Paper 26
`Trials@uspto.gov
`571-272-7822 Entered: October 2, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COX COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01796
`Patent 5,563,883
`____________
`
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: October 2, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COX COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01796
`Patent 5,563,883
`____________
`
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2015-01796
`Patent 5,563,883
`
`I. INTRODUCTION
`
`Cox Communications, Inc. (“Petitioner” or “Cox”) filed a Petition for
`
`inter partes review of claims 1, 3, and 4 of U.S. Patent No. 5,563,883
`
`(Ex. 1001, “the ’883 patent”). Paper 1 (“Pet.”). Concurrently with its
`
`Petition, Cox filed a Motion for Joinder with ARRIS Group, Inc. v. C-Cation
`
`Technologies, LLC, Case IPR2015-00635 (“the ARRIS IPR”). Paper 3
`
`(“Mot.”). Cox represents that ARRIS does not oppose the Motion for
`
`Joinder. Mot. 1. Patent Owner did not file an opposition to Cox’s Motion
`
`for Joinder after being given an opportunity to do so. See Paper 5. Patent
`
`Owner elected to waive a Preliminary Response in view of Cox’s Motion for
`
`Joinder and the representations made therein, discussed in more detail
`
`below. Paper 8.
`
`For the reasons explained below, we institute an inter partes review of
`
`claims 1, 3, and 4 of the ’883 patent and grant Cox’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`
`The parties indicate that Patent Owner has asserted the ’883 patent
`
`against Petitioner and other defendants in C-Cation Technologies, LLC v.
`
`Atlantic Broadband Group LLC, No. 1:15-cv-00295 (D. Del.). Pet. 2;
`
`Mot. 2; Paper 7, 1. The parties also indicate that Patent Owner has asserted
`
`the ’883 patent against ARRIS and other defendants in C-Cation
`
`Technologies, LLC v. Time Warner Cable Inc., No. 2:14-cv-00059 (E.D.
`
`Tex.). Pet. 2; Mot. 2; Paper 7, 1.
`
`In the ARRIS IPR, we instituted an inter partes review of claims 1, 3,
`
`and 4 of the ’883 patent. ARRIS Group, Inc. v. C-Cation Techs., LLC, Case
`
`IPR2015-00635 (PTAB July 31, 2015) (Paper 19) (“ARRIS Dec.”). Another
`
`petition challenging the ’883 patent, along with a motion for joinder with the
`
`2
`
`
`
`IPR2015-01796
`Patent 5,563,883
`
`ARRIS IPR, is pending. See Unified Patents Inc. v. C-Cation Techs., LLC,
`
`Case IPR2015-01045 (Papers 2, 11). In addition, the ’883 patent has been
`
`the subject of two other petitions for inter partes review. In Cisco Systems,
`
`Inc. v. C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB Aug. 29,
`
`2014) (Paper 12), the Board denied institution of inter partes review. In
`
`ARRIS Group, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00746
`
`(PTAB Nov. 24, 2014) (Paper 22), the Board instituted inter partes review,
`
`and subsequently granted Patent Owner’s request for adverse judgment
`
`(Paper 28).
`
`III. INSTITUTION OF INTER PARTES REVIEW
`
`In the ARRIS IPR, we instituted an inter partes review on the only
`
`grounds asserted in ARRIS’s petition: (a) claims 1 and 4 under 35 U.S.C.
`
`§ 103(a) as obvious over MPT 1343,1 MPT 1347,2 and MPT 1327,3 and
`
`(b) claim 3 under 35 U.S.C. § 103(a) as obvious over MPT 1343,
`
`MPT 1347, MPT 1327, Zdunek,4 and Dufresne.5 ARRIS Dec. 23. The
`
`Petition filed in this proceeding is nearly identical to the petition filed in the
`
`ARRIS IPR and asserts the same grounds on which we instituted review in
`
`
`
`1 MPT 1343 PERFORMANCE SPECIFICATION: SYSTEM INTERFACE
`SPECIFICATION FOR RADIO UNITS TO BE USED WITH COMMERCIAL TRUNKED
`NETWORKS OPERATING IN BAND III SUB-BANDS 1 AND 2 (1991) (Ex. 1006,
`“MPT 1343”).
`2 MPT 1347 RADIO INTERFACE SPECIFICATION FOR COMMERCIAL TRUNKED
`NETWORKS OPERATION IN BAND III, SUB-BANDS 1 AND 2 (1991) (Ex. 1007,
`“MPT 1347”).
`3 MPT 1327 A SIGNALLING STANDARD FOR TRUNKED PRIVATE LAND MOBILE
`RADIO SYSTEMS (1991) (Ex. 1005, “MPT 1327”).
`4 U.S. Patent No. 4,870,408, issued Sept. 26, 1989 (Ex. 1008, “Zdunek”).
`5 U.S. Patent No. 4,920,533, issued Apr. 24, 1990 (Ex. 1009, “Dufresne”).
`
`3
`
`
`
`IPR2015-01796
`Patent 5,563,883
`
`the ARRIS IPR. Pet. 5–6; Mot. 1. For the same reasons set forth in our
`
`institution decision in the ARRIS IPR, we determine that the information
`
`presented in Cox’s Petition shows a reasonable likelihood that Petitioner
`
`would prevail in showing that claims 1, 3, and 4 of the ’883 patent are
`
`unpatentable. See ARRIS Dec. 13–21. Accordingly, we institute an inter
`
`partes review on the same grounds as those on which we instituted review in
`
`the ARRIS IPR.
`
`IV. GRANT OF MOTION FOR JOINDER
`
`The Petition and Motion for Joinder in this proceeding were accorded
`
`a filing date of August 24, 2015. See Paper 4. Thus, Petitioner’s Motion for
`
`Joinder is timely because joinder was requested no later than one month
`
`after the institution date of the ARRIS IPR, i.e, July 31, 2015. See 37 C.F.R.
`
`§ 42.122(b).
`
`The statutory provision governing joinder in inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads:
`
`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.
`
`A motion for joinder should (1) set forth 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 Kyocera Corp. v. Softview LLC, Case IPR2013-
`
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`4
`
`
`
`IPR2015-01796
`Patent 5,563,883
`
`As noted, the Petition in this case asserts the same invalidity grounds
`
`and presents the same arguments as the petition in the ARRIS IPR. See
`
`Mot. 6. Cox also has retained the same expert as ARRIS and submitted a
`
`declaration in this proceeding that is virtually the same as the declaration
`
`submitted by ARRIS in the ARRIS IPR. See id. Thus, this inter partes
`
`review does not present any ground or matter not already at issue in the
`
`ARRIS IPR.
`
`If joinder is granted, Cox agrees to let ARRIS take the lead in all
`
`matters, adopting an “understudy” role as long as ARRIS remains an active
`
`participant in the inter partes review. Id. at 7–8. Cox agrees to work with
`
`ARRIS to submit consolidated filings, except for motions that do not involve
`
`the other party. Id. at 7. Cox also represents that it will rely on ARRIS to
`
`take testimony and defend depositions of all witnesses, unless ARRIS
`
`wishes otherwise. Id. Finally, Cox states it “is willing to agree to any other
`
`procedural concessions that will minimize complication or delay and result
`
`in a speedy trial with little or no impact on the ARRIS IPR or the Board.”
`
`Id. In view of its agreement to consolidated filings and subordination, Cox
`
`submits that joinder will not impact the trial schedule for the ARRIS IPR.
`
`Id. at 8.
`
`We agree with Petitioner that joinder with the ARRIS IPR is
`
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`
`Motion for Joinder.
`
`
`
`Accordingly, it is:
`
`V. ORDER
`
` ORDERED that an inter partes review is instituted in IPR2015-
`
`01796;
`
`5
`
`
`
`IPR2015-01796
`Patent 5,563,883
`
`FURTHER ORDERED that the Motion for Joinder with IPR2015-
`
`00635 is granted, and Cox Communications, Inc. is joined as a petitioner in
`
`IPR2015-00635;
`
`FURTHER ORDERED that IPR2015-01796 is terminated under
`
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2015-
`
`00635;
`
`
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`
`trial in IPR2015-00635 remain unchanged;
`
`
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`
`Order in place for IPR2015-00635 (Paper 20) remains unchanged;
`
`FURTHER ORDERED that in IPR2015-00635, ARRIS and Cox will
`
`file each paper, except for a motion that does not involve the other party, as
`
`a single, consolidated filing, subject to the page limits set forth in 37 C.F.R.
`
`§ 42.24, and shall identify each such filing as a consolidated filing;
`
`FURTHER ORDERED that for any consolidated filing, if Cox wishes
`
`to file an additional paper to address points of disagreement with ARRIS,
`
`Cox must request authorization from the Board to file a motion for
`
`additional pages, and no additional paper may be filed unless the Board
`
`grants such a motion;
`
`FURTHER ORDERED that ARRIS and Cox shall collectively
`
`designate attorneys to conduct the cross-examination of any witness
`
`produced by Patent Owner and the redirect of any witness produced by
`
`ARRIS and Cox, within the timeframes set forth in 37 C.F.R. § 42.53(c) or
`
`agreed to by the parties;
`
`6
`
`
`
`IPR2015-01796
`Patent 5,563,883
`
`FURTHER ORDERED that ARRIS and Cox shall collectively
`
`designate attorneys to present at the oral hearing, if requested and scheduled,
`
`in a consolidated argument;
`
`FURTHER ORDERED that the case caption in IPR2015-00635 shall
`
`be changed to reflect joinder of Cox as a petitioner in accordance with the
`
`attached example; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the record of IPR2015-00635.
`
`
`
`FOR PETITIONER:
`
`Mitchell G. Stockwell
`mstockwell@kilpatricktownsend.com
`
`Michael J. Turton
`mturton@kilpatricktownsend.com
`
`
`
`FOR PATENT OWNER:
`
`Walter E. Hanley
`whanley@kenyon.com
`
`David J. Kaplan
`djkaplan@kenyon.com
`
`David J. Cooperberg
`dcooperberg@kenyon.com
`
`
`7
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC., and COX COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-006351
`Patent 5,563,883
`____________
`
`
`
`
`
`
`
`1 Cox Communications, Inc., who filed a Petition in IPR2015-01796, has
`been joined as a petitioner in this proceeding.
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