Trials@uspto.gov
`571-272-7822
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`
`
`
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`
`
`Paper 13
`Entered: September 16, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA and
`HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00495
`Patent 6,218,930
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Petitioners’ Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 13
`Entered: September 16, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA and
`HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00495
`Patent 6,218,930
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Petitioners’ Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`Case IPR2013-00495
`Patent 6,218,930
`
`
`Introduction
`Sony Corporation of America (“Sony”) and Hewlett-Packard Co.
`(“HP”) (collectively, “Petitioners”) filed a Petition (Paper 3) (“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 7) (“Mot.”).1 Patent Owner Network-1
`Security Solutions, Inc. (“Network-1”) filed an opposition to Petitioners’
`motion. IPR2013-00071, Paper 45 (“Network-1 Opp.”). Avaya Inc.
`(“Avaya”), the first petitioner in Case IPR2013-00071, also filed an
`opposition to Petitioners’ motion. IPR2013-00071, Paper 46 (“Avaya
`Opp.”). Dell Inc. (“Dell”), the second petitioner in Case IPR2013-00071,2
`did not file an opposition. For the reasons that follow, Petitioners’ motion
`for joinder is granted.3
`
`
`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
`
`
`1 Petitioners appear to have filed two copies (Papers 6 and 7) of their motion
`for joinder in the Patent Review Processing System (PRPS). Paper 6 will be
`expunged.
`
` 2
`
` Dell was joined as a party to Case IPR2013-00071 on July 29, 2013. See
`IPR2013-00385, Paper 17.
`
` 3
`
` In a decision entered concurrently, the Petition is granted and a trial is
`instituted on the same grounds as in Case IPR2013-00071.
`
`
`
`2
`
`
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`Case IPR2013-00495
`Patent 6,218,930
`
`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.
`Thus, joinder may be authorized when warranted, but the decision to
`grant joinder is discretionary. See 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).
`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 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.
`
`
`
`3
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`Case IPR2013-00495
`Patent 6,218,930
`
`
`Timeliness of Petitioners’ Motion
`As an initial matter, Network-1 and Avaya both argue that joinder is
`prohibited by 37 C.F.R. § 42.122(b), which specifies that “[a]ny request for
`joinder must be filed, as a motion under § 42.22, no later than one month
`after the institution date of any inter partes review for which joinder is
`requested.” See Network-1 Opp. 1-3; Avaya Opp. 2-3. Specifically, the
`Board instituted an inter partes review in Case IPR2013-00071 on May 24,
`2013, and Petitioners filed their motion in the instant proceeding on August
`6, 2013. Petitioners contend that their motion for joinder is timely because it
`was filed within one month of July 29, 2013, the date on which an inter
`partes review was instituted in Case IPR2013-00385, which was joined with
`Case IPR2013-00071. Mot. 8-9.
`We agree with Network-1 and Avaya that Petitioners’ request for
`joinder was filed after the one-month period set forth in 37 C.F.R.
`§ 42.122(b). On July 29, 2013, the Board instituted a trial in Case
`IPR2013-00385 (the “’385 proceeding”), joined the ’385 proceeding with
`Case IPR2013-00071, and terminated the ’385 proceeding under 37 C.F.R.
`§ 42.72. IPR2013-00385, Paper 17 at 10-11. Petitioners, however, still may
`seek joinder with pending Case IPR2013-00071. Under 37 C.F.R. § 42.5(b),
`the Board “may waive or suspend a requirement of [part 42 of the Board’s
`rules] and may place conditions on the waiver or suspension.” Petitioners
`argue that special circumstances exist justifying waiver of the one-month
`time period for requesting joinder with Case IPR2013-00071. Mot. 1-4. We
`turn now to whether such circumstances exist and whether the Board should
`exercise its discretion to join Petitioners, taking into account substantive,
`procedural, and other considerations.
`
`
`
`4
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`Case IPR2013-00495
`Patent 6,218,930
`
`
`Substantive Issues
`Petitioners argue that joinder with Case IPR2013-00071 will not
`impact the Board’s ability to complete the proceeding in one year because
`Petitioners “do not raise any issues that are not already before the Board.”
`Mot. 4-5, 11-13. We agree. Petitioners in their Petition assert the same
`grounds of unpatentability as those on which a trial was instituted in Case
`IPR2013-00071. See Pet. 10-11; IPR2013-00071, Paper 18 at 29.
`Petitioners’ arguments regarding the asserted prior art references are
`identical to the arguments made by Avaya and Dell in their petitions.
`Compare Pet. 21-40, with IPR2013-00071, Paper 1 at 17-26, 36-45, and
`IPR2013-00385, Paper 2 at 17-35. Further, Petitioners submit the same
`declaration of Dr. George A. Zimmerman that Dell submitted in support of
`its petition, which itself was largely a copy of the declaration of Dr.
`Zimmerman submitted by Avaya. See Ex. 1011; IPR2013-00071, Ex. 1011;
`IPR2013-00385, Ex. 1011. Thus, the Petition raises no new issues beyond
`those already before the Board in the existing proceeding, which weighs in
`favor of joinder. 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).
`
`
`Procedural Issues
`Petitioners argue that joinder would not require any change to the trial
`schedule in Case IPR2013-00071 because Petitioners raise the same grounds
`
`
`
`5
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`Case IPR2013-00495
`Patent 6,218,930
`
`of unpatentability and “agree to an understudy role” if joined. Mot. 4-5,
`11-13. Specifically, Petitioners agree to the following role if joined to the
`existing proceeding:
`As long as both Avaya and Dell remain in the joined IPRs,
`Petitioners agree to remain in a circumscribed role without a
`separate opportunity to actively participate. Thus, Petitioners
`will not file additional written submissions, nor will they pose
`questions at depositions or argue at oral hearing without the
`prior permission of Avaya or Dell. Only in the event that at
`least one party settles will Petitioners seek to become active in
`the joined IPRs. If either Dell or Avaya settle, Petitioners can
`assume the “second chair” role, with its role dictated according
`to the same rules that govern Dell’s current second chair role.
`(If Avaya were to settle, Dell would then assume the “first
`chair” position.) If both Avaya and Dell settle, then Petitioners
`would together assume the first chair position.
`Id. at 4-5. Petitioners further contend that joinder would not impose any
`additional burden or costs on the existing parties because of Petitioners’
`limited “understudy” role. Id. at 4, 14-15. For example, the existing
`petitioners (Avaya and Dell) would not need to coordinate with Petitioners
`regarding any filings or depositions. Id. at 14-15. Network-1 and Avaya do
`not dispute these assertions by Petitioners.
`Given the fact that joinder would require no change to the existing
`trial schedule and the fact that Petitioners agree to have only a limited
`“understudy” role if joined, the procedural impact of joinder on the existing
`proceeding would be minimal. This weighs in favor of joinder.
`
`
`Other Considerations
`Petitioners argue that special circumstances exist for granting the
`motion outside the one-month time period because “Petitioners, unlike any
`
`
`
`6
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`
`Case IPR2013-00495
`Patent 6,218,930
`
`other party in [the] related proceedings, have tried multiple times to
`participate in an inter partes review of the ’930 patent.” Mot. 2. Sony, Axis
`Communications AB, and Axis Communications Inc. filed a petition seeking
`inter partes review on December 19, 2012, which the Board denied on May
`24, 2013. See IPR2013-00092, Papers 8, 21. Sony, HP, Axis
`Communications AB, and Axis Communications Inc. then filed another
`petition and motion for joinder on June 24, 2013, which the Board denied on
`July 29, 2013. See IPR2013-00386, Papers 1, 15, 16. Sony and HP then
`filed their Petition and motion in the instant proceeding on August 6, 2013.
`The fact that Petitioners attempted previously—within the one-month time
`period—to be joined to Case IPR2013-00071 weighs in favor of considering
`Petitioners’ request outside the one-month time period.
`Network-1 and Avaya argue that permitting joinder would discourage
`settlement between the existing parties because, even if the existing parties
`settle, Petitioners would still be a part of the proceeding and the proceeding
`could not be terminated under 35 U.S.C. § 317. See Network-1 Opp. 9-10;
`Avaya Opp. 6-7, 9-10. According to Network-1 and Avaya, joining
`additional parties is against the strong public policy in favor of settlement
`for the same reason. See id. Avaya further argues that permitting joinder in
`this proceeding would encourage a “possible infinite string of follow-on IPR
`petitions by third parties,” as well as “petitions and motions for joinder with
`complete disregard for the promulgated time periods for doing so.” Avaya
`Opp. 6-7.
`While we are mindful of Network-1 and Avaya’s concerns regarding
`settlement and encouraging early joinder requests, every request for joinder
`has its own factual circumstances. For each request, the Board analyzes the
`
`
`
`7
`
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`
`Case IPR2013-00495
`Patent 6,218,930
`
`facts presented and determines whether to exercise its discretion to join,
`taking into account all of the particular facts and circumstances and 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.”). Joinder is not automatic, and the fact that joinder is
`permitted in one case under one set of facts does not mean it will be allowed
`in another case under a different set of facts. In the instant proceeding, the
`possible chilling effect that joinder may have on settlement discussions
`between Network-1, Avaya, and Dell must be weighed with all of the other
`facts.
`
`Finally, Avaya argues that Petitioners are attempting to engage in
`improper party substitution, which is not permitted by the AIA. Avaya Opp.
`8-9. Avaya cites the following commentary to the Board’s rules:
`Comment 88: One comment requested clarification on
`the timing for requesting joinder of parties or replacement of a
`consenting petitioner, and suggested that the Office permit
`joinder and replacement until the time of a final written
`decision under appropriate circumstances. The comment
`further suggested a list of factors that the Office might consider
`in determining whether to permit voluntary joinder or
`replacement (e.g., the impact on the Scheduling Order).
`Another comment requested guidance as to when joinder might
`occur.
`Response: Joinder may be requested by filing a motion
`within one month of the date that the trial is instituted. When
`the Office determines whether to grant a motion for joinder, the
`Office will consider the particular facts of each case including
`how the consolidation of the reviews impacts the Office’s
`
`
`
`8
`
`
`
`Case IPR2013-00495
`Patent 6,218,930
`
`
`ability to complete reviews timely. In view of this comment,
`the Office modified §§ 42.122 and 42.222 to provide expressly
`for the time period for filing a request for joinder.
`The AIA, however, does not provide for the
`‘‘replacement’’ of a party. A petitioner may settle with the
`patent owner and upon entering the joint request, the review
`will terminate with respect to the petitioner. 35 U.S.C. 317, as
`amended, and 35 U.S.C. 327.
`Changes to Implement Inter Partes Review Proceedings, Post-Grant
`Review Proceedings, and Transitional Program for Covered Business
`Method Patents; Final Rule, 77 Fed. Reg. 48680, 48707 (Aug. 14, 2012);
`see Mot. 8-9. Petitioners, however, are not seeking to replace an existing
`petitioner that settled with Patent Owner, whereby the review would
`terminate with respect to that petitioner only under 35 U.S.C. § 317, but
`rather to join the existing proceeding before such settlement occurs.
`Given the unique circumstances presented here—namely, that
`Petitioners’ asserted grounds and arguments are identical to those already at
`issue in the existing proceeding, joinder would require no change to the trial
`schedule, joinder would impose no added burden on the existing parties
`because Petitioners are willing to have only a limited “understudy” role, and
`Petitioners attempted previously within the one-month time period to be
`joined—we exercise our discretion to waive the one-month requirement
`under 37 C.F.R. § 42.122(b). We further conclude that Petitioners have
`demonstrated that joinder is warranted under the circumstances. Petitioners
`will be joined to Case IPR2013-00071 in a limited role. If at some point
`Case IPR2013-00071 is terminated with respect to either of the existing
`parties Avaya and Dell (or both), the role of any remaining party or parties
`in the proceeding will be reevaluated.
`
`
`
`9
`
`
`
`Case IPR2013-00495
`Patent 6,218,930
`
`
`Order
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioners’ 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;
`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 IPR2013-00495 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 unless given prior authorization by the
`Board, Petitioners are not permitted to file papers, engage in discovery, or
`participate in any deposition or oral argument in Case IPR2013-00071.
`Petitioners are, however, permitted to appear in Case IPR2013-000714 so
`that they receive notification of filings and may attend depositions and oral
`argument. Should Petitioners believe it necessary to take any further action,
`Petitioners should request a conference call to obtain authorization from the
`Board;
`
`
`4 Counsel for Avaya, Dell, Sony, and HP should refer to the Board’s
`website, in particular FAQs C3, D5, and G8, for information regarding
`filings in PRPS. See http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`
`
`10
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`
`Case IPR2013-00495
`Patent 6,218,930
`
`
`FURTHER ORDERED that the role of Avaya and Dell in the joined
`proceedings, as specified in IPR2013-00385, Paper 17, remains unchanged;
`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;
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of Case IPR2013-00071; and
`FURTHER ORDERED that Paper 6 (a duplicate copy of Paper 7) is
`expunged from the record of the instant proceeding.
`
`
`
`
`11
`
`
`
`Case IPR2013-00495
`Patent 6,218,930
`
`PETITIONERS:
`
`Lionel M. Lavenue
`Erika Arner
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`
`Robert J. Walters
`Charles J. Hawkins
`McDERMOTT WILL & EMERY LLP
`rwalters@mwe.com
`chawkins@mwe.com
`
`PATENT OWNER:
`
`Charles F. Wieland III
`Robert G. Mukai
`BUCHANAN, INGERSOLL & ROONEY P.C.
`Charles.Wieland@BIPC.com
`Robert.Mukai@BIPC.com
`
`
`
`
`
`
`
`
`
`12
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC., DELL INC., SONY CORPORATION OF AMERICA,
`and HEWLETT-PACKARD CO.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-0007115
`Patent 6,218,930
`
`
`15 Cases IPR2013-00385 and IPR2013-00495 have been joined with this
`proceeding.
`
`
`
`
`
`
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