Paper 15
`Trials@uspto.gov
`571-272-7822 Entered: October 7, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01045
`Patent 5,563,883
`____________
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: October 7, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01045
`Patent 5,563,883
`____________
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2015-01045
`Patent 5,563,883
`
`I. INTRODUCTION
`Unified Patents Inc. (“Petitioner” or “Unified”) 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 2 (“Pet.”). C-Cation Technologies,
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). After we instituted an inter partes review of the ’883 patent in
`ARRIS Group, Inc. v. C-Cation Technologies, LLC, Case IPR2015-00635
`(“the ARRIS IPR”), Petitioner filed a Motion for Joinder with the ARRIS
`IPR. Paper 11 (“Mot.”). Petitioner represents that neither ARRIS nor Patent
`Owner opposes the Motion for Joinder. Id. at 2.
`For the reasons explained below, we do not institute an inter partes
`review of claims 1, 3, and 4 of the ’883 patent based on the Petition, and we
`deny Petitioner’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`The parties state that the ’883 patent has been asserted in C-Cation
`Technologies, LLC v. Atlantic Broadband Group LLC, No. 1:15-cv-00295
`(D. Del.), and C-Cation Technologies, LLC v. Time Warner Cable Inc.,
`No. 2:14-cv-00059 (E.D. Tex.). Pet. 2; Paper 6, 2.
`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). Cox Communications,
`Inc. was joined as a petitioner in the ARRIS IPR after we instituted review
`of claims 1, 3, and 4 of the ’883 patent based on Cox’s petition and granted
`Cox’s motion for joinder with IPR2015-00635. Cox Commc’ns, Inc. v. C-
`Cation Techs., LLC, Case IPR2015-01796 (PTAB Oct. 2, 2015) (Paper 9);
`
`2
`
`
`
`IPR2015-01045
`Patent 5,563,883
`
`ARRIS Group, Inc. v. C-Cation Techs., LLC, Case IPR2015-00635 (PTAB
`Oct. 2, 2015) (Paper 26).
`The ’883 patent has been the subject of two additional 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. DISCUSSION
`Institution of an inter partes review is authorized, but not required,
`when “the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also
`37 C.F.R. § 42.108(a) (“[T]he Board may authorize the review to proceed on
`all or some of the challenged claims and on all or some of the grounds of
`unpatentability asserted for each claim.” (emphasis added)). Thus, the
`decision whether to institute an inter partes review is discretionary.
`The decision whether to grant joinder also is discretionary, as set forth
`in 35 U.S.C. § 315(c):
`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.
`
`3
`
`
`
`IPR2015-01045
`Patent 5,563,883
`
`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).
`Petitioner contends that claims 1, 3, and 4 of the ’883 patent are
`unpatentable on the following grounds: (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 Pet. 17–55. The Petition
`asserts the same invalidity grounds and presents the same arguments as the
`petition in the ARRIS IPR. See Mot. 7; Prelim. Resp. 2. The Petition also
`relies on declaration testimony from the same expert retained by ARRIS.
`See Mot. 2; Ex. 1002 (Declaration of Stuart Lipoff). In addition, Patent
`Owner’s arguments in the Preliminary Response regarding the asserted
`grounds of unpatentability are virtually identical to those presented by Patent
`Owner in the ARRIS IPR. See Mot. 7; Prelim. Resp. 25–37.
`
`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”).
`4
`
`
`
`IPR2015-01045
`Patent 5,563,883
`
`One issue exists in the case before us that was not present in the
`ARRIS IPR—whether the Petition identifies all real parties-in-interest. See
`Mot. 7; Prelim. Resp. 5–8. Petitioner certifies in the Petition that “Unified is
`the real party-in-interest” and that “no other party exercised control or could
`exercise control over Unified’s participation in this proceeding, the filing of
`this petition, or the conduct of any ensuing trial.” Pet. 2. In support of its
`certification, Petitioner submits voluntary interrogatory responses regarding
`preparation and financing of the Petition. Ex. 1020.
`In the Preliminary Response, Patent Owner contends the Petition
`should be denied because it fails to identify all the real parties-in-interest, as
`required by 35 U.S.C. § 312(a)(2). Prelim. Resp. 2. According to Patent
`Owner, Unified “is merely an entity whose sole purpose is to ‘protect’ the
`technology sectors of its secret members by challenging the validity of
`patents—here, an expired patent—asserted against them.” Id. at 6 (citing
`Ex. 2001 (excerpt from Frequently Asked Questions on the Unified Patents
`website)). Patent Owner further contends that “Petitioner’s only source of
`revenue is subscription fees that its members pay so that Unified can file
`these post-grant proceedings on behalf of their members.” Id. (citing
`Ex. 2002 (another excerpt from Frequently Asked Questions on the Unified
`Patents website)). In sum, Patent Owner argues, Petitioner “acts as a ‘shill’
`for its anonymous members, filing petitions on their behalf and for their
`benefit using money collected from the subscription fees they pay.” Id. at 7.
`In its Motion for Joinder, Petitioner acknowledges that whether the
`Petition identifies all real parties-in-interest is an issue not presented by the
`ARRIS IPR. Mot. 7. But in Petitioner’s view, this additional issue is not an
`impediment to joinder because the Board already thoroughly considered the
`
`5
`
`
`
`IPR2015-01045
`Patent 5,563,883
`
`issue in the institution decision in Unified Patents Inc. v. Dragon Intellectual
`Property, LLC, Case IPR2014-01252 (PTAB Feb. 12, 2015) (Paper 37)
`(“Dragon”). Id. at 7–8. That decision, however, was based on the record at
`a preliminary stage in the proceeding and made clear that Patent Owner was
`not foreclosed from continuing to argue the real party-in-interest issue in the
`Patent Owner Response. Dragon, slip op. at 13–14. Moreover, the Board
`recently denied other motions for joinder filed by Unified, in part because
`Patent Owner’s allegation that the petitions failed to identify all real parties-
`in-interest presented a new issue beyond what was already before the Board
`in the cases Unified was seeking to join. Unified Patents Inc. v.
`Personalized Media Commc’ns, LLC, Case IPR2015-00520, slip op. at 5
`(PTAB June 8, 2015) (Paper 16) (“PMC”); Unified Patents Inc. v.
`Personalized Media Commc’ns, LLC, Case IPR2015-00521, slip op. at 5
`(PTAB June 8, 2015) (Paper 14). Thus, contrary to Petitioner’s suggestion,
`the Board has not determined that all petitions filed by Unified alone satisfy
`the statutory requirement of identifying all real parties-in-interest.
`As the moving party, Petitioner has the burden of establishing it is
`entitled to the requested joinder. 37 C.F.R. §§ 42.20(c), 42.122(b). In
`arguing that joinder is appropriate, Petitioner asserts that the Petition
`presents identical arguments for invalidity and identical supporting evidence
`as the ARRIS IPR. Mot. 7, 10. Petitioner also agrees to consolidated filings
`and discovery and asserts it will adopt an “understudy” role, planning to
`assume the primary role only if ARRIS ceases to participate in the
`proceeding. Id. at 9–10. For these reasons, Petitioner argues, joinder will
`streamline proceedings and will not affect the trial schedule in the ARRIS
`IPR. Id. at 10.
`
`6
`
`
`
`IPR2015-01045
`Patent 5,563,883
`
`Petitioner, however, assumes that the question of whether it has failed
`to identify all real parties-in-interest will not be an ongoing issue if we
`institute review based on the Petition in this case. Id. at 8. For the reasons
`discussed above, we are not persuaded the issue has been decided by the
`Board in a way that would preclude Patent Owner from pursuing the issue
`going forward if it so chose. Thus, if we institute review based on the
`Petition and grant Petitioner’s Motion for Joinder, the real party-in-interest
`issue potentially could sidetrack the joined proceeding, shifting the focus
`away from the substantive issue to be addressed—the patentability of claims
`1, 3, and 4 of the ’883 patent. Joinder, therefore, could complicate, rather
`than simplify, briefing and discovery in the ARRIS IPR. Moreover, Cox
`Communications, Inc. already has been joined as a petitioner in an
`“understudy” role in the ARRIS IPR, so even if we do not join Unified as a
`petitioner, there is a party ready to step into the primary role if ARRIS
`terminates its involvement.
`Although Patent Owner does not oppose the Motion for Joinder, we
`nevertheless may exercise our discretion under 35 U.S.C. § 315(c) to deny
`the Motion. In exercising that discretion, we are mindful that Board trial
`rules, including the rules for joinder, must be construed to secure the just,
`speedy, and inexpensive resolution of every proceeding. See 37 C.F.R.
`§ 42.1(b). We determine whether to grant joinder on a case-by-case basis,
`taking into account the particular facts of each case. Given the
`circumstances of this case, particularly the risk that identity of real parties-
`in-interest will be an ongoing issue, we determine that Petitioner has not
`established that joinder is appropriate. Accordingly, we deny Petitioner’s
`Motion for Joinder.
`
`7
`
`
`
`IPR2015-01045
`Patent 5,563,883
`
`The remaining question is whether, in the absence of joinder, we
`should institute an inter partes review based on the Petition before us. As
`Petitioner itself points out, conducting two separate but parallel inter partes
`reviews addressing the same patentability issues with respect to the same
`claims of the ’883 patent would result in wasteful duplication of efforts by
`both the Board and Patent Owner. Mot. 10–11. We agree, and without a
`compelling reason, we are reluctant to expend additional agency resources or
`to require Patent Owner to participate in an additional proceeding.
`Furthermore, we note that Petitioner, “a first-of-its-kind company
`whose purpose is to deter [non-practicing entity] litigation by protecting
`technology sectors,” is not a party to any litigation with Patent Owner.
`Mot. 4. Indeed, as the Board has noted previously, Petitioner is not exposed
`to threats of patent infringement litigation, suggesting Petitioner will not be
`subject to a bar under 35 U.S.C. § 315(b). PMC, slip op. at 7. Based on the
`current record, we are aware of no reason Petitioner would be unable to
`refile its Petition if the ARRIS IPR is terminated or Petitioner is otherwise
`dissatisfied with the ARRIS IPR. See id.
`For these reasons, and taking into consideration “the efficient
`administration of the Office” under 35 U.S.C. § 316(b), we exercise our
`discretion and do not institute an inter partes review of the ’883 patent based
`on this Petition. See 35 U.S.C. § 314; 37 C.F.R. § 42.108.
`
`IV. ORDER
`
`
`
`Accordingly, it is:
`ORDERED that an inter partes review of U.S. Patent No. 5,563,883 is
`not instituted based on this Petition; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder denied.
`
`8
`
`
`
`IPR2015-01045
`Patent 5,563,883
`
`
`FOR PETITIONER:
`P. Andrew Riley
`Linda J. Thayer
`Rachel L. Emsley
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`andrew.riley@finnegan.com
`C-Cation_IPR@finnegan.com
`
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`
`FOR PATENT OWNER:
`Walter E. Hanley
`David J. Kaplan
`David J. Cooperberg
`KENYON & KENYON LLP
`whanley@kenyon.com
`djkaplan@kenyon.com
`dcooperberg@kenyon.com
`
`
`9
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