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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`DELL INC.,
`Petitioner
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`v.
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`NETWORK-1 SECURITY SOLUTIONS, INC.,
`Patent Owner
`
`
`CASE IPR: IPR2013-00385
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`
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`DELL INC.,
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.,
`Patent Owner
`
`
`CASE IPR: IPR2013-00385
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Dell’s Motion for Joinder (IPR2013-00385)
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`Dell Inc. (“Dell”) submits concurrently herewith a Petition for Inter Partes
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`Review of U.S. Patent No. 6,218,930 (the “’930 Patent”) (“Petition”). Dell
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`respectfully requests that its Petition be granted and moves that the proceedings be
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`joined pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 37 C.F.R.
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`§ 42.122(b) with the pending inter partes review initiated by Avaya Inc. (“Avaya”)
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`concerning the same patent: Avaya Inc. v. Network-1 Security Solutions, Inc., Case
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`No. IPR2013-00071 (the “Avaya IPR”).
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`In accordance with the Board’s Representative Order identifying matters to
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`be addressed in a motion for joinder (Paper No. 15, IPR2013-00004, April 24,
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`2013), Dell submits that: (1) joinder is appropriate because it will promote efficient
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`determination of the validity of the ’930 Patent without prejudice to Avaya or
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`Network-1 (See, e.g., Paper No. 10, IPR2013-00256, June 20, 2013 (granting
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`motion for joinder under similar circumstances)); (2) Dell’s petition raises the
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`same grounds of unpatentability as Avaya; (3) joinder would not affect the pending
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`schedule in the Avaya IPR nor increase the complexity of that proceeding,
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`minimizing costs; and (4) Dell is willing to agree to consolidated filings with
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`Avaya to minimize burden and schedule impact. Absent joinder, Dell could be
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`prejudiced if the Avaya IPR is terminated before a final written decision is issued
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`as it would have to litigate the same positions at the District Court under a higher
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`burden of proof. Accordingly, joinder should be granted.
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`1
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`Dell’s Motion for Joinder (IPR2013-00385)
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`Background and Related Proceedings
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`I.
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`Network-1 Security Solutions, Inc., is the owner of the ’930 Patent. In 2011,
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`Network-1 sued twenty-six (26) different companies, including Dell and Avaya,
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`for allegedly infringing the ’930 Patent by selling devices that are compliant with
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`the IEEE 802.3af and 802.3at Power over Ethernet (“PoE”) standards (the
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`“Underlying Litigation”).
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`In addition to the Underlying Litigation, the ’930 Patent is the subject of a
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`pending ex parte reexamination proceeding (Control No. 90/012,401) in which
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`claims 6, 8, and 9 have been non-finally rejected on multiple anticipation and
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`obviousness grounds. Neither Dell nor Avaya are the real party-in-interest in that
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`proceeding, which has been stayed by the Board pending outcome of the Avaya
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`IPR and another petition for inter partes review of the ’930 Patent, IPR2013-00092
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`(See Paper No. 9, IPR2013-00071).1
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`Avaya Corporation filed its petition for inter partes review of the ‘930
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`Patent on December 5, 2012. On March 5, 2013, the Underlying Litigation was
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`stayed pending the outcome of both the Avaya IPR and IPR2013-00092. The
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`Board instituted trial in the Avaya IPR on May 24, 2013 (Paper No. 18, IPR 2013-
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`1 That petition was submitted by Sony Corporation of America and has been
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`denied (Paper No. 21, IPR2013-00092). Sony has requested rehearing (Paper No.
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`22, IPR2013-00092).
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`2
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`00071) on Grounds 1 and 3 in Avaya’s petition and set July 24, 2013, as the date
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`Dell’s Motion for Joinder (IPR2013-00385)
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`for Network-1’s response to the petition (Paper No. 19). On June 7, 2013, Avaya
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`requested a limited rehearing on the subject of its Ground 5 (Paper No. 20). The
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`Board has not yet acted on this request. Oral argument is currently set for
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`December 17, 2013.
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`II. Dell’s petition and motion for joinder are timely
`Dell’s Petition and the instant motion for joinder are timely under 35 U.S.C.
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`315(c), 37 C.F.R. §§ 42.22, and 42.122(b), as they are being submitted within one
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`month of May 24, 2013, the date that the Avaya IPR was instituted.2 Dell’s filings
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`are within the time period prescribed by the statute and the regulations for filing
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`such a petition and motion for joinder.
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`Network-1’s counsel stated on the June 24, 2013 conference call that it
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`believes Dell’s petition is untimely and referred the Board to an Opposition to a
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`Petitioner’s Motion for Joinder filed in IPR2013-00319. (See Paper No. 16,
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`IPR2013-00319, June 11, 2013) (the “Opposition”). The Opposition takes a
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`number of rather radical positions including that the USPTO has misinterpreted 35
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`2 On June 24, 2013, at the Board’s request, counsel for Petitioner Dell conducted a
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`conference call with the Board, counsel for Petitioner Avaya in IPR2013-00071,
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`and counsel for Patent Owner Network-1. During the call, the Board authorized the
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`filing of the instant motion.
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`3
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`
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`U.S.C. §§ 315(b) and 315(c), has exceeded its statutory authority when
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`Dell’s Motion for Joinder (IPR2013-00385)
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`promulgating its regulations relating to joinder, and that every decision by the
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`Board on joinder to date is wrong. (Id. at 2-5.)
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`Dell disagrees with Network-1’s position and respectfully submits that the
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`USPTO and the Board are properly interpreting 35 U.S.C. §§ 315(b) and 315(c)
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`and that the USPTO’s regulations are properly promulgated. See, e.g., 35 U.S.C.
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`§ 316(a)(12) (authorizing the Director to set a time limit for requesting joinder); 37
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`C.F.R. 42.122(b) (setting a time limit of one-month); see also Changes to
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`Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and
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`Transitional Program for Covered Business Method Patents, Federal Register, Vol.
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`77, No. 157 at 48690 (“the time period set forth in § 42.101(b) shall not apply
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`when the petition is accompanied by a request for joinder. This is consistent with
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`the last sentence of 35 U.S.C. 315(b), as amended”).
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`Dell respectfully submits that the statutory interpretation advanced by the
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`Opposition (as apparently adopted by Network-1) is incorrect. The last sentence of
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`35 U.S.C. § 315(b) plainly states that the “[the one-year time limit] set forth in the
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`preceding sentence shall not apply to a request for joinder under subsection (c).”
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`Subsection (c) permits joinder of “any person who properly files a petition under
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`section 311.” Whether a petition is “properly file[d]” within the meaning of 35
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`U.S.C. § 311 is thus determined by whether that petition meets the requirements of
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`4
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`35 U.S.C. § 311, which are not altered by 35 U.S.C. § 315(b). Dell’s Petition
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`Dell’s Motion for Joinder (IPR2013-00385)
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`meets the requirements of 35 U.S.C. § 311 as Dell has (1) paid the fee prescribed
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`by the Director pursuant to § 311(a); and (2) pursuant to § 311(b), requested
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`cancellation of 1 or more claims of the ‘930 Patent on section 102 and 103 grounds
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`premised on prior art patents or printed publications.3 See 35 U.S.C. § 311.
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`Indeed, a strict reading of 35 U.S.C. § 315(c) actually contemplates that the Board
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`does not even have to institute a trial on Dell’s Petition, but can simply join Dell to
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`the Avaya IPR if it “determines” that Dell’s Petition “warrants the institution of an
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`inter partes review under section 314.”
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`Most importantly, the Board has already considered and granted motions for
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`joinder in at least two other proceedings in which the subject petitions were not
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`filed until after the one-year deadline of § 315(b) had passed. (See, e.g., Paper No.
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`15, IPR2013-00109, February 15, 2013 (explaining “the one-year time bar does not
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`apply to a request for joinder… an important consideration here, because
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`[Petitioner] was served with a complaint asserting infringement of the [challenged]
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`patent more than a year before filing the second Petition.”); Paper No. 10,
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`IPR2013-00256, June 20, 2013.) Accordingly, Dell respectfully submits that its
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`3 § 311(c) does not apply to the ‘930 Patent since it is not a patent described in
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`section 3(n)(1) of the Leahy-Smith American Invents Act. See Pub. Law No. 112-
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`274, § 1(d)(1) (2013).
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`5
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`Petition and the instant motion are timely and properly filed under both the
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`Dell’s Motion for Joinder (IPR2013-00385)
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`applicable statutes and regulations.
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`During the June 24 conference call, Network-1’s counsel also raised
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`concerns regarding Dell’s purported “delay” and “diligence” in filing its Petition
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`and the instant motion. These concerns are misplaced. Dell has fully complied
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`with the timelines provided in both the statute and regulations as written in order
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`to protect its interests. Dell should not be punished for following the statutory and
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`regulatory scheme for inter partes review, particularly when, as explained further
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`below, it is making every effort to minimize the potential for prejudice to either
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`Avaya or Network-1.
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`III. Joinder will not impact the Board’s ability to complete the review
`within the one-year period
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`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
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`42.100(c) provide that inter partes review proceedings should be completed and
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`the Board’s final decision issued within one year of institution of the review. Here,
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`joinder should not affect the Board’s ability to issue its final determination within
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`one year because Dell does not raise any issues that are not already before the
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`6
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`Board.4 Indeed, Dell’s Petition is based on the same grounds and combinations of
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`Dell’s Motion for Joinder (IPR2013-00385)
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`prior art considered by the Board in instituting trial in the Avaya IPR.
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`Accordingly, since Dell’s inter partes review petition does not raise any new issues
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`beyond those already considered by Network-1, Dell does not anticipate that
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`Network-1 will need a substantial amount of time to complete its Preliminary
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`Patent Owner’s Response (“POPR”).5
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`Dell respectfully submits that briefing and discovery in the joined
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`proceeding can be simplified to minimize any impact to the schedule or the volume
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`of materials to be submitted to the Board. Given that Avaya and Dell will be
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`4 Dell notes that 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. § 42.100(c)
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`also provide the Board with flexibility to extend the one-year period by up to six
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`months in the case of joinder.
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`5 On the June 24, 2013 conference call, the Board asked Dell’s undersigned
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`counsel if Dell had any proposal for the schedule of Network 1’s POPR. Dell
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`believes the Board supplied this schedule during the call and that the POPR is due
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`July 9, 2013. On the call, Avaya’s counsel inquired as to the permissible scope of
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`the POPR. Dell respectfully suggests that the Board adopt an Order similar to that
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`contained in Paper No. 8, IPR2013-00256 and allow Network-1 the option to file a
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`POPR addressing only those points raised in Dell’s Petition that are different from
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`those in the Avaya IPR (there should be none).
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`7
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`addressing the same prior art and the same bases for rejection of the claims at issue
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`Dell’s Motion for Joinder (IPR2013-00385)
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`using the same expert, Dell envisions few, if any, differences in position. In any
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`event, Dell has conferred with counsel for Avaya and is willing to agree to
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`consolidated filings on the existing briefing schedule, for which Avaya will be
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`responsible. (Paper No. 10 at 9, IPR2013-00256, June 20, 2013.) Similar to the
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`procedures ordered by the Board in IPR2013-00256, Dell is willing to be limited to
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`separate filings, if any, of no more than seven pages directed only to points of
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`disagreement with Avaya, with the understanding that it will not be permitted any
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`separate arguments in furtherance of those advanced in Avaya’s consolidated
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`filings. (Id.) “This approach should avoid introducing delay that could arise from
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`lengthy briefing by each party, while providing the parties an opportunity to
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`address all issues that may arise.” (Id.)
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`As also discussed during the June 24 conference call, Dell has retained the
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`same expert as Avaya, Dr. George A. Zimmerman. Dr. Zimmerman has executed
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`a declaration in support of Dell’s petition that is identical in substance to the
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`declaration he previously filed in the Avaya IPR. The only difference is that Dr.
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`Zimmerman has omitted his analysis of references and grounds not pursued by
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`Dell in its Petition. Accordingly, Network-1 should not need any additional
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`discovery of Dr. Zimmerman beyond that which it has already asked for in the
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`Avaya IPR, nor should it be permitted any.
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`8
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`IV. Joinder would enhance efficiency by avoiding duplicate efforts and
`inconsistencies and would avoid prejudice to Dell
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`Dell’s Motion for Joinder (IPR2013-00385)
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`The validity of the ’930 patent is squarely at issue in, as described above,
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`both the Underlying Litigation and the Avaya IPR, and a final written decision in
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`the consolidated inter partes review has the potential to resolve the Underlying
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`Litigation. Allowing a consolidated inter partes review would also avoid potential
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`inconsistency and avoid prejudice to Dell in the event that Avaya and Network-1
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`reach a resolution of their disputes during the pendency of the IPR. 35 U.S.C. §
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`317(a) provides that an inter partes review “shall be terminated with respect to any
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`petitioner upon the joint request of the petitioner and the patent owner” unless the
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`Board has already reached its decision on the merits. If no petitioner remains after
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`settlement, “the Office may terminate the review.” Id. Thus, if Network-1 and
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`Avaya were to reach a settlement, the Avaya IPR could terminate without
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`proceeding to a final written decision.
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`Indeed, if the Board terminated the Avaya IPR, Dell (along with the other
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`defendants) would be forced to start over before the District Court with the exact
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`same arguments that Avaya has already shown it is reasonably likely to prevail on.
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`(See Paper No. 18, IPR 2013-00071, May 24, 2013.) The potential for
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`inconsistency would be also heightened because Dell (and the other defendants)
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`would face a higher burden before the District Court of proving the invalidity of
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`claims 6 and 9 by clear and convincing evidence, as opposed to the lower burden
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`9
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`here of a preponderance of the evidence. See 35 U.S.C. § 316(e). Having to
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`Dell’s Motion for Joinder (IPR2013-00385)
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`overcome a higher burden to get the same result is by definition prejudicial to Dell,
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`especially since Dell has complied with the statute and regulations in filing its
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`Petition and the instant motion. Additionally, if the Board permits Dell to join the
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`Avaya IPR, and Network-1 is correct in its belief that claims 6 and 9 of the ‘930
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`patent are patentable, Dell will be estopped from further challenging the validity of
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`the patent in the Underlying Litigation, avoiding duplication of efforts at least as to
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`Dell. See 35 U.S.C. § 315(e)(1). Accordingly, to avoid duplicate efforts, the
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`possibility of inconsistencies, and prejudice to Dell, joinder is appropriate.
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`V.
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`Joinder will not prejudice Network-1 or Avaya
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`Permitting joinder will not prejudice Network-1 or Avaya. Dell raises no
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`issues that are not already before the Board, such that joinder would not affect the
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`timing of the Avaya IPR or the content of Network-1’s Patent Owner response due
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`on July 24, 2013. Dell also believes any additional costs to Network-1 and Avaya
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`associated with its participation in the Avaya IPR will be minor, and certainly not
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`so great as to justify the potential prejudice to Dell if the Avaya IPR were to be
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`otherwise terminated before a final written decision by the Board.
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`Finally, even if the Board were to determine that joinder will require a minor
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`extension of the schedule (as indicated on the June 24, 2013 conference call), such
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`10
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`an extension is permitted by law and is not a reason for denying joinder. 35 U.S.C.
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`Dell’s Motion for Joinder (IPR2013-00385)
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`§ 316(a)(1); 37 C.F.R. § 42.100(c).
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`VI. Conclusion
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 6,218,930 be granted and that the
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`proceedings be joined with Avaya Corporation v. Network-1 Security Solutions,
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`Inc., Case IPR2013-00071.
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`The undersigned attorney may be reached by telephone at (212) 294-3325.
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`Although Petitioner believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
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`required for this Motion to Deposit Account No. 50-1814.
`
`/Michael J. Scheer/
`Michael J. Scheer
`Reg. No. 34,425
`
`Lead Counsel for Petitioner
`Dell Inc.
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`
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`Respectfully submitted,
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`Date: June 24, 2013
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`
`
`WINSTON & STRAWN LLP
`200 Park Ave.
`New York, NY 10166
`Telephone: (212) 294-3325
`Fax: (202) 282-5100
`mscheer@winston.com
`
`
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`11
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`Dell’s Motion for Joinder (IPR2013-00385)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that on June
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`24, 2013 I caused to be served a true and correct copy of the foregoing “MOTION
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`FOR JOINDER UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, AND 42.122(b)”
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`by EXPRESS MAIL on the Patent Owner at the correspondence address of record
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`for the U.S. Patent No. 6,218,930, as follows:
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`BUCHANAN, INGERSOLL & ROONEY PC
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`POST OFFICE BOX 1404
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`ALEXANDRIA VA 22313-1404
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`Date: June 24, 2013
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`
`
`WINSTON & STRAWN LLP
`200 Park Ave.
`New York, NY 10166
`Telephone: (212) 294-3325
`Fax: (202) 282-5100
`mscheer@winston.com
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`Respectfully submitted,
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`
`/Michael J. Scheer/
`Michael J. Scheer
`Reg. No. 34,425
`
`Lead Counsel for Petitioner
`Dell Inc.
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`12
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