U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB; AXIS
`COMMUNICATIONS INC.; and HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,218,930
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`Case IPR: To Be Assigned
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`MOTION FOR JOINDER UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
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`
`
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`
`
`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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`
`
`1
`
`
`Petition for Inter Partes Review
`Motion for Joinder
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB; AXIS
`COMMUNICATIONS INC.; and HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,218,930
`
`Case IPR: To Be Assigned
`
`MOTION FOR JOINDER UNDER 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
`
`
`
`1
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`
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
`
`I.
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`Sony Corporation of America, Axis Communications AB, Axis
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`Communications Inc., and Hewlett-Packard Co. (collectively, “Petitioners”)
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`respectfully submit this Motion for Joinder concurrently with a Petition for Inter
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`Partes Review of U.S. Patent No. 6,218,930 (“Petition”). Petitioners request
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`institution of an inter partes review and joinder pursuant to 35 U.S.C. § 315(c) and
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`37 C.F.R. § 42.122(b) with the pending inter partes review concerning the same
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`patent in Avaya Inc. v. Network-1 Security Solutions, Inc., Case IPR2013-00071
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`(“Avaya IPR”), which was instituted on May 24, 2013. Joinder is appropriate
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`because it will promote efficient resolution of the validity of a single patent and will
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`not prejudice the parties to the Avaya IPR. Absent joinder, Petitioners may be
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`prejudiced because their interests will not be adequately represented in the Avaya
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`IPR.
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`This Motion for Joinder and accompanying Petition are timely under 37
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`C.F.R. §§ 42.22 and 42.122(b), as they are submitted within one month of May 24,
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`2013, the date that the Avaya IPR was instituted.1
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`1 As stated in the Frequently Asked Questions section of the Patent Trial and Appeal
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`Board’s website (http://www.uspto.gov/ip/boards/bpai/prps.jsp), Petitioners
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`understand that prior authorization for filing a motion for joinder with a petition is
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`1
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`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Network-1 Security Solutions, Inc. (“Network-1” or “Patent Owner”) is the
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`owner of U.S. Patent No. 6,218,930 (the “’930 Patent”). On September 15, 2011,
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`Network-1 sued Petitioners and twelve other manufacturers and sellers of Power
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`over Ethernet equipment (including Avaya Inc.) for alleged infringement of the ’930
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`Patent. Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al., Case
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`No. 6:11-cv-00492 (E.D. Tex.) (the “Underlying Litigation”). A motion for
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`severance was granted on January 17, 2013, with the severed cases against all of the
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`defendants being consolidated for pre-trial purposes. Each case is currently stayed
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`pending the outcome of the post-grant challenges of the ’930 patent, including the
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`Avaya IPR and a petition for inter partes review filed by Sony Corporation of
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`America, Axis Communications AB, and Axis Communications Inc. (Case
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`IPR2013-00092) (“Prior Sony and Axis Petition”).
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`The ’930 Patent is also the subject of a pending ex parte reexamination
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`proceeding (Reexamination No. 90/012,401), in which claims 6, 8, and 9 were
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`not required. As encouraged by the Board, however, Petitioners contacted the
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`Board by email on June 19, 2013, indicating that they are willing to participate in a
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`teleconference if the Board desires such a teleconference.
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`2
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`rejected by the examiner on December 21, 2012 on both anticipation and
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`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
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`obviousness grounds.
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`Avaya filed its petition for inter partes review of the ’930 Patent on December
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`5, 2012. Petitioners Sony and Axis timely filed the Prior Sony and Axis Petition on
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`December 19, 2012. On December 26, 2012, the Patent Trial and Appeal Board
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`(“Board”) stayed the pending ex parte reexamination in light of the Avaya Petition
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`and the Prior Sony and Axis Petition. Avaya IPR, Paper No. 9 (Order to Stay the
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`Concurrent Reexaminations); Prior Sony and Axis Petition, Paper No. 10 (Order to
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`Stay the Concurrent Reexaminations). The Board determined that, because the
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`claims to be reexamined overlapped with the petitions, and despite the grounds of
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`challenge being different, there was good cause to stay the pending reexamination to
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`avoid complications should the claims be amended in the reexamination. Id.
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`The Board instituted the Avaya IPR and decided not to institute the Prior Sony
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`and Axis Petition on May 24, 2013. Soon thereafter, Sony and Axis filed a request
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`for rehearing regarding one ground on June 10, 2013. Prior Sony and Axis Petition,
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`Paper No. 22. Avaya did the same for one denied ground on June 7, 2012. Avaya
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`IPR, Paper No. 20. Both requests are pending.
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`Petitioners understand from the Board’s Order on the Conduct of
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`Proceedings in the Avaya IPR that the parties agreed to the schedule subject to any
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`3
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`
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`motions for joinder and the resolution of Avaya’s request for rehearing. Avaya
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`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
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`IPR, Paper No. 25 at 2.
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`The Petition filed with this motion includes grounds of unpatentability based
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`on multiple prior art references. Specifically, similar to one of the grounds
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`instituted in the Avaya IPR, Petitioners assert that claims 6 and 9 of the ’930 patent
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`are anticipated under 35 U.S.C. § 102(b) over JP H10-13576 to Matsuno.
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`Petitioners also assert that Matsuno in combination with U.S. Patent No. 6,449,348
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`to Lamb renders these claims obvious under 35 U.S.C. § 103(a).2 Petitioners
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`further assert that claims 6, 8, and 9 of the ’930 patent are obvious under 35 U.S.C.
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`§ 103(a) over U.S. Patent No. 5,345,592 to Woodmas in view of U.S. Patent No.
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`5,982,456 to Smith and/or Ron Whittaker, Television Production (Lansing Hays et
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`al. eds., 1993), and obvious over U.S. Patent No. 6,473,608 to Lehr in view of
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`Woodmas.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`The Leahy-Smith America Invents Act (AIA) permits joinder of like review
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`proceedings. Thus, an inter partes review (IPR) may be joined with another inter
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`2 Petitioners also assert that claim 8, depending from claim 6, is unpatentable on
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`both of these grounds.
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`4
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`
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`partes review. The statutory provision governing joinder of inter partes review
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
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`proceedings is 35 U.S.C. § 315(c), which reads as follows:
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`(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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`In exercising its discretion to grant joinder, the Board considers the impact of
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`both substantive issues and procedural matters on the proceedings, as well as other
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`considerations. Motorola Mobility LLC v. Softview LLC, Decision on Motion for
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`Joinder, IPR2013-00526, Paper No. 10 (June 20, 2013). In its response to
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`comments on the Board’s rule governing joinder, 37 C.F.R. § 4.122, the PTO stated
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`that “joinder would allow the Office to consolidate issues and to account for timing
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`issues that may arise” when multiple proceedings involving the same patent are
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`instituted. Changes to Implement Inter Partes Review Proceedings, 77 Fed. Reg.
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`48,680, 48, 707 (Aug. 14, 2012). Under this framework, joinder of this Petition
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`with the Avaya IPR is appropriate.
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`5
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`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
`
`Joinder will not impact the Board’s ability to complete the review
`in a timely manner
`
`B.
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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. In this
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`case, joinder should not unduly affect the Board’s ability to issue its final
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`determination. Indeed, the statute governing inter partes review provides the
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`Board with flexibility to extend the one-year period by up to six months in the case
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`of joinder. Id. (§ 316(a)(11)). See also Changes to Implement Inter Partes Review
`
`Proceedings, 77 Fed. Reg. 48,680, 48, 707 (Aug. 14, 2012) (“In the case of joinder,
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`the Director may adjust the time periods allowing the Office to manage the more
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`complex case.”).
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`The Petition filed herewith presents only four grounds of invalidity (including
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`one ground and prior art reference that is identical to that in the Avaya IPR) and
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`challenges only three claims of the ’930 patent. The Avaya IPR includes two
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`grounds of invalidity and challenges two claims. The ’930 patent itself contains
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`only three drawings and one and a half pages of description. By any measure,
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`neither proceeding is overly complex or unmanageable. Combining the two
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`proceedings will not change that fact.
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`6
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`Petitioners respectfully suggest that further briefing and discovery on these
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
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`grounds may be simplified, to further minimize any impact on the schedule or the
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`volume of materials to be submitted to the Board. Given that Avaya and Petitioners
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`will be addressing some of the same prior art and similar grounds for rejection of the
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`claims at issue, the Board may order Avaya and Petitioners to consolidate their
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`submissions and to conduct joint discovery where appropriate. Conducting the
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`proceedings in this manner should minimize complication or delay.
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`Moreover, given the litigation history of the ’930 patent, the new grounds of
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`unpatentability submitted in the Petition will not unduly complicate the proceedings
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`or cause more than six months delay.3 See 35 U.S.C. § 316(a)(11). Network-1
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`began enforcing the ’930 patent in district court in 2004. See, e.g., PowerDsine,
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`Inc. v. Network-1 Security Solutions, Inc., No. 1:2004-cv-02502 (S.D.N.Y.) (filed
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`Mar. 31, 2004); Network-1 Security Solutions, Inc v. D-Link Corporation et al, No.
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`6:05-cv-00291 (E.D. Tex) (filed Aug. 10, 2005); Network-1 Security Solutions, Inc.
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`3 Petitioners also acknowledge that the under 35 U.S.C. § 351(d), the Board may
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`stay a concurrent inter partes review. Nonetheless, given the fact that the new
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`grounds will not delay the proceedings more than six months, and consolidating the
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`proceedings will promote efficiency and avoid duplicate efforts and inconsistencies,
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`see infra, Petitioners respectfully submit that joinder is proper.
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`
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`7
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`
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`v. Cisco Systems, Inc. et al (6:08-cv-00030) (filed Feb. 7, 2008). After nearly a
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`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
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`decade of litigation, Network-1 cannot complain that it is ignorant of the prior art to
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`the ’930 patent. Petitioners included some of the same grounds in their invalidity
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`contentions in the Underlying Litigation as recently as December 2012. Combined
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`with the early stage of the Avaya IPR, Network-1’s response to these new grounds
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`will not delay the proceedings unduly.
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`C.
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`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies
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`The validity of the ’930 patent is squarely at issue in, as described above, (a)
`
`the Underlying Litigation, (b) a pending reexamination (presently stayed), and (c)
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`the Avaya IPR. In deciding to stay the reexamination in light of the Avaya IPR, the
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`Board stated: “The possibility exists that if the proceedings are conducted
`
`concurrently, the claims could be amended during the reexamination at the same
`
`time the Board is conducting its review [in the Avaya IPR].” Avaya IPR, Paper No.
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`9 (Order to Stay the Concurrent Reexaminations). The same logic supports joinder.
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`Determining the same, and substantially similar, validity questions
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`concerning the ’930 Patent in multiple concurrent proceedings would duplicate
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`efforts, and create a risk of inconsistent results, and piecemeal review. Proceeding
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`with a consolidated inter partes review would avoid inefficiency and potential
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`inconsistency and would result in a final written decision with a delay of no more
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`
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`8
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`
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`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
`than six months. The decision in the inter partes review may also resolve the issues
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`in the reexamination, and, if it is determined that the patent claims are unpatentable,
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`would also resolve the Underlying Litigation in which Petitioners and Avaya are
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`defendants. For these reasons, joinder is appropriate.
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`D. Without joinder, Petitioners may be prejudiced
`Petitioners would be prejudiced if they are not permitted to join and to
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`participate in the Avaya IPR, which will affect not only Petitioners’ pending inter
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`partes review Petition, but also the Underlying Litigation. The decision in the
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`Avaya IPR will likely simplify, or even resolve, the issues in the Underlying
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`Litigation. Joinder is warranted to permit Petitioners to protect their interests in the
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`overlapping matters at issue in the inter partes reexamination and Underlying
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`Litigation.
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`Joinder will not prejudice Network-1 or Avaya
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`E.
`Permitting joinder will not prejudice Network-1 or Avaya. Petitioners raise
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`no issues that are not already before the Board or known to Network-1, given the
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`litigation history of the ’930 patent. Joinder will not affect the timing of the Avaya
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`IPR by more than six months. Any extension to the schedule that may be required
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`is permitted by law and the applicable rules. 35 U.S.C. § 316(a)(1); 37 C.F.R.
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`§ 42.100(c).
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`
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`9
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`
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`In fact, joinder is likely more convenient and efficient for Network-1 by
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
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`providing a single trial on the ’930 patent. By allowing all grounds of invalidity to
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`be addressed in a single proceeding with an expeditious schedule, the interests of all
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`parties and the Board will be well served.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that their Petition
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`for Inter Partes Review of U.S. Patent No. 6,218,930 be instituted and that the
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`proceeding be joined with Avaya Inc. v. Network-1 Security Solutions, Inc., Case
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`IPR2013-00071.
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`Although Petitioners believe 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. 06-0916.
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`
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`Dated: June 24, 2013
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` Respectfully submitted,
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`10
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`
` /Lionel M. Lavenue/
`Lionel M. Lavenue
`Registration No. 46,859
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Dr.
`Two Freedom Square
`Reston, VA 20190
`Tel: 571.203.2700
`Fax: 202.408.4400
`
`
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Motion for Joinder
`
`
`
`Robert J. Walters
`Registration No. 40,862
`McDermott Will & Emery LLP
`500 North Capitol Street, N.W.
`Washington, D.C. 20001
`Tel: 202.756.8138
`Fax: 202.756.8087
`
`
`
`
`
`
`11
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`
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §§ 42.6(e), 42.105(a)
`
`U.S. Patent No. 6,218,930
`Petition for Inter Partes Review
`Petitioners’ Certificate of Service
`
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`Pursuant to 37 C.P.R. §§ 42.6(e) and 42.105(a), this is to certify that I caused
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`to be served a true and correct copy of the foregoing MOTION FOR JOINDER
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`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b) by Federal Express delivery, on this
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`24th day of June, 2013 on the Patent Owner at the correspondence address of the
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`Patent Owner as follows:
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`BUCHANAN, INGERSOLL & ROONEY PC
`1737 KING STREET, SUITE 500
`ALEXANDRIA, VA 22314-2727
`
`
`
`Dated: June 24, 2013
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`Respectfully submitted,
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`
`
`
`
` /Lionel M. Lavenue/
`Lionel M. Lavenue
`Registration No. 46,859
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Dr.
`Two Freedom Square
`Reston, VA 20190
`Tel. 571.203.2700
`Fax. 202.408.4400
`
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