`571-272-7822
`
` Paper 6
`Entered: June 25, 2013
`
`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
`Patent 6,218,930
`
`
`
`Before JONI Y. CHANG and JUSTIN T. ARBES, Administrative Patent
`Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`A conference call in the above proceeding was held on June 24, 2013
`
`between Judges Chang and Arbes, respective counsel for Petitioner and
`
`Patent Owner, and counsel for third party Dell Inc. (“Dell”). Dell requested
`
`the call to discuss its intent to file a petition to institute an inter partes
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`review of claims 6 and 9 of Patent 6,218,930 (the “’930 patent”) along with
`
`a motion for joinder with this proceeding.
`
`Dell represented during the call that its petition would include only
`
`the grounds of unpatentability on which the Board instituted a trial in this
`
`proceeding. Dell further stated that it would be filing a declaration from the
`
`same declarant as Petitioner, Dr. George A. Zimmerman, and that the
`
`declaration would be the same except it would omit the portions of
`
`Petitioner’s declaration pertaining to non-instituted grounds. Dell indicated
`
`that its joinder would not require any changes to the Scheduling Order
`
`(Paper 19) in this proceeding.
`
`Petitioner stated that it opposes Dell’s request for joinder, arguing that
`
`joinder of a party on identical grounds would be redundant and would
`
`increase the costs to Petitioner due to the additional coordination between
`
`the parties that would be required. Petitioner requested that if joinder is
`
`granted, similar conditions to those in Case IPR2013-00256, Paper 10,
`
`should be imposed, which would allow Petitioner to control this proceeding.
`
`Dell had no objection to this request. Patent Owner stated that it also
`
`opposes Dell’s request because Dell gave no excuse for its delay in filing,
`
`joinder would increase the costs to the parties and diminish the chances of
`
`settlement, and joinder is not permitted under 35 U.S.C. § 315.
`
`Subsequently, on June 24, 2013, Dell filed its petition and motion for
`
`joinder in Case IPR2013-00385. Dell’s petition in Case IPR2013-00385
`
`includes the grounds of unpatentability on which the Board instituted a trial
`
`in this proceeding, as well as the ground that claims 6 and 9 are unpatentable
`
`over Chang (Ex. 1006) in view of De Nicolo (Ex. 1007) under 35 U.S.C.
`
`§ 103(a), which the Board denied. The additional ground is the subject of
`
`
`
`2
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`Petitioner’s pending request for rehearing (Paper 20) in this proceeding.
`
`As discussed during the call, Petitioner and Patent Owner will each be
`
`permitted to file an opposition to Dell’s motion for joinder by July 1, 2013.
`
`The due date for Patent Owner to file a preliminary response in Case
`
`IPR2013-00385, should it choose to do so, will be set to July 9, 2013. The
`
`Board will then decide Dell’s petition and motion for joinder in due course.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner is authorized to file in this proceeding an
`
`opposition to Dell’s motion for joinder by July 1, 2013, limited to ten pages;
`
`FURTHER ORDERED that Patent Owner is authorized to file in
`
`this proceeding an opposition to Dell’s motion for joinder by July 1, 2013,
`
`limited to ten pages;
`
`FURTHER ORDERED that no replies are authorized; and
`
`FURTHER ORDERED that a copy of this Order be entered into the
`
`file of Case IPR2013-00385.
`
`
`
`3
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`PETITIONER:
`
`Jeffrey D. Sanok
`Jonathan Lindsay
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`JSanok@Crowell.com
`JLindsay@Crowell.com
`
`
`PATENT OWNER:
`
`Robert G. Mukai
`Charles F. Wieland III
`BUCHANAN, INGERSOLL & ROONEY P.C.
`1737 King St., Suite 500
`Alexandria, VA 22314
`Robert.Mukai@BIPC.com
`Charles.Wieland@BIPC.com
`
`
`THIRD PARTY DELL INC.:
`
`Michael J. Scheer
`Thomas M. Dunham
`WINSTON & STRAWN LLP
`200 Park Ave.
`New York, NY 10166-4193
`mscheer@winston.com
`tdunham@winston.com
`
`
`
`
`
`4
`
`
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