Paper No. __
`IPR2015-01045
`Patent 5,563,883
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`UNIFIED PATENTS, INC.
`Petitioner
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`v.
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`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`___________________________________________
`
`IPR2015-01045
`Patent 5,563,883
`___________________________________________
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`UNOPPOSED MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`IPR2015-01045
`Patent 5,563,883
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
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`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
`
`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`___________________________________________
`
`IPR2015-01045
`Patent 5,563,883
`___________________________________________
`
`UNOPPOSED MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`I.
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`Petitioner Unified Patents Inc. requests that this proceeding (“the Unified
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`IPR”) be joined with the recently instituted IPR concerning the same patent in Arris
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`Group, Inc. v. C-Cation Technologies, LLC, IPR2015-00635 (the “Arris IPR”).
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`Neither Arris Group, Inc. nor C-Cation Technologies, LLC oppose joinder.
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`Joinder is appropriate because it will promote efficient and consistent
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`resolution of the patentability of claims of the ’883 patent and will not prejudice the
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`Arris IPR parties. The Unified IPR and the Arris IPR challenge the same claims, on
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`the same grounds, with support from the same expert. Indeed, since the Unified IPR
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`petition and the Arris IPR petition are substantially identical, the Patent Owner
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`responded with two substantially identical Patent Owner responses. The only
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`apparent difference in its response to Unified’s petition was to question whether
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`Unified properly identified all real parties-in-interest because of Unified’s unique
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`business model. The Board addressed and ultimately dismissed that very same
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`challenge after granting additional discovery in Unified Patents Inc. v. Dragon
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`Intellectual Property, LLC, IPR2014-01252, Paper 37 (Feb. 12, 2015) at 8-14
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`(Decision on Institution), and the Patent Owner failed to offer a reason for the Board
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`to deviate from that decision in this proceeding.
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`2
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`The Board instituted IPR of claims 1, 3, and 4 in the Arris IPR on July 31,
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`2015, scheduling the due date for Patent Owner’s response on November 5, 2015.
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`An institution decision in the Unified IPR asserting those same grounds instituted in
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`the Arris IPR is expected on or before August 19, 2015. This Motion for Joinder is
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`thus not only timely under 37 C.F.R. §§ 42.22 and 42.122(b), but it is being filed at
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`the earliest possible time, to ensure that there will be no impact on the Arris IPR trial
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`schedule.
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`Should the Board join the parties, Unified agrees to subordinate itself,
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`allowing Arris to lead the joined proceedings absent settlement by Arris, in line with
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`common Board practice. Thus, joinder with the Arris IPR would minimally affect
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`both its procedure and substance. Without joinder, if both the Arris IPR and Unified
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`IPR are instituted on the same grounds, the two proceedings would go forward on a
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`similar schedule but as two separate proceedings. Both the Patent Owner and the
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`Board would need to duplicate efforts, and both Unified and Arris may be prejudiced
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`by inconsistent argument and decisions.
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`Unified requests that the Board exercise its discretion and grant joinder of this
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`proceeding with the Arris IPR proceeding.
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`II. BACKGROUND AND RELATED PROCEEDINGS
`A. Related Proceedings
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`Patent Owner C-Cation Technologies, LLC, most recently asserted the ’883
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`Patent against a number of companies now consolidated in C-Cation Technologies,
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`LLC v. Atlantic Broadband Group LLC, et al. No. 1:15-cv-00295 (D. DE. April 7,
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`2015). Other defendants in that case include Baja Broadband, LLC; Bright House
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`Networks, LLC; Broadband Group, LLC; Cablevisions Systems Corp.; Cox
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`Communications, Inc.; Mediacom Communications Corp.; MetroCast Cablevision,
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`LLC; RCN Telecom Services, LLC; WaveDivision Holdings, LLC; and
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`WideOpenWest Finance, LLC.
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`B. Unified and Its Mission
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`Unified is not a party to any litigation with C-Cation, but C-Cation has
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`asserted the ’883 patent against numerous entities in the content delivery sector.
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`Unified has an interest in challenging the validity of patents it believes are
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`unpatentable in the content delivery space, such as the ’883 patent. Unified was
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`founded by intellectual property professionals over concerns with the increasing risk
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`of non-practicing entities (NPEs) asserting poor quality patents against strategic
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`technologies and industries. The founders thus created a first-of-its-kind company
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`whose purpose is to deter NPE litigation by protecting technology sectors, like
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`4
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`content delivery, the technology at issue in the ’883 patent.
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`The Leahy–Smith America Invents Act (AIA) allows an IPR party to be
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`joined with a preexisting IPR. See generally Pub. L. No. 112-29, 125 Stat. 284
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`(2011). The statutory provision governing IPR joinder, 35 U.S.C. § 315(c), reads:
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`(c) 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.
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`Motions for joinder should: (1) set forth reasons why joinder is appropriate;
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`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the existing review;
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`and (4) address specifically how briefing and discovery may be simplified. See
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`Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper No. 15 at 4 (April 24,
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`2013).
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`5
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`Under its discretion, the Board considers how joinder will affect the substance
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`and procedure of the preexisting proceeding. See Decision on Motion for Joinder,
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`Motorola Mobility LLC v. Softview LLC, IPR2013-00257, Paper 10 (June 20, 2013).
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`As discussed in more detail below, joinder is appropriate here because: (1) joinder
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`will promote efficient determination of the validity of the ’883 patent without
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`prejudice to C-Cation or Arris; (2) Unified’s petition raises the same grounds of
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`unpatentability as instituted in the Arris IPR; (3) joinder will not affect the schedule
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`because C-Cations Patent Owner’s response is not due until November 5, 2015, (4)
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`Unified agrees to consolidated filings and allowing Arris to take the lead as long as
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`Arris remains a party, to minimize burden on C-Cation, and (5) neither Petitioner
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`nor Patent Owner oppose. For these reasons, Unified asks the Board to use its
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`discretion and join the instant proceeding to the Arris IPR.
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`Joinder Is Appropriate
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`B.
`Joinder is appropriate here because it will not “unduly complicate or delay” an
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`IPR. SAP America Inc. v. Clouding IP, LLC, Case IPR2014-00306, Paper No. 13
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`(May 19, 2014) at 4. In other IPR proceedings, the Board has found that joinder is
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`appropriate when, like here, (1) no new grounds of unpatentability are introduced;
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`(2) the party joining the proceeding agrees to consolidated filings and discovery; (3)
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`joinder will not affect the trial schedule; and (4) joinder will streamline the
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`proceedings, reduce the costs and burdens on the parties, and increase efficiencies
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`for the Board without prejudicing the Patent Owner. See e.g. Motorola Mobility LLC
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`v. Softview LLC, Case IPR2013-00256 Paper No. 10 (Jun. 20, 2013) at 4-10; see also
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`Mylan Pharmaceuticals Inc. v. Novartis AG et al., IPR2015-00268, Paper No. 17
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`(April 10, 2015). Joinder of the instant proceeding to the Arris IPR is appropriate for
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`all of these reasons.
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`1.
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`Unified’s Petition Introduces No New Grounds
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`As C-Cation acknowledges in its Preliminary Patent Owner Response,
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`Unified’s IPR Petition is virtually identical in all respects. Paper No. 7 at 2, 9-11.
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`Unified provided the same exhibits and supporting expert declaration. Therefore,
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`C-Cation’s Preliminary Patent Owner Response to the Unified IPR Petition is
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`virtually identical to the one it filed in the Arris IPR proceeding.
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`C-Cation did not identify any different or additional issues with Unified’s
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`proposed grounds of unpatentability in its Preliminary Patent Owner Response over
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`those raised in its response to the Arris Petition. The only additional issue C-Cation
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`raised involves real-party-in-interest (RPI) based on Unified’s business model. The
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`Board, however, already thoroughly considered that issue in a previous matter. In
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`Unified Patents Inc. v. Dragon Intellectual Property, LLC, for example, Dragon
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`took discovery regarding Unified’s business model, including a deposition of
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`7
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`Unified’s CEO, Kevin Jakel. After careful consideration, the Board found that
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`Unified’s members are not real-parties-in-interest, as they do not have control over
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`which patents Unified challenges nor do they compensate Unified for IPRs that are
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`filed. Unified Patents Inc. v. Dragon Intellectual Property, LLC, IPR2014-01252,
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`Paper 37 (Feb. 12, 2015) at 12-14 (Decision on Institution). Here, in filing
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`IPR2015-01045, Unified followed the same process and procedures on which the
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`Dragon decision is based, including providing voluntary discovery at the time of
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`filing. See Exhibit 1020. C-Cation does not address the Board’s Dragon decision in
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`its Preliminary Response and offers no credible reason why the Board should depart
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`from it. Moreover, C-Cation did not request additional discovery on this issue before
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`or after filing its Preliminary Response. In fact, the Board previously joined Unified
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`and another petitioner in an IPR that proceeded to a final written decision without
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`procedural or substantive difficulties. See Unified Patents, Inc. and SAP America
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`Inc. v. Clouding IP, LLC, IPR2013-00586, Paper 37 (March 19, 2015) (Final
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`Written Decision). Thus, the Board should grant joinder here.
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`This joinder request differs substantially from the joinder request the Board
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`declined in Unified Patents Inv. v. Personalized Media Communications, LLC,
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`IPR2015-00521, Paper 14 (June 8, 2015) (Decision on Petitioner’s Motion for
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`Joinder) (“PMC Decision”). Unlike that decision, where Unified sought to join one
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`petition with another petition related to six other IPR proceedings, the present
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`request only relates to one instituted IPR, the Arris IPR, and Unified’s joinder will
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`not disrupt the present trial schedule. See id. at 6-7. Also, unlike the facts in the PMC
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`Decision, Unified has retained the same expert as the expert used by the petitioner in
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`the Arris IPR. See id. at 5-6.
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`2.
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`Unified Agrees to Consolidated Filings and Subordination
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`Additionally, Unified agrees to allow Arris to take the lead in all matters.
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`Unified agrees to work with Arris to submit consolidated filings, except for motions
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`that do not involve the other party, although none are at this point anticipated.1
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`Unified will rely on Arris to take testimony and defend depositions of all witnesses,
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`unless Arris wishes otherwise or until Arris terminates its involvement in the joined
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`proceeding, and Unified will refrain from requesting or reserving any additional
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`deposition or oral hearing time. Unified is willing to agree to any other procedural
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` 1
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` These limitations are consistent with previously granted joinder motions. See, e.g.,
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`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
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`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
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`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
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`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`concessions that will minimize complication or delay and result in a speedy trial
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`with little or no impact on the Arris IPR parties or the Board.
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`In short, as long as Arris remains an active participant in the IPR, Unified will
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`adopt an “understudy” or “second chair” role, assuming the primary role only if
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`Arris ceases to participate in the IPR. See, e.g., Mylan Pharmaceuticals Inc. v.
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`Novartis AG et al., IPR2015-00268, Paper No. 17, p. 5.
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`Joinder Will Not Affect the Trial Schedule
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`3.
`This Motion is being filed immediately after institution. Unified contacted the
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`parties to the Arris IPR the same day that the Board instituted the Arris IPR. Because
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`Unified will rely on the testimony of the same expert and an identical declaration,
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`and has agreed to consolidated filings and discovery, joinder should not affect the
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`Board’s statutory deadline.
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`4.
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`Joinder Will Promote Efficiency by Consolidating Issues,
`Avoiding Wasteful Duplication, and Preventing
`Inconsistency
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`Unified presents identical arguments for invalidity and identical supporting
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`evidence as the Arris IPR. Given that the Unified and Arris IPRs both address the
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`same prior art and grounds for rejection of the same claims, joining these
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`proceedings allows for joint submissions and discovery, further streamlining the
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`proceedings. This should promote efficiency and conserve the Board’s and the
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`parties’ resources, and is an appropriate use of the Board’s joinder power.
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`By contrast, determining the same patent validity questions for the ’883
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`Patent with Arris in one proceeding and Unified in another would result in multiple
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`proceedings that would duplicate efforts for the Patent Owner and the Board, create
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`a risk of inconsistent results, and result in piecemeal review. Joinder would avoid
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`that.
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`C. Without Joinder, Unified May be Prejudiced
`Unified may be prejudiced if it is not permitted to join in the Arris IPR.
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`Unified was founded to deter NPE litigation by protecting technology sectors like
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`content delivery, the technology at issue in the ’883 patent, by challenging the
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`validity of NPE patents in this technology sector it believes are unpatentable. In
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`keeping with its purpose, Unified filed an IPR challenging all claims of the ’883
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`patent on the same exact grounds as Arris. Because the Board instituted IPR on all of
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`the grounds presented in the Arris IPR and because Unified is not barred by statute
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`from seeking review of the ’883 patent on any basis, Unified requests that IPR on its
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`petition be instituted on the same grounds and that the Board join the two
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`proceedings.
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`If joinder is not granted and the two IPRs proceed separately but in parallel,
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`there is a risk of inconsistent positions or decisions. With different schedules,
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`11
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`Unified as the trailing party may be further prejudiced in that arguments or positions
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`taken in the leading IPR may affect those in Unified’s trailing IPR.
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`Joining the two proceedings would be the most efficient way of conducting an
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`IPR on the ’883 patent, while allowing both Arris and Unified to participate in the
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`consolidated filings without either party being prejudiced.
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`Joinder Is Unopposed by and Will Not Prejudice Patent Owner
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`D.
`Patent Owner does not oppose Unified’s joinder request. Unified filed its IPR
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`Petition only one month after Arris filed its petition, and before the Patent Owner
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`filed its Preliminary Response. Unified filed its petition early, without the benefit of
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`seeing Patent Owner’s responsive arguments or the Board’s analysis or decision;
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`therefore, Unified did not gain any unfair advantage from its petition. See, e.g.,
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`T-Mobile USA, Inc. v. Mobile Telecommunications Techs., LLC, IPR2015-00015,
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`Paper 13 (April 8, 2015), at 5 (finding that when a second proceeding is filed
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`pre-institution there is “minimal” prejudice to the Patent Owner because the second
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`petitioner did not have the benefit of the Board’s analysis or decision before filing).
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`Permitting joinder will not prejudice C-Cation, and in fact will be to its
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`benefit. Without joinder, C-Cation would need to submit filings in two proceedings
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`which, even if copies of each other, would require some additional time, money, and
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`effort. Without the guarantee of joined depositions of the experts, C-Cation would
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`12
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`incur the expense of duplicate depositions. Thus, joining the proceedings would be
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`more convenient for C-Cation. Addressing patent validity in a single proceeding
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`with a statutory deadline serves the parties’ and Board’s interests.
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`Joinder Is Unopposed by and Will Not Prejudice Arris
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`E.
`The first petitioner, Arris, does not oppose joinder. Permitting joinder will not
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`prejudice Arris. As discussed above, if the matters are joined, Unified will allow
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`Arris to lead the joined case, taking the lead on depositions and at oral hearing,
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`unless Arris wishes otherwise.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Arris
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`IPR. Unified files this motion under the statutory joinder provisions as contemplated
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`by the AIA. Joinder will simplify the issues and promote efficiency, justice, and
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`speed. Unified thus requests IPR on U.S. Patent No. 5,764,571 and joinder with
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`Arris Technology, Inc. v. MLC Intellectual Property, LLC, IPR2015-00504.
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`Respectfully submitted,
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`By: /P. Andrew Riley/
`P. Andrew Riley, Reg. No. 66,290
`Joshua Goldberg, Reg. No. 59,369
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
` 901 New York Ave, NW
`Washington, DC, 20001
`Telephone: 202.408.4000
`Facsimile: 202.408.4400
`C-Cation_IPR@finnegan.com
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`ATTORNEYS FOR PETITIONER
`UNIFIED PATENTS, INC.
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`14
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`Dated: August 6, 2015
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and 42.105(b), the undersigned certifies that
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`on August 6, 2015 a copy of UNOPPOSED MOTION FOR JOINDER UNDER
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`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) was served upon the
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`Patent Owner via electronic mail at the following addresses:
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`Lewis V. Popovski (Reg. No. 37,423)
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`David J. Kaplan (Reg. No. 57,117)
`David J. Cooperberg (Reg. No. 63,250)
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`lpopovski@kenyon.com
`jginsberg@kenyon.com
`djkaplan@kenyon.com
`dcooperberg@kenyon.com
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`
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`A copy of UNOPPOSED MOTION FOR JOINDER UNDER 35 U.S.C. §
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`315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) was served upon the
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`IPR2015-00635 Petitioner via electronic mail at the following addresses:
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`15
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`Andrew R. Sommer (Reg. No.53,932)
`WINSTON & STRAWN LLP
`1700 K Street, N.W.
`Washington, DC 20006-3817
`Tel: (202) 282-5000
`Fax: (202) 282-5100
`asommer@winston.com
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`IPR2015-01045
`Motion for Joinder
`Patent No. 5,563,883
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`Respectfully submitted,
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`By: /P. Andrew Riley/
`P. Andrew Riley, Reg. No. 66,290
`Joshua Goldberg, Reg. No. 59,369
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
` 901 New York Ave, NW
`Washington, DC, 20001
`Telephone: 202.408.4000
`Facsimile: 202.408.4400
`C-Cation_IPR@finnegan.com
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`ATTORNEYS FOR PETITIONER
`UNIFIED PATENTS, INC.
`
`16
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`
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`Jonathan E. Retsky (Reg. No. 34,415)
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`Tel: (312) 558-3791
`Fax: (312) 558-5700
`jretsky@winston.com
`
`Dated: August 6, 2015
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