.S.C. Section 315(0), provides:
`
`If the Director institutes an inter partes review, the Director, [3] in his or her
`
`discretion, may join as a party to that inter partes review any person who [1]
`
`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 [2] warrants the institution of an inter
`
`partes review under section 314.
`
`35 U.S.C. 315 §(c) (enumeration and emphasis added). Based on this statute,
`
`Defendants’ motion (and petition) should be denied for three independent reasons:
`
`Reason 1: Defendants did not “properly file[] a petition under Section 311”
`
`because their petition was “filed more than 1 year after y)n petitioner [was] served
`
`with a complaint.” 35 U.S.C. §315(b).
`
`Reason 2: Had Defendants’ late—f1led petition been permitted, factors that
`
`the Board should consider before exercising “his or her discretion” demonstrate
`
`that the Board should not exercise its discretion here.
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR2013-00071
`
`Reason 3: As will be demonstrated in the Preliminary Response,
`
`Defendants’ new petition still does meet the threshold of Section 314 and therefore
`
`does not “warrant[] the institution of an inter partes review under section 314.”
`
`Each independent reason is addressed in turn.
`
`1.
`
`Independent Reason 1: Defendants did not properly file a petition.
`
`As (a) outlined in Network—1’s Opposition to Dell’s Motion for Joinder
`
`(Paper 28 at 2-3), (b) explained in AVaya’s Opposition to Dell’s Motion for Joinder
`
`(Paper 30 at 1-5), and (c) will be addressed in detail in Network-1’s Preliminary
`
`Response, a motion and corresponding petition should be denied if the petition is
`
`filed “more than 1 year after ncn petitioner is served with a complaint.” 35 U.S.C.
`
`§315(b). Because Defendants were served on December 14, 2011 (Exhibits N1-
`
`2011-13), Defendants’ recently-filed petition was filed more than six months after
`
`the statutory deadline. As a result, their motion and petition should be denied. See
`
`also, IPR2013—0O3 19, Paper 16, June 11, 2013 and AVaya’s Opposition, Paper 30,
`
`in this IPR2013-00071.
`
`II.
`
`Independent Reason 2: Defendants cannot meet their burden of
`demonstrating that the Board should exercise its discretion to allow
`joinder based on their second petition.
`
`If (a) the statutory requirements are satisfied, and (b) the circumstances
`
`justify joinder, the Board may exercise “his or her discretion” and join a party to an
`
`IPR. 35 U.S.C. 315§(c). See also, IPR2013—O0O07 Paper 15 at 3 (“the decision to
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR20l3-00071
`
`grant joinder is discretionary”) (citing 35 U.S.C. § 315(c)).
`
`As the moving party, Defendants have the burden of demonstrating that
`
`j cinder is justified and that the Board should exercise its discretion. 37 C.F.R. §
`
`42.20(c) (“The moving party has the burden of proof”). Based on factors that the
`
`Board should consider when evaluating whether to exercise its discretion here,
`
`there are four reasons why Defendants cannot satisfy their burden.
`
`Reason 1: Defendants’ motion should be denied because permitting
`joinder for a late-filed petition without a valid justification
`would allow defendants to circumvent the policy behind the
`one-year statutory bar.
`
`The statutory one-year window establishes the appropriate balance between:
`
`(a) “ensur[ing] the nn speedy n-nn resolution of a proceeding” (Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48758 (Aug. 14, 2012)) that is co-pending
`
`with underlying litigation, and (b) “afford[ing] defendants a reasonable opportunity
`
`to identify and understand the patent claims.” Exh. N1—201O (Defendants’ Motion
`
`to Stay the Pending Litigation), at 12. (emphasis added) quoting 157 Cong. Rec.
`
`S5429 (daily ed. Sept. 8, 2011).
`
`To maintain this proper balance, to the extent that Section 315(0) allows the
`
`Board to exercise its discretion to allow late—filed petitions and joinders, the Board
`
`should only do so if there is a change of circumstance that justifies a petitioner’s
`
`delay. For example, if a patent owner asserts new claims in the co-pending
`
`litigation and the petitioner is “diligent and timely in filing the motion” for joinder
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR2013-00071
`
`after the changed circumstance, such changed circumstance and diligence may
`
`justify the exception (e. g. , to allow the new claims to be included in an IPR).
`
`IPR20l3-00109 Paper 15 at 4; id. at 3 (“Petitioner proceeded expeditiously in
`
`filing a second Petition after learning that additional claims were being asserted by
`
`Patent Owner in concurrent district court litigation”)
`
`Here, Defendants have no valid justification for their late-filed petition (e.g.,
`
`a change in circumstances). Nothing prevented Defendants from filing a timely
`
`petition — they did, and it was rejected. Defendants’ attempt to correct the flaws in
`
`their rejected petition is not a valid justification for their late—filed second petition.
`
`Reason 2: Defendants’ late—filed petition introduces substantial new
`grounds of unpatentability.
`
`If a late—filed petition is limited to the same grounds in a pending IPR, the
`
`Board may exercise its discretion because delay can be avoided. See IPR2013-
`
`00256 Paper 10 at 5 (“joinder does not introduce new grounds of unpatentablity”).
`
`Conversely, if a late-filed petition introduces new grounds, the Board should not
`
`exercise its discretion. See IPR20l3—OOO07 Paper 15 at 3 (“Joining a third party
`
`could result in delaying the schedule already in place for the ongoing inter partes
`
`review, particularly if Apple’s petitions raise grounds of unpatentabilityf’).
`
`Here, Defendants’ late-filed petition (a) includes three additional grounds of
`
`unpatentability (expanding the number of grounds from 2 to 5); (b) includes five
`
`new references (expanding the number of references from 2 to 7); and (c)
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR20l3—0007l
`
`challenges a claim (claim 8) not at issue in the Avaya IPR. See Petition at 8.
`
`Because Defendants’ late—filed IPR is not “limited to the same claims and the same
`
`grounds of unpatentability” (IPRZOI3-00256 Paper 10 at 2) but instead would
`
`more than double the scope of the pending IPR, the Board should not exercise its
`
`discretion to grant Defendants’ motion for joinder.
`
`Reason 3: Defendants’ proposed joinder would delay the Avaya IPR.
`
`If a late—filed joinder would delay a pending IPR, the Board should not
`
`exercise its discretion to permit joinder because the rules are to be construed to
`
`“secure the ...speedy” resolution of an IPR.
`
`IPR2013—0OOO7 Paper 15 at 3 (citing
`
`37 C.F.R. 42.l(b)). The Avaya petition was filed over seven months earlier than
`
`Defendants’ new petition. As a result, if Defendants’ motion is granted,
`
`Defendants “acknowledged that the dates set forth in the Scheduling Order (Paper
`
`19) for this proceeding would need to be extended.” Order Paper 27 at 2. Because
`
`of this unavoidable delay, the Board should not exercise its discretion.
`
`Defendants assert that “given the litigation history of the ’93O patent, the
`
`new grounds of unpatentability submitted in the Petition will not unduly
`
`complicate the proceedings or cause more than six months delay.” Mot. at 7.
`
`There are two problems with Defendants’ argument. First, Defendants’ fail to
`
`explain how the fact that the ‘93O Patent has been litigated before has any impact
`
`on the complexity or delay resulting from more than doubling the scope of the
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR2013-00071
`
`Avaya IPR. Second, even if the delay is only six months, such a delay is
`
`unreasonable because (a) it could have been avoided by Defendants had they
`
`included their new grounds in their first petition, and (b) prejudices Network-l by
`
`further postponing its day in Court, since the underlying action is stayed pending
`
`the Avaya IPR. Defendants’ proposed six—month delay would be directly contrary
`
`to the representations they made in their motion to stay the underlying action, e. g.:
`
`“[t]he PTO will then face an obligation under 35 U.S.C. § 3 l6(a)(l l) to issue a
`
`final determination within one year @pn there is no chance of undue prejudice due to
`
`delay given the one-year statutory timeline for IPRs.” Exh. N1-2010 at 2, 3.
`
`Reason 4: Defendants’ proposed joinder will impact procedural
`matters.
`
`If a late-f1ledIPR will affect procedural matters (scheduling, briefing, or
`
`deposition discovery), the Board should not exercise its discretion to permit joinder
`
`and the IPR proceeding. See IPR2013—00256 Paper 10 at 8 (“to assure that the
`
`schedule is not affected, we also consider whether joining the instant proceeding
`
`and Kyocera IPR will affect the parties’ briefing obligations or deposition
`
`discoveryf’) (emphasis added). Here, Defendants’ late-filed IPR would affect all
`
`procedural matters, including scheduling, briefing, and deposition discovery.
`
`scheduling: Defendants’ delay in filing its petition will not only affect the
`
`schedule but makes it impossible to adjust the Scheduling Order to accommodate
`
`joinder. This is because a new Scheduling Order cannot be entered before the
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR20l3-00071
`
`Board determines whether to initiate the new proceeding which will not take place
`
`until after Network-1 files its Preliminary Response in late August. See Paper 7.
`
`See also IPR20l3-00007 Paper 15 at 3-4 (“Apple’s petitions would trigger a time
`
`for filing a Patent Owner’s Preliminary Response and additional time for this
`
`Board to issue a decision concerning the grounds of unpatentability raised in
`
`Apple’s petitions”) By the time the Board determines whether to initiate
`
`Defendants’ proposed IPR, key dates in the Avaya IPR will have already passed
`
`(e. g. , the deposition of Petitioner’s expert and the Patent Owner’s Response).
`
`Defendants assert: “[T]he Board may order Avaya and Petitioners to
`
`consolidate their submissions and to conduct joint discovery where appropriate
`
`[to] minimize complication or delay.” Mot. at 7. During the June 26, 2013
`
`conference call with the Board, the Board specifically asked Defendants to explain
`
`how the schedule could be consolidated to allow for joinder. Defendants could not
`
`provide a consolidated schedule because no possible consolidated schedule exists.
`
` : Because the proposed IPR includes more references, different
`
`grounds, and an additional claim, Defendants could not rely on a consolidated a
`
`filing. See, e.g., IPR20l3—0O256 Paper 10, at 9 (to avoid delay and undue burden,
`
`petitioner “would not be permitted any arguments in furtherance of those advanced
`
`in Kyocera’s consolidated fi1ing.”).
`
`deposition discovery: Joinder would introduce new deposition discovery,
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPRZOI3-00071
`
`specifically from Defendants’ new expert witness (who is different from Avaya’s
`
`expert). This at least doubles the amount of deposition discovery Network-l must
`
`take. IPR20l3—O0256 Paper 10 at 9 (“undue burden ...[could] result[] from
`
`additional deposition testimony associated with joinder.”).
`
`Because Defendants’ late—filed IPR would dramatically affect procedural
`
`matters (scheduling, briefing, and deposition discovery), the Board should not
`
`exercise its discretion to permit joinder and the proposed IPR proceeding.1
`
`*
`
`*
`
`>l=
`
`Defendants make two additional arguments, each of which fails.
`
`Defendants’ argument 1: “Absent joinder, Petitioners may be prejudiced
`
`because their interests will not be adequately represented in the Avaya IPR.”
`
`Mot. at 1. If a party has the opportunity to timely make an argument but
`
`voluntarily chooses not to do so, it is not prejudiced if it is precluded from later
`
`attempting to make that argument. This is not prejudice — it is waiver. Here,
`
`Defendants had every opportunity to include, in their first petition, the art and
`
`arguments that they want to include in their late-filed petition. They are not
`
`prejudiced as a result of their own failure to include such art and arguments in their
`
`‘
`
`“Joinder would also increase costs of the proceeding, since time and effort
`
`would be required to review additional briefs and pleadings.” IPR20l3-00004
`
`Paper 15 at 4.
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR20l3-00071
`
`first petition. See IPRZOI3-0092 Paper 24 at 3-4 (discussing the flaws in
`
`Defendants’ initial petition).
`
`Defendants’ argument 2: “Joinder will promote efficiency by consolidating
`
`issues, avoiding duplicate efforts, and preventing inconsistencies.” Mot. at 8.
`
`Defendants’ argument is premised on the assumption that the Board will initiate a
`
`trial based on its late—f1led petition whether or not it grants this motion for joinder.
`
`First, as demonstrated above, if the Board properly denies this motion for joinder,
`
`Defendants’ trial should not be instituted, there is nothing to consolidate, and no
`
`potential for inconsistencies. Second, Defendants provide no authority supporting
`
`their position that a late-filed petition may go forward even if its accompanying
`
`joinder request is denied. During the June 26, 2013 conference call with the
`
`Board, Defendants were directly asked for any such authority. Defendants
`
`responded by submitting the following passage of legislative history (in an
`
`improper e-mail submission rejected by the Board):
`
`“The Director is given discretion, however, over whether to allow joinder.
`
`This safety valve will allow the Office to avoid being overwhelmed if there
`
`happens to be a deluge of joinder petitions in a particular case.”
`
`Nl-2014, quoting l57 Cong. Rec. S1360, S1376 (daily ed. Mar. 8, 2011)
`
`(statement of Sen. Kyl) (emphasis added). If the intent was to allow a “deluge” of
`
`untimely petitions to go forward even if the accompanying joinder requests were
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR20l 3-00071
`
`denied (Defendants’ position), then Congress would not have described denying
`
`joinders as a “safety valve” that “allow[s] the Office from being overwhelmed.”
`
`To the contrary, allowing IPR to move forward ifj oinders are denied lacks any
`
`“valve” whatsoever and ensures that the Office would be overwhelmed. This
`
`passage directly contradicts Defendants’ position.
`
`III.
`
`Independent Reason 3: Defendants’ Petition does not meet the
`threshold of Section 314.
`
`Joinder is only appropriate if the Board first determines that the new petition
`
`“warrants the institution of an inter partes review under section 3 l4.” 35 U.S.C.
`
`§3 15 (c). As will be demonstrated in Network-l ’s Preliminary Response, despite
`
`their attempt to upgrade their initial petition, Defendants’ new petition also fails to
`
`meet the requisite threshold under Section 314. Accordingly, joinder is not
`
`authorized under the statute.
`
`IV. Conclusion.
`
`For the reasons set forth above, Defendants’ motion for joinder should be
`
`denied.
`
`Date: July 3,2013
`
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Telephone (703) 836-6620
`
`Respectfully submitted,
`BUCHANAN INGERSOLL & ROONEY PC
`
`By: , W"
`
`Robert G. Mukai, Esq.
`Registration No. 28,531
`Counselfor NETWORK—I SECURITY
`SOL UTIONS, INC.
`
`10
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`
`Case No. IPR20l3-00071
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR JOINDER
`
`FILED IN IPR2013-00386 is being served upon the following this 3rd day of
`
`July, 2013:
`
`Jeffrey D. Sanok
`Jonathan Lindsay
`CROWELL & MORING LLP
`
`Counsel for Petitioner in this IPR20l3—00071
`
`at AVl—PRPS@Crowel1.com
`
`and is being served upon the following this 3rd day of July, 2013, via overnight
`UPS (an EXPRESS MAIL® equivalent) to:
`
`Lionel M. Lavenue
`C. Gregory Gramenopoulos
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`Two Freedom Drive
`1 1955 Freedom Drive
`
`Reston, VA 20190
`Counsel for Petitioners Sony and Axis
`in IPR 2013-00386; and
`
`Date: July 3, 2013
`
`Robert J . Walters
`Charles J. Hawkins
`McDermott Will & Emery LLP
`500 North Capitol Street, NW
`Washington, DC 20001
`Counsel for Petitioner HP in
`
`IPR20l3-003 86
`
`péNn
`
`‘
`
`Robert G. Mukai, Esq.
`Registration No. 28,53 1
`Counselfor NETWORK—1 SECURITY
`SOL UTIONS, INC.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
