Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 27
`Entered: June 27, 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 26, 2013
`
`between Judges Chang and Arbes, respective counsel for Petitioner and
`
`Patent Owner, and counsel for third parties Sony Corporation of America,
`
`Axis Communications AB, Axis Communications Inc., and Hewlett-Packard
`
`
`571-272-7822
`
`
`
`Paper 27
`Entered: June 27, 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 26, 2013
`
`between Judges Chang and Arbes, respective counsel for Petitioner and
`
`Patent Owner, and counsel for third parties Sony Corporation of America,
`
`Axis Communications AB, Axis Communications Inc., and Hewlett-Packard
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`Co. (the “’386 Petitioners”). The purpose of the call was to discuss the
`
`’386 Petitioners’ petition to institute an inter partes review of claims 6, 8
`
`and 9 of Patent 6,218,930 (the “’930 patent”) and motion for joinder with
`
`this proceeding, which were filed on June 24, 2013 in Case IPR2013-00386.
`
`The ’386 Petitioners stated their position during the call that joinder is
`
`proper under 35 U.S.C. § 315(c) and appropriate under the circumstances to
`
`ensure the efficient handling of all patentability issues. The ’386 Petitioners
`
`argued that this proceeding involves a small number of claims and that they
`
`were willing to have consolidated submissions and discovery in a joined
`
`proceeding, but acknowledged that the dates set forth in the Scheduling
`
`Order (Paper 19) for this proceeding would need to be extended.
`
`Petitioner stated that it has not had enough time to evaluate the
`
`’386 Petitioners’ petition to determine whether Petitioner opposes the
`
`motion for joinder, but requested a short time period to file an opposition if
`
`necessary. Patent Owner stated that it opposes the motion because joinder
`
`would affect the schedule in this proceeding, increase the burden on the
`
`parties, diminish the chances of settlement, and potentially affect the stay
`
`that has been entered in the related district court litigation.
`
`As discussed during the call, Petitioner and Patent Owner will each be
`
`permitted to file an opposition to the ’386 Petitioners’ motion for joinder by
`
`July 3, 2013. The oppositions are to be filed separately from any
`
`oppositions the parties file to the motion for joinder in Case IPR2013-00385.
`
`Patent Owner in its opposition also should address the date(s) on which the
`
`’386 Petitioners were served with a complaint alleging infringement of the
`
`’930 patent. Patent Owner will be given two months to file a preliminary
`
`response in Case IPR2013-00386, should it choose to do so.
`
`
`
`2
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
`Finally, given the briefing schedule set during the call regarding the
`
`’386 Petitioners’ motion for joinder as well as the deposition of Petitioner’s
`
`declarant scheduled to take place on July 9-10, 2013, Patent Owner
`
`requested a one-week extension of its time period for filing a preliminary
`
`response in Case IPR2013-00385 (from July 9, 2013 to July 16, 2013).
`
`Petitioner opposed the request, arguing that no additional time is needed
`
`because the grounds in the petition in Case IPR2013-00385 are duplicative
`
`of those raised in the Petition in this proceeding. Patent Owner will be given
`
`a three-day extension to July 12, 2013.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner is authorized to file in this proceeding an
`
`opposition to the ’386 Petitioners’ motion for joinder by July 3, 2013,
`
`limited to ten pages;
`
`FURTHER ORDERED that Patent Owner is authorized to file in
`
`this proceeding an opposition to the ’386 Petitioners’ motion for joinder by
`
`July 3, 2013, limited to ten pages;
`
`FURTHER ORDERED that no replies are authorized;
`
`FURTHER ORDERED that a three-day extension for filing a patent
`
`owner preliminary response in Case IPR2013-00385 is authorized; and
`
`FURTHER ORDERED that a copy of this Order be entered into the
`
`files of Cases IPR2013-00385 and IPR2013-00386.
`
`
`
`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 PARTIES SONY CORPORATION OF AMERICA, AXIS
`COMMUNICATIONS AB, AND AXIS COMMUNICATIONS INC.:
`
`Lionel M. Lavenue
`C. Gregory Gramenopoulos
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`lionel.lavenue@finnegan.com
`gramenoc@finnegan.com
`
`
`
`
`4
`
`
`
`Case IPR2013-00071
`Patent 6,218,930
`
`THIRD PARTY HEWLETT-PACKARD CO.:
`
`Robert J. Walters
`Charles J. Hawkins
`McDERMOTT WILL & EMERY LLP
`500 North Capitol Street, N.W.
`Washington, DC 20001
`rwalters@mwe.com
`chawkins@mwe.com
`
`
`
`
`5
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