Paper No.
`
`
`
`
`
`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 IPR2015-1011
`U.S. PATENT NO. 6,108,704
`CLAIMS 1, 11-12, 16, 22-23, 27, and 30-31
`Title: Point-To-Point Internet Protocol
`
`___________________________________________
`
`______________________________________________________________
`
`PETITIONER’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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 IPR2015-1011
`U.S. PATENT NO. 6,108,704
`CLAIMS 1, 11-12, 16, 22-23, 27, and 30-31
`Title: Point-To-Point Internet Protocol
`
`___________________________________________
`
`______________________________________________________________
`
`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 collectively
`
`INTRODUCTION
`
`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 IPR2015-1011 (the “PETITIONER IPR”) with IPR2014-01366 (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 ’704 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.1
`
`1 The PETITIONER IPR raises the same grounds of unpatentability as those raised
`
`in the Petition for Inter Partes Review for the SAMSUNG IPR, despite the fact that
`
`the Board instituted the SAMSUNG IPR on a subset of the grounds raised. See
`
`Samsung Elecs. Co., Ltd. v. Straight Path IP Grp., LLC, IPR2014-01366 (PTAB
`
`
`
`- 6 -
`
`
`
`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
`
`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
`
`
`Mar. 6, 2015) (Paper 12). Samsung has filed a Request for Rehearing,
`
`IPR2014-01366 (PTAB Mar. 20, 2015) (Paper 14), requesting that the Board
`
`reconsider at least some of the dismissed grounds for institution.
`
`
`
`- 7 -
`
`
`
`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.
`
`Moreover, joinder will reduce risk of prejudice to Petitioner. Although
`
`Samsung is currently pursuing its challenge of the ’704 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 ’704 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 ’704 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, but any grounds subsequently instituted in
`
`the SAMSUNG IPR as a result of Samsung’s Request for Rehearing,
`
`IPR2014-1366 (PTAB Mar. 20, 2015) (Paper 14), will likewise be instituted
`
`in the PETITIONER IPR and joined with the SAMSUNG 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.
`
`
`
`- 9 -
`
`
`
` 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
`
`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 144087345v.4
`
`- 11 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
