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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________________________
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`AVAYA INC.
`Petitioner
`
`v.
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`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 RESPONSE TO MOTION
`FOR JOINDER FILED BY THIRD PARTIES
`SONY CORPORATION OF AMERICA, AXIS COMMUNICATION AB,
`AXIS COMMUNICATIONS INC., AND HEWLETT-PACKARD CO.
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`Avaya’s Response to the ’386 Petitioners’ 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.
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`B.
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`Factual Background ............................................................................... 1
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`The ’386 Petition Is Untimely For HP, Timely For Sony and
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`Axis ........................................................................................................ 2
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`C.
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`The Board Should Preclude HP’s Participation to Discourage
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`Future Parties From Seeking Late Joinder Requests ............................ 6
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`D.
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`If the Board Grants Joinder, it Should Adopt Several Procedural
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`Conditions to Reduce Disruption .......................................................... 8
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`III. CONCLUSION ................................................................................................ 9
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`Avaya’s Response to the ’386 Petitioners’ 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. 27, Petitioner Avaya Inc.
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`(“Avaya”) partially opposes the Motion for Joinder of Sony Corporation of
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`America (“Sony”), Axis Communications AB, Axis Communications Inc. (both
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`Axis entities, “Axis”), and Hewlett-Packard Co. (“HP”) (collectively, “the ’386
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`Petitioners”). As set forth in greater detail below, Avaya opposes the joinder of
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`HP, but consents to the joinder of Sony and Axis.
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`First, pursuant to 35 U.S.C. § 315(b), the ’386 Petition, while timely for
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`Sony and Axis, is untimely for HP. Accordingly, the joinder must be denied with
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`respect to HP on that basis. Second, HP failed to act diligently in filing a petition,
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`and the Board should deny the joinder request with respect to HP on those grounds.
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`Finally, if the Board grants the ’386 Petitioners’ Motion, either in whole or in-part,
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`Avaya requests the adoption of specific conditions identified in Section II.D., infra,
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`to minimize the disruption to this Proceeding.
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`II. ARGUMENT
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`
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`A.
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`Factual Background
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`In the district court infringement action, Sony was served on December 19,
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`2011; Axis was served on December 27, 2011; and HP was served on December
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`15, 2011. See Exs. AV-1023, AV-1024 and AV-1025.
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`1
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`Avaya’s Response to the ’386 Petitioners’ Joinder Request
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`IPR2013-0071
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`On December 19, 2012, Sony and Axis filed their first petition (“the ’092
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`Petition”) seeking an IPR review of Patent 6,218,930 (“the ’930 patent). See
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`IPR2013-0092, Paper No. 9. Sony and Axis filed the ’092 Petition one year before
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`Patent Owner Network-1 Security Solutions, LLC (“Network-1”) served either
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`Sony or Axis with its complaint, and thus the petition was “properly filed.” See
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`Section II.A, supra. The Board determined not to institute a proceeding in the ’092
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`Petition, and recently denied a request for rehearing. See IPR2013-0092, Paper
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`Nos. 21 and 24. HP was not a petitioner to the ’092 Petition, and did not file any
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`petitions on its own.
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`On June 24, 2013, Sony and Axis filed its second petition (“the ’386
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`Petition”). HP is also named as a petitioner, for the first time, in the ’386 Petition.
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`HP’s petition is thus filed more than 18 months after Network-1 served HP with a
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`complaint for infringement of the ‘930 patent.
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`B.
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`The ’386 Petition Is Untimely For HP, Timely For Sony and Axis
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`The ’386 Petitioners collectively assert that they timely filed because they
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`filed within one month after the Board granted the petition in this proceeding
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`(“’071 Petition”). See ’386 Petitioners’ Motion, p. 5.
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`Section 315(b)-(c) of Title 35 defines IPR petition timeliness:
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`(b) . . . An inter partes review may not be instituted if the
`petition requesting the proceeding is filed more than 1
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`2
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`Avaya’s Response to the ’386 Petitioners’ Joinder Request
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`IPR2013-0071
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`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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`35 U.S.C. § 315(b)-(c) (emphasis added).
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`The plain language in subsection (b) mandates that an IPR petition is barred
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`if filed more than one year after the petitioner was served with a complaint alleging
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`infringement of the patent. While the final sentence of subsection (b) states that
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`the one-year bar “shall not apply to a request for joinder under subsection (c),” that
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`sentence relates to “requests for joinder,” not the filing of a new petition. But only
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`a person who “properly files a petition under section 311” can request joinder. See
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`35 U.S.C. § 315(c); see also IPR2013-00319, Paper No. 16 (including authorities
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`cited within). Put another way, a condition precedent to a request for joinder is
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`that the party in question already have properly filed a petition (i.e., a petition filed
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`3
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`Avaya’s Response to the ’386 Petitioners’ Joinder Request
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`IPR2013-0071
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`within the one-year bar). See 35 U.S.C. § 315(b) (stating that a petition is not
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`“properly filed” if it has been 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-2021 at 613-14) (emphasis added).
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`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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`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, as Sony
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`and Axis previously did by filing the ’092 Petition. For HP, however, the ’386
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`4
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`Avaya’s Response to the ’386 Petitioners’ Joinder Request
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`IPR2013-0071
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`Petition was not properly filed because HP (unlike Sony and Axis) did not file a
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`timely petition (i.e., a petition filed within one year of HP being served). HP’s
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`inclusion in this Proceeding, should therefore be denied.
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`Allowing Sony and Axis to join while denying HP comports with a prior
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`Board ruling. In Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, the Board
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`permitted joinder of a second petition filed by the same petitioner, Microsoft,
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`“after learning that additional claims were being asserted by Patent owner in
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`concurrent district court litigation.” (Paper No. 15). In filing its first petition,
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`Microsoft has already “properly file[d] a petition under section 311,” and thus was
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`entitled to seek joinder after the one-year bar for its second petition. See 35 U.S.C.
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`§ 315(c). Here, similarly, Sony and Axis “properly file[d] [the ’092] petition”
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`within the one-year bar, and thus Sony and Axis are entitled to join their ’386
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`Petition with this Proceeding. HP, however, has not previously filed a timely-
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`petition, and accordingly should not be joined.1
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`1 In Motorola v. Softview LLC, IPR2013-00256, the Board permitted joinder of a
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`petition filed by third party Motorola after the one-year bar, but the Board was not
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`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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`5
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`Avaya’s Response to the ’386 Petitioners’ Joinder Request
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`IPR2013-0071
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`Allowing HP to join would also lead to a possible infinite string of follow-
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`on IPR petitions by third parties. For instance, if the Board determines that third
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`parties (such as HP) that failed to file timely-petitions are able to join timely filed-
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`granted petitions, other third parties could file a third wave of IPR petitions and
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`requests for joinder within 30 days of the ’386 Petition being granted. If the Board
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`were to grant this third wave, the other parties’ requests could be followed by a
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`fourth, fifth, and subsequent waves ad infinitum. Clearly, Congress did not intend
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`this endless string of petitions as it would be disruptive to the goal to resolve IPR
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`proceedings within one year from institution.
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`C. The Board Should Preclude HP’s Participation to Discourage
`Future Parties From Seeking Late Joinder Requests
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`The Board should also consider diligence when determining whether to
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`grant a request for joinder. See Microsoft Corp. v. Proxyconn, Inc., IPR2013-
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`00109 (Paper No. 15). Here, in the district court action, HP was served with the
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`patent infringement complaint by Network-1 on December 15, 2011, the same day
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`that Avaya was served. HP failed to act diligently during the same one-year period
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`that Avaya shared. Moreover, even after Avaya filed its petition, HP had 12 days
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`6
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`Avaya’s Response to the ’386 Petitioners’ Joinder Request
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`IPR2013-0071
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`prior to the expiration of the one-year time period during which it could have filed
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`a petition.2
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`In crafting the AIA, Congress noted that “[t]he [USPTO] has made clear that
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`it intends to use [its discretionary authority to allow joinder] to encourage early
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`requests for joinder and to discourage late requests.” 157 Cong. Rec. S1376 (daily
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`ed. Mar. 8, 2011) (statement of Sen. Kyl) (Ex. AV-1021 at 613). If HP had
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`properly filed a petition of its own (within the one-year bar), it could have sought
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`joinder with the ’071 Petition as early as March 12, 2013, after Network-1 filed its
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`preliminary patent owner response. See 35 U.S.C. § 315(c). HP, however, took no
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`such action. Nor did it seek joinder immediately after the ’071 Petition was
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`granted on May 24, 2013. Rather, it waited a full 30 days after the ’071 Petition
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`was granted. In its papers, HP has offered no justification for its delay.
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`Accordingly, HP’s lack of diligence weighs against the Board granting its motion
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`for joinder. As a matter of policy, allowing HP to join under these circumstances
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`would create a disincentive for future parties to lodge early joinder requests, and
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`would disrupt the Board’s goal of resolving these matters within one year from the
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`institution of proceedings.
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`2 HP’s petition would have been due on December 17, 2012, since December 15,
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`2012 was a Saturday.
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`7
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`Avaya’s Response to the ’386 Petitioners’ Joinder Request
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`IPR2013-0071
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`In contrast, Sony and Axis timely filed their ’092 Petition. The Board
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`denied the ’092 Petition on the same day that ’071 Petition was granted. Thus,
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`Sony and Axis likely prepared their ’386 Petition after the Board declined to
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`institute their ’092 Petition. Such circumstances do not appear to indicate a lack of
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`diligence on the part of Sony and Axis. Rather, it is entirely reasonable that one
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`set of parties (here Sony and Axis) would only seek joinder upon denial of their
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`original petition.
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`D.
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`If the Board Grants Joinder, it Should Adopt Several Procedural
`Conditions to Reduce Disruption
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`Avaya requests that, should the Board grants the ’386 Petitioners’ Motion, a
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`number of procedural conditions be adopted that will reduce the prejudice to
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`Avaya and reduce the disruption to this Proceeding.3 Those conditions include the
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`following: (1) extend the briefing schedule by an appropriate amount of time so
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`3 Avaya makes this proposal under the assumption that the Board will grant the
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`’386 Petition on one or more of the new grounds (Grounds 1, 2, and 4) raised by
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`Sony and Axis. Should the Board only grant the ’386 Petition on Ground 3
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`(anticipation by Matsuno), Avaya seeks the same conditions it sought with respect
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`to Dell’s joinder motion. Paper No. 30.
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`8
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`Avaya’s Response to the ’386 Petitioners’ Joinder Request
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`IPR2013-0071
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`that all adopted grounds of invalidity will be considered together; (2) provide for
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`Avaya to maintain responsibility for all briefs that are to address grounds
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`containing the Matsuno reference; (3) provide for Avaya to maintain control and
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`responsibility for any depositions of any Patent Owner witness, including any
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`experts, where any added entities from the ’386 Petitioners 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; (4) provide for Avaya to be given control and
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`responsibility for any redirect depositions of Dr. Zimmerman, where any added
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`entities from the ’386 Petitioners will be able to ask questions only after Avaya has
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`completed its questioning and within the remaining time allowed for such
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`depositions; (5) all motions filed by petitioners must be authorized by Avaya; and
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`(6) provide for Avaya to be responsible for all oral arguments that are to address
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`grounds containing the Matsuno reference, where any added entities from the ’386
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`Petitioners will be able to present arguments only after Avaya has completed its
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`arguments and within the remaining time allowed.
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`III. CONCLUSION
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`For the reasons set forth above, Avaya respectfully submits that the Board
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`should reject the ’386 Petitioners Motion with respect to HP, but grant the motion
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`for Sony and Axis. If the Board grants any part of the ’386 Petitioners’ Motion,
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`9
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`Avaya’s Response to the ’386 Petitioners’ Joinder Request
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`IPR2013-0071
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`Avaya respectfully requests that the Board adopt the suggested conditions to
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`minimize disruption to this Proceeding.
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`Respectfully submitted,
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`July 3, 2013
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`
` /Jeffrey D. Sanok/
`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
`
`
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`10
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`
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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 3rd day of July 2013, true and correct copies of
`the foregoing “PETITIONER AVAYA INC’S RESPONSE TO MOTION FOR
`JOINDER FILED BY THIRD PARTIES SONY CORPORATION OF
`AMERICA, AXIS COMMUNICATION AB, AXIS COMMUNICATIONS INC.,
`AND HEWLETT-PACKARD CO.” was served, in accordance with the parties’
`electronic service agreement, by electronic mail upon the following lead and
`backup counsel of record for the Patent Owner, Network-1 Security Solutions,
`Inc.:
`
`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 3, 2013
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`
` /Jonathan 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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