`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________________
`
`CISCO SYSTEMS, INC. and AVAYA, INC.
`Petitioner
`
`v.
`
`STRAIGHT PATH IP GROUP, LLC
`Patent Owner
`
`Case IPR2015-1007
`U.S. PATENT NO. 6,009,469
`CLAIMS 1-3, 5-6, 9-10, 14, 17-18
`Title: Graphic User Interface For Internet Telephony Application
`
`___________________________________________
`
`______________________________________________________________
`
`PETITIONER’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`I.
`Cisco Systems, Inc. (“Cisco”) and AVAYA Inc., (“AVAYA,” and
`
`INTRODUCTION
`
`collectively with Cisco, “Petitioner”) submit the present Motion for Joinder pursuant
`
`to 37 C.F.R. § 42.122(b), which authorizes the filing of a “motion under § 42.22, no
`
`later than one month after the institution date of any inter partes review for which
`
`joinder is requested.” 37 C.F.R. § 42.122(b). Petitioner submits that the present
`
`Motion for Joinder is timely filed because it is being filed no later than one month
`
`after institution of the inter partes review proceeding with which joinder is sought.
`
`Petitioner hereby moves for joinder of the present petition for inter partes
`
`review IPR2015-1007 (the “PETITIONER IPR”) with IPR2014-01367 (the
`
`“SAMSUNG IPR”), filed by Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Samsung Telecommunications America, LLC (collectively,
`
`“Samsung”). The PETITIONER IPR is identical to the SAMSUNG IPR in all
`
`substantive respects, includes identical exhibits to the SAMSUNG IPR, and relies
`
`upon the same expert declarant as the SAMSUNG IPR. Samsung does not oppose
`
`this motion.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`The PETITIONER IPR and the SAMSUNG IPR are among a family of inter
`
`partes review proceedings relating to U.S. Patent Nos. 6,108,704; 6,009,469; and
`
`
`
`- 2 -
`
`
`
`6,131,121 that have been asserted by Straight Path IP Group, LLC (“Straight Path”)
`
`against numerous defendants.
`
`The complaints in 3:14-cv-04312-WHA (Straight Path IP Group, Inc. v.
`
`Cisco Systems, Inc.) and 3:14-cv-04309-WHA (Straight Path IP Group, Inc. v.
`
`Avaya, Inc.) were first served on September 30, 2014. Accordingly, all petitions for
`
`inter partes review that have been filed by Petitioner are timely as prescribed by 35
`
`U.S.C. § 315(b). Further, neither Cisco nor AVAYA has filed a civil action
`
`challenging the validity of a claim of the ’469 patent.
`
`Currently, the family of inter partes review proceedings relating to the above
`
`identified Straight Path patents consists of the following proceedings that involve
`
`Cisco, Avaya, and Samsung:
`
`Cisco/Avaya IPRs
`
`Samsung IPRs
`
`Patent
`
`Reference
`
`Filed
`
`Reference
`
`Filed
`
`6,108,704
`
`2015-1011
`
`4/6/2015
`
`2014-01366
`
`8/22/2014
`
`6,009,469
`
`2015-1007
`
`4/6/2015
`
`2014-01367
`
`8/22/2014
`
`6,131,121
`
`2015-1006
`
`4/6/2015
`
`2014-01368
`
`8/22/2014
`
`
`
`
`
`- 3 -
`
`Claims in
`IPR
`
`1, 11-12,
`14, 16,
`22-23, 27,
`30-31
`
`1-3, 5-6,
`9-10, 14,
`17-18
`
`6, 8, 10, 11,
`13, 14
`
`
`
`In addition to the present Motion for Joinder, Petitioner is presently filing
`
`Motions for Joinder for the other above-mentioned Petitioner petitions with the
`
`corresponding petitions filed by Samsung, subject to the same conditions sought by
`
`this motion. Samsung does not oppose the motions.
`
`III. DISCUSSION
`If the Director institutes an inter partes review, Petitioner respectfully
`
`requests that the Board exercise its discretion to grant joinder of the PETITIONER
`
`IPR and SAMSUNG IPR proceedings pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §
`
`42.22, and 37 C.F.R. § 42.122(b). In support of this motion, Petitioner proposes
`
`consolidated filings and other procedural accommodations designed to streamline
`
`the proceedings.
`
`Reasons Joinder Is Appropriate
`
`1.
`Joinder is appropriate in this case because it is the most expedient way to
`
`secure the just, speedy, and inexpensive resolution of the related proceedings. See
`
`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the PETITIONER IPR is
`
`substantively identical to the corresponding SAMSUNG IPR in an effort to avoid
`
`multiplication of issues before the Board. Given the duplicative nature of these
`
`petitions, joinder of the related proceedings is appropriate. As discussed below,
`
`Petitioner will agree to consolidated filings and discovery, and procedural
`
`
`
`- 4 -
`
`
`
`concessions, which Samsung does not oppose and which do not prejudice Straight
`
`Path.
`
`Substantively Identical Petitions
`
`a.
`Petitioner represents that the PETITIONER IPR is identical to the
`
`SAMSUNG IPR in all substantive respects. It includes identical grounds, analysis,
`
`and exhibits and relies upon the same expert declarant and declaration as the
`
`SAMSUNG IPR. Accordingly, if instituted, maintaining the PETITIONER IPR
`
`proceeding separate from that of the SAMSUNG IPR would entail needless
`
`duplication of effort.
`
`Consolidated Filings and Discovery
`
`b.
`Because the grounds of unpatentability in the PETITIONER IPR and
`
`SAMSUNG IPR are the same, the case is amenable to consolidated filings.
`
`Petitioner will agree to consolidated filings for all substantive papers in the
`
`proceeding (e.g., Reply to the Patent Owner’s Response, Opposition to Motion to
`
`Amend, Motion for Observation on Cross Examination Testimony of a Reply
`
`Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude Evidence
`
`and Reply). Specifically, Petitioner will agree to incorporate its filings with those of
`
`Samsung in a consolidated filing, subject to the ordinary rules for one party on page
`
`limits. Samsung and Petitioner will be jointly responsible for the consolidated
`
`filings.
`
`
`
`- 5 -
`
`
`
`Petitioner agrees not to advance any arguments separate from those advanced
`
`by Petitioner and Samsung in the consolidated filings. These limitations avoid
`
`lengthy and duplicative briefing.
`
`Consolidated discovery is also appropriate given that Petitioner and Samsung
`
`are using the same expert declarant who has submitted the same, identical
`
`declaration in the two proceedings. Petitioner and Samsung will designate an
`
`attorney to conduct the cross-examination of any given witness produced by Straight
`
`Path and the redirect of any given witness produced by Petitioner or Samsung within
`
`the time frame normally allotted by the rules for one party. Petitioner and Samsung
`
`will not receive any separate cross-examination or redirect time.
`
`Petitioner will agree to the foregoing conditions regarding consolidated
`
`filings and discovery even in the event other IPRs filed by other, third-party
`
`petitioners are joined with the SAMSUNG IPR.
`
`No New Grounds of Unpatentability
`
`2.
`The PETITIONER IPR raises no new grounds of unpatentability from those
`
`of the SAMSUNG IPR because, in fact, the petitions are identical.
`
`No Impact on IPR Trial Schedule
`
`3.
`The small difference between the filing date of the PETITIONER IPR and the
`
`SAMSUNG IPR is without consequence should the proceedings be joined. The trial
`
`schedule for the SAMSUNG IPR would not need to be delayed to effect joinder
`
`
`
`- 6 -
`
`
`
`based on Straight Path’s preliminary response and the later-filed PETITIONER IPR.
`
`The joint proceeding would allow the Board and parties to focus on the merits in one
`
`consolidated proceeding without unnecessary duplication of effort, and in a timely
`
`manner.
`
`Briefing and Discovery Will Be Simplified
`
`4.
`Joinder will simplify briefing and discovery because Petitioner seeks an order
`
`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
`
`(PTAB June 20, 2013) (Paper 10). As discussed above, Petitioner and Samsung will
`
`engage in consolidated filings and discovery, which will simplify the briefing and
`
`discovery process.
`
`No Prejudice to Straight Path if Proceedings Are Joined
`
`5.
`Petitioner proposes joinder to streamline the proceedings and reduce the costs
`
`and burdens on the parties. Petitioner believes joinder will achieve these goals for
`
`several reasons. First, joinder will most certainly decrease the number of papers the
`
`parties must file, by eliminating a duplicative proceeding. Second, joinder will also
`
`reduce by half the time and expense for depositions and other discovery that would
`
`otherwise be required in separate proceedings. Third, joinder creates case
`
`management efficiencies for the Board and parties without any prejudice to Straight
`
`Path.
`
`
`
`- 7 -
`
`
`
`Moreover, joinder will reduce risk of prejudice to Petitioner. Although
`
`Samsung is currently pursuing its challenge of the ’469 patent through the
`
`SAMSUNG IPR, 35 U.S.C. § 317 affords Samsung the opportunity to withdraw
`
`from the proceeding through settlement with Straight Path and permits the Board to
`
`thereafter terminate the proceeding if “no petitioner remains in the inter partes
`
`review.” See 35 U.S.C. § 317. Accordingly, joinder of Petitioner to the SAMSUNG
`
`IPR would permit Petitioner to maintain its ongoing interests in the Board’s review
`
`of the ’469 patent in the case of such a settlement. Because allowing Petitioner to
`
`join the SAMSUNG IPR would not substantively affect the complexity or timing of
`
`that proceeding, as described previously, the maintenance of Petitioner’s legitimate
`
`and ongoing interests in the Board’s review of the ’469 patent makes joinder
`
`appropriate.
`
`
`
`- 8 -
`
`
`
`IV. PROPOSED ORDER
`Petitioner proposes a joinder order for consideration by the Board as follows,
`
`which Samsung does not oppose:
`
` The PETITIONER IPR will be instituted and will be joined with the
`
`SAMSUNG IPR on the same grounds as those for which the SAMSUNG IPR
`
`has been instituted. Grounds not instituted because the SAMSUNG IPR
`
`failed to establish a reasonable likelihood of prevailing will be similarly
`
`denied in the PETITIONER IPR.
`
` The scheduling order for the SAMSUNG IPR will apply to the joined
`
`proceeding.
`
` Throughout the proceeding, Samsung and Petitioner will file papers as
`
`consolidated filings, except for motions that do not involve the other party, in
`
`accordance with the Board’s established rules regarding page limits. So long
`
`as they both continue to participate in the merged proceeding, Samsung and
`
`Petitioner will identify each such filing as a Consolidated Filing and will be
`
`responsible for completing all consolidated filings.
`
` Samsung and Petitioner will designate an attorney to conduct the cross
`
`examination of any given witness produced by Straight Path and the redirect
`
`of any given witness produced by Samsung or Petitioner within the time
`
`
`
`- 9 -
`
`
`
`frame normally allotted by the rules for one party. Samsung and Petitioner
`
`will not receive any separate cross-examination or redirect time.
`
` Straight Path will conduct any cross examination of any given witness jointly
`
`produced by Samsung or Petitioner and the redirect of any given witness
`
`produced by Straight Path within the time frame normally allotted by the rules
`
`for one cross-examination or redirect examination.
`
`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board grant
`
`joinder of the PETITIONER IPR and SAMSUNG IPR proceedings.
`
`Date: April 6, 2015
`
`Respectfully submitted,
`
`
`
`/David L. Cavanaugh /
`David L. Cavanaugh
`Registration No. 36,476
`Counsel for Petitioner
`
`WILMER CUTLER PICKERING HALE AND DORR LLP
`1875 PENNSYLVANIA AVENUE NW
`WASHINGTON, DC 20006
`TEL: 650-600-5036
`FAX: 650-858-6100
`EMAIL: david.cavanaugh@wilmerhale.com
`
`
`
`
`
`- 10 -
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I caused
`
`to be served a true and correct copy of the foregoing “PETITIONER’S MOTION
`
`FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND
`
`42.122(b)” as detailed below:
`
`Date of service
`
`Manner of service
`
`Documents served
`
`
`
`Persons Served
`
`
`
`April 6, 2015
`
`Federal Express
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§
`42.22 AND 42.122(b)
`
`Davidson Berquist Jackson & Gowdey LLP
`4300 Wilson Blvd., 7th Floor
`Arlington, Virginia 22203
`
`/David L. Cavanaugh/
`David L. Cavanaugh
`Registration No. 36,476
`
`
`
`
`
`ActiveUS 144096637v.4
`
`- 11 -
`
`