Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 17
`Entered: July 29, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00385
`Patent 6,218,930
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Dell’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 17
`Entered: July 29, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00385
`Patent 6,218,930
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Dell’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`
`Introduction
`Dell Inc. (“Dell”) filed a Petition (Paper 2) (“Pet.”) to institute an inter
`partes review of claims 6 and 9 of Patent 6,218,930 (the “’930 patent”)
`pursuant to 35 U.S.C. § 311 et seq. and a motion for joinder with Case
`IPR2013-00071 (Paper 4) (“Mot.”). Patent Owner Network-1 Security
`Solutions, Inc. (“Network-1”) filed a preliminary response to the Petition
`and an opposition to Dell’s motion. Paper 14 (“Prelim. Resp.”);
`IPR2013-00071, Paper 28 (“Network-1 Opp.”). Avaya Inc. (“Avaya”), the
`petitioner in Case IPR2013-00071, also filed an opposition to Dell’s motion.
`IPR2013-00071, Paper 30 (“Avaya Opp.”). For the reasons that follow,
`Dell’s motion for joinder is granted.1
`
`
`Analysis
`The America Invents Act (AIA) created new administrative trial
`proceedings, including inter partes review, as an efficient, streamlined, and
`cost-effective alternative to district court litigation. The AIA permits the
`joinder of like proceedings. The Board, acting on behalf of the Director, has
`the discretion to join an inter partes review with another inter partes review.
`35 U.S.C. § 315. Section 315(c) provides (emphasis added):
`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.
`
`
`1 In a decision entered concurrently, Dell’s Petition is granted and a trial is
`instituted on the same grounds as in Case IPR2013-00071.
`
`
`
`2
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`
`The AIA also establishes a one-year bar from the date of service of a
`complaint alleging infringement for requesting inter partes review, but
`specifies that the bar does not apply to a request for joinder under Section
`315(c). Section 315(b) reads (emphasis added):
`PATENT OWNER’S ACTION. – 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).
`
`Further, in the case of joinder, the Board has the discretion to adjust the time
`period for issuing a final determination in an inter partes review. 35 U.S.C.
`§ 316(a)(11); 37 C.F.R. § 42.100(c).
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board
`will determine whether to grant joinder on a case-by-case basis, taking into
`account the particular facts of each case, substantive and procedural issues,
`and other considerations. See 157 CONG. REC. S1376 (daily ed. Mar. 8,
`2011) (statement of Sen. Kyl) (when determining whether and when to allow
`joinder, the Office may consider factors including “the breadth or
`unusualness of the claim scope” and claim construction issues). When
`exercising its discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`37 C.F.R. § 42.1(b).
`As the moving party, Dell has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`
`
`
`3
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`A motion for joinder should: (1) set forth the reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See Mot. 1; see also IPR2013-00004,
`Paper 15 at 4; Frequently Asked Question (“FAQ”) H5 on the Board’s
`website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`
`Statutory Authority to Join Dell
`As an initial matter, Network-1 and Avaya both argue that the Board
`does not have the authority to join Dell as a party under 35 U.S.C. § 315.
`Network-1 Opp. 2-3; Prelim. Resp. 1-8; Avaya Opp. 1-5. Section 315(c)
`provides that the Director may join a party that “properly files a petition
`under section 311.” Network-1 and Avaya argue that because Dell’s
`Petition was filed more than one year after being served with a complaint in
`violation of Section 315(b), Dell did not “properly file[] a petition” and
`cannot be joined.2 In other words, according to the opposing parties, filing a
`petition within one year is a “condition precedent” to joinder and a party that
`files beyond the one-year window can never be joined, without exception.
`See Network-1 Opp. 2-3; Avaya Opp. 2-3.
`We disagree with Network-1 and Avaya that the Board lacks the
`authority to join Dell as a party under Section 315. While Dell filed its
`Petition more than one year after being served with a complaint, the second
`
`2 Network-1 contends that Dell was served with a complaint alleging
`infringement of the ’930 patent on December 14, 2011, and filed its Petition
`on June 24, 2013. Network-1 Opp. 3 (citing IPR2013-00071, Ex. 2009).
`Avaya asserts that Dell was served on December 16, 2011. Avaya Opp. 7.
`
`
`
`4
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`sentence of Section 315(b) provides that the one-year bar “shall not apply to
`a request for joinder under subsection (c).” The one-year bar, therefore,
`does not apply to Dell because it filed a motion for joinder with its Petition.
`This is confirmed by the Board’s rules, which provide that a petition
`requesting inter partes review may not be “filed more than one year after the
`date on which the petitioner, the petitioner’s real party-in-interest, or a privy
`of the petitioner is served with a complaint alleging infringement of the
`patent,” but the one-year time limit “shall not apply when the petition is
`accompanied by a request for joinder.” 37 C.F.R. §§ 42.101(b), 42.122(b);
`see also IPR2013-00109, Paper 15 (permitting joinder of a party beyond the
`one-year window); IPR2013-00256, Paper 10 (same). The Board’s rules do
`not conflict with the language of the statute as Network-1 and Avaya
`suggest.
`Network-1 and Avaya’s interpretation incorporates erroneously the
`one-year bar into the statutory language of Section 315(c), which permits
`joinder of “any person who properly files a petition under section 311”
`(emphasis added). Section 311 includes various requirements, such as a
`requirement that petitions may only raise grounds of unpatentability based
`on 35 U.S.C. §§ 102 or 103 and only on the basis of prior art patents and
`printed publications, but does not include the one-year bar, which is part of
`Section 315(b). Thus, “properly fil[ing] a petition under section 311” does
`not mean filing a petition within one year as required by Section 315(b). In
`its opposition, Network-1 argues that Section 311(a) provides that “[s]ubject
`to the provisions of this chapter, a person who is not the owner of a patent
`may file with the Office a petition to institute an inter partes review,” and
`Section 315(b) is a “provision[] of this chapter.” Network-1 Opp. 2. This
`
`
`
`5
`
`
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`Case IPR2013-00385
`Patent 6,218,930
`
`argument is not persuasive. Section 315(c) refers only to “section 311,” not
`to any other portions of the statute or portions of the statute referenced in
`Section 311.
`We also note that the parties’ concerns over the potential implications
`of the Board’s rules permitting joinder are misplaced. See Prelim. Resp. 4-6;
`Avaya Opp. 5. Network-1, for example, argues that under the Board’s
`interpretation, one defendant in a multi-defendant lawsuit can file a petition,
`followed by another with a joinder request when the first petition is granted,
`followed by yet another each time another joining defendant’s petition is
`granted, resulting in a “continuous string of follow-on IPR petitions” that
`“could tie up a patent in IPR proceedings for years.” Prelim. Resp. 4. The
`fact that the Board has the discretion to join a party does not mean that
`joinder is automatic, particularly given the need to complete proceedings in
`a just, speedy, and inexpensive manner. See 35 U.S.C. § 316(b); 37 C.F.R.
`§ 42.1(b); 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
`Kyl) (“The Director is given discretion . . . 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.”).
`The Board has the discretion under Section 315 to join Dell as a party
`to Case IPR2013-00071. We turn now to the question of whether that
`discretion should be exercised.
`
`
`Substantive Issues
`Dell argues that joinder with Case IPR2013-00071 will not impact the
`Board’s ability to complete the proceeding in one year because Dell’s
`Petition “does not raise any issues that are not already before the Board.”
`
`
`
`6
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`Mot. 6-7. We agree. Dell in its Petition asserts the same grounds of
`unpatentability as those on which a trial was instituted in Case
`IPR2013-00071. See Pet. 7; Paper 11; IPR2013-00071, Paper 18 at 29.
`Dell’s arguments regarding the asserted prior art references also appear to be
`identical to those made by Avaya. Compare Pet. 17-35, with
`IPR2013-00071, Paper 1 at 17-26, 36-45. Further, Dell submitted a
`declaration from the same declarant as Avaya, Dr. George A. Zimmerman,
`with the only difference being that testimony regarding prior art references
`on which a trial was not instituted in Case IPR2013-00071 is removed.
`Compare Ex. 1011, with IPR2013-00071, Ex. 1011. Thus, Dell’s Petition
`raises no new issues beyond what is already before the Board in the existing
`proceeding, which weighs in favor of granting the motion.
`
`
`Procedural Issues
`Dell argues that joinder will not prejudice Network-1 and Avaya.
`Mot. 7-11. Dell contends that “briefing and discovery in the joined
`proceeding can be simplified to minimize any impact to the schedule” and
`states that it agrees to similar procedures as those established in Case
`IPR2013-00256, such as “consolidated filings” with “separate filings, if any,
`of no more than seven pages directed only to points of disagreement with
`Avaya.” Id. at 7-8 (citing IPR2013-00256, Paper 10). According to Dell,
`any additional costs incurred by the existing parties as a result of Dell’s
`participation will be “minor” and do not outweigh the potential prejudice to
`Dell if the motion is denied. Id. at 9-10. For example, Dell asserts that if
`Network-1 and Avaya were to settle, the Board may terminate the existing
`proceeding and Dell would lose its opportunity to challenge the claims of the
`
`
`
`7
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`’930 patent before the Office. Id.
`Avaya argues that joinder will impose an “undue and unnecessary
`burden” on it because Dell makes no arguments that “cannot be raised by
`Avaya alone” and “Avaya will be required to consult with Dell and its
`counsel prior to every action taken, whether with respect to strategy,
`procedure, briefing or depositions.” Avaya Opp. 5-6. Avaya further asserts
`that briefing and depositions will become more complicated and more
`expensive as a result of Dell’s participation. Id.
`Given the fact that Dell’s Petition raises no new issues and the fact
`that Dell consents to procedural protections that will retain Avaya’s control
`over the proceeding, the impact of joinder on the existing proceeding will be
`minimal. In a previous Order, the due dates for the existing proceeding were
`extended by only two weeks, allowing for the proceeding to still be
`completed within one year. IPR2013-00071, Paper 39. In permitting
`joinder, we will require that Avaya and Dell make consolidated filings in
`Case IPR2013-00071. Avaya will be responsible for the consolidated
`filings. Any separate filing by Dell will be limited to no more than seven
`pages directed only to points of disagreement with Avaya. Dell will not be
`permitted any arguments in furtherance of those advanced in Avaya’s
`consolidated filing. Network-1 will be allowed a corresponding number of
`pages to respond separately to Dell filings. This approach should avoid
`introducing delay that could arise from lengthy briefing by each party, while
`providing the parties an opportunity to address all issues that may arise.
`These limitations on additional filings by Dell also avoid placing an undue
`burden on Network-1.
`
`
`
`8
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`
`In addition to these procedures, Avaya requests that the Board impose
`the following conditions to minimize the potential prejudice it will suffer
`from Dell’s participation:
`(4) Avaya shall be given control and responsibility for
`any depositions of any Network-1 witness, including any
`experts, where Dell will be able to ask questions only after
`Avaya has completed its questioning and within the remaining
`time allowed for such depositions;
`(5) Avaya shall be given control and responsibility for
`any redirect depositions of Dr. Zimmerman, where Dell will be
`able to ask questions only after Avaya has completed its
`questioning and within the remaining time allowed for such
`depositions;
`(6) all motions filed by petitioners must be authorized by
`Avaya; and
`(7) Avaya is to be responsible for all oral arguments,
`where Dell will be able to present arguments only after Avaya
`has completed its arguments and within the remaining time
`allowed.
`Avaya Opp. 8-9. We do not adopt these procedures in full, as they would
`unduly prejudice Dell. Avaya, however, will be permitted to ask questions
`before Dell at any deposition and present argument before Dell at any oral
`argument if Avaya so chooses. Avaya and Dell should work together to
`manage the time normally allotted for depositions. If the parties are unable
`to reach agreement, the parties should request a conference call.
`
`
`Other Considerations
`Network-1 and Avaya argue that if the Board concludes it has
`discretion to allow joinder, it should not exercise that discretion because
`doing so would encourage future parties to delay in seeking joinder.
`
`
`
`9
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`Network-1 Opp. 3-7; Avaya Opp. 7-8. The opposing parties contend that
`Dell had ample time to file a petition and only delayed until after Avaya’s
`petition was granted for strategic reasons. Id. Network-1 further argues that
`joinder is inappropriate because it will discourage settlement between the
`existing parties and because both of the existing parties object. Network-1
`Opp. 6-7.
`While we are mindful of the concerns raised by Network-1 and
`Avaya, we also take into account the policy preference for joining a party
`that does not present new issues that might complicate or delay an existing
`proceeding. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement
`of Sen. Kyl) (“The Office anticipates that joinder will be allowed as of right
`– if an inter partes review is instituted on the basis of a petition, for example,
`a party that files an identical petition will be joined to that proceeding, and
`thus allowed to file its own briefs and make its own arguments.”) (emphasis
`added). Dell has met its burden of demonstrating that joinder is warranted
`under the circumstances.
`
`
`Order
`In consideration of the foregoing, it is hereby:
`ORDERED that Dell’s motion for joinder with Case IPR2013-00071
`is granted;
`FURTHER ORDERED that this proceeding is joined with Case
`IPR2013-00071;
`FURTHER ORDERED that the grounds on which a trial was
`instituted in Case IPR2013-00071 are unchanged;
`
`
`
`10
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`
`FURTHER ORDERED that the Revised Scheduling Order entered in
`Case IPR2013-00071 (Paper 39) shall govern the schedule of the joined
`proceedings;
`FURTHER ORDERED that Case IPR2013-00385 is instituted, joined,
`and terminated under 37 C.F.R. § 42.72 and all further filings in the joined
`proceedings shall be made in Case IPR2013-00071;
`FURTHER ORDERED that throughout Case IPR2013-00071, Avaya
`and Dell will file papers, except for motions which do not involve the other
`party, as consolidated filings.3 Avaya will identify each such filing as a
`consolidated filing and will be responsible for completing all consolidated
`filings. Dell may file an additional paper, not to exceed seven pages, which
`may address only points of disagreement with points asserted in Avaya’s
`consolidated filing. Any such filing by Dell must identify specifically and
`explain each point of disagreement. Dell may not file separate arguments in
`support of points made in Avaya’s consolidated filing;
`FURTHER ORDERED that, in addition to responding to any
`consolidated filing, Network-1 may respond separately to any separate Dell
`filing. Any such response by Network-1 to a Dell filing may not exceed the
`number of pages in the Dell filing and is limited to issues raised in the Dell
`filing;
`FURTHER ORDERED that Network-1 will conduct the
`cross-examination of witnesses, as well as the redirect of any witness it
`produces, in the timeframe normally allotted by the rules;
`
`3 Counsel for Avaya and Dell should refer to the Board’s website, in
`particular FAQs C3, D5, and G8, for information regarding filings in the
`Patent Review Processing System (PRPS). See
`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`
`
`11
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`
`FURTHER ORDERED that Avaya and Dell will designate attorneys
`to conduct the cross-examination of any witnesses produced by Network-1
`and the redirect of any witnesses produced by Avaya or Dell within the
`timeframe normally allotted by the rules for one party. Avaya and Dell will
`not receive any separate cross-examination or redirect time. Avaya is
`permitted to ask questions before Dell at depositions if it so chooses;
`FURTHER ORDERED that any requests by a party for additional
`deposition time must be brought before the Board;
`FURTHER ORDERED that Avaya is permitted to present argument
`before Dell at any oral argument if it so chooses;
`FURTHER ORDERED that the case caption in Case IPR2013-00071
`shall be changed to reflect the joinder with this proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of Case IPR2013-00071.
`
`
`
`12
`
`
`
`Case IPR2013-00385
`Patent 6,218,930
`
`PETITIONER:
`
`Michael J. Scheer
`Thomas M. Dunham
`WINSTON & STRAWN LLP
`200 Park Ave.
`New York, NY 10166-4193
`mscheer@winston.com
`tdunham@winston.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
`
`
`
`
`
`
`
`13
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC. and DELL INC.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-0007114
`Patent 6,218,930
`
`
`14 Case IPR2013-00385 has been joined with this proceeding.
`
`
`
`
`
`
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