Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________________
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`CISCO SYSTEMS, INC. and AVAYA, INC.
`Petitioners
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`v.
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`STRAIGHT PATH IP GROUP, LLC
`Patent Owner
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`Case IPR2015-01398
`U.S. PATENT NO. 6,108,704
`CLAIMS 1, 11-12, 16, 19, 22-23, 27, and 30-31
`Title: Point-To-Point Internet Protocol
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`___________________________________________
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`______________________________________________________________
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`PETITIONERS’ 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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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________________________
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`CISCO SYSTEMS, INC. and AVAYA, INC.
`Petitioners
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`v.
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`STRAIGHT PATH IP GROUP, LLC
`Patent Owner
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`Case IPR2015-01398
`U.S. PATENT NO. 6,108,704
`CLAIMS 1, 11-12, 16, 19, 22-23, 27, and 30-31
`Title: Point-To-Point Internet Protocol
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`___________________________________________
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`______________________________________________________________
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`PETITIONERS’ 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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`I.
`Cisco Systems, Inc. (“Cisco”) and AVAYA Inc. (“AVAYA,” and collectively
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`INTRODUCTION
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`with Cisco, “Petitioners”) submit the present Motion for Joinder pursuant to 37
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`C.F.R. § 42.122(b), which authorizes the filing of a “motion under § 42.22, no later
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`than one month after the institution date of any inter partes review for which joinder
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`is requested.” 37 C.F.R. § 42.122(b). Petitioners submit that the present Motion for
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`Joinder is timely filed because it is being filed no later than one month after
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`institution of the inter partes review proceeding with which joinder is sought.
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`Petitioners hereby move for joinder of the present petition for inter partes
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`review IPR2015-01398 (the “PETITIONERS’ IPR”) with IPR2015-00209 (the
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`“LG IPR”), filed by LG Electronics, Inc. (“LGE”), Toshiba Corp. (“Toshiba”),
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`VIZIO, Inc. (“VIZIO”), and Hulu, LLC (“Hulu”) (collectively, “LG/Hulu”). The
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`PETITIONERS’ IPR is identical to the LG IPR in all substantive respects, includes
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`identical exhibits to the LG IPR, and relies upon the same expert declarant as the LG
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`IPR. LG/Hulu does not oppose this motion, based on Petitioners’ and LG/Hulu’s
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`agreement that LG/Hulu will continue to maintain the lead role in the proceedings so
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`long as LG/Hulu are parties.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`The PETITIONERS’ IPR and the LG IPR are among a family of inter partes
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`review proceedings relating to U.S. Patent Nos. 6,108,704; 6,009,469; and
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`6,131,121 that have been asserted by Straight Path IP Group, LLC (“Straight Path”)
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`against numerous defendants.
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`The complaints in 3:14-cv-04312-WHA (Straight Path IP Group, Inc. v.
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`Cisco Systems, Inc.) and 3:14-cv-04309-WHA (Straight Path IP Group, Inc. v.
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`AVAYA Inc.) were first served on September 30, 2014. Accordingly, all petitions for
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`inter partes review that have been filed by Petitioners are timely as prescribed by 35
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`U.S.C. § 315(b). Further, neither Cisco nor AVAYA has filed a civil action
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`challenging the validity of a claim of the ’704 patent.
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`Currently, the family of inter partes review proceedings relating to the above
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`identified Straight Path patents consists of the following proceedings that involve
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`Petitioners and LG/Hulu:
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`PETITIONERS’ IPRs
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`LG IPRs
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`Patent
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`Reference
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`Filed
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`Reference
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`Filed
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`6,108,704 2015-01398 6/15/2015
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`2015-00209 10/31/2014
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`6,009,469 2015-01400 6/15/2015 2015-000198 10/31/2014
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`Claims in
`IPR
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`1, 11-12,
`14, 16, 19,
`22-23, 27,
`30-31
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`1-3, 5-6,
`9-10, 14,
`17-18
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`6,131,121 2015-01397 6/15/2015
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`2015-00196 10/31/2014
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`3, 4, 6-14
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`In addition to the present Motion for Joinder, Petitioners are presently filing
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`Motions for Joinder for the other above-mentioned Petitioners’ petitions with the
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`corresponding petitions filed by LG/Hulu, subject to the same conditions sought by
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`this motion. LG/Hulu does not oppose the motions.
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`III. DISCUSSION
`If the Director institutes an inter partes review, Petitioners respectfully
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`request that the Board exercise its discretion to grant joinder of the PETITIONERS’
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`IPR and LG IPR proceedings pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and
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`37 C.F.R. § 42.122(b). In support of this motion, Petitioners propose consolidated
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`filings and other procedural accommodations designed
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`to streamline
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`the
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`proceedings.
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`Reasons Joinder Is Appropriate
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`1.
`Joinder is appropriate in this case because it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related proceedings. See
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`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the PETITIONERS’ IPR is
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`substantively identical to the corresponding LG IPR in an effort to avoid
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`multiplication of issues before the Board. Given the duplicative nature of these
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`petitions, joinder of the related proceedings is appropriate. As discussed below,
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`Petitioners will agree to consolidated filings and discovery, and procedural
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`concessions, which LG/Hulu does not oppose and which do not prejudice Straight
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`Path.
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`Substantively Identical Petitions
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`a.
`Petitioners represent that the PETITIONERS’ IPR is identical to the LG IPR
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`in all substantive respects. It includes identical grounds, analysis, and exhibits and
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`relies upon the same expert declarant and declaration as the LG IPR. Accordingly, if
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`instituted, maintaining the PETITIONERS’ IPR proceeding separate from that of the
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`LG IPR would entail needless duplication of effort.
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`Consolidated Filings and Discovery
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`b.
`Because the grounds of unpatentability in the PETITIONERS’ IPR and LG
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`IPR are the same, the case is amenable to consolidated filings. Petitioners will agree
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`to consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
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`Patent Owner’s Response, Opposition to Motion to Amend, Motion for Observation
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`on Cross Examination Testimony of a Reply Witness, Motion to Exclude Evidence,
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`Opposition to Motion to Exclude Evidence and Reply). Specifically, Petitioners will
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`agree to incorporate their filings with those of LG/Hulu in a consolidated filing,
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`subject to the ordinary rules for one party on page limits. LG/Hulu and Petitioners
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`will be jointly responsible for the consolidated filings.
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`Petitioners agree not to advance any arguments separate from those advanced
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`by Petitioners and LG/Hulu in the consolidated filings. These limitations avoid
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`lengthy and duplicative briefing. Petitioners also agree that, so long as LG/Hulu are
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`parties, LG/Hulu will maintain the lead role in the proceedings.
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`Consolidated discovery is also appropriate given that Petitioners and LG/Hulu
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`are using the same expert declarant who has submitted the same, identical
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`declaration in the two proceedings. Petitioners and LG/Hulu will designate an
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`attorney to conduct the cross-examination of any given witness produced by Straight
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`Path and the redirect of any given witness produced by Petitioners or LG/Hulu
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`within the time frame normally allotted by the rules for one party. Petitioners and
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`LG/Hulu will not receive any separate cross-examination or redirect time.
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`Petitioners will agree to the foregoing conditions regarding consolidated
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`filings and discovery even in the event other IPRs filed by other, third-party
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`petitioners are joined with the LG IPR.
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`No New Grounds of Unpatentability
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`2.
`The PETITIONERS’ IPR raises no new grounds of unpatentability from those
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`of the LG IPR because, in fact, the petitions are identical.
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`No Impact on IPR Trial Schedule
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`3.
`The small difference between the filing date of the PETITIONERS’ IPR and
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`the LG IPR is without consequence should the proceedings be joined. The trial
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`schedule for the LG IPR would not need to be delayed to effect joinder based on
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`Straight Path’s preliminary response and the later-filed PETITIONERS’ IPR. The
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`joint proceeding would allow the Board and parties to focus on the merits in one
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`consolidated proceeding without unnecessary duplication of effort, and in a timely
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`manner.
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`Briefing and Discovery Will Be Simplified
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`4.
`Joinder will simplify briefing and discovery because Petitioners seek an order
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`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
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`(PTAB June 20, 2013) (Paper 10). As discussed above, Petitioners and LG/Hulu
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`will engage in consolidated filings and discovery, subject to the understanding that
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`LG/Hulu will maintain the lead role in the proceedings so long as LG/Hulu are
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`parties, which will simplify the briefing and discovery process.
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`No Prejudice to Straight Path if Proceedings Are Joined
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`5.
`Petitioners propose joinder to streamline the proceedings and reduce the costs
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`and burdens on the parties. Petitioners believe joinder will achieve these goals for
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`several reasons. First, joinder will most certainly decrease the number of papers the
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`parties must file, by eliminating a duplicative proceeding. Second, joinder will also
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`reduce by half the time and expense for depositions and other discovery that would
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`otherwise be required in separate proceedings. Third, joinder creates case
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`management efficiencies for the Board and parties without any prejudice to Straight
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`Path.
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`Moreover, joinder will reduce risk of prejudice to Petitioners. Although
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`LG/Hulu is currently pursuing its challenge of the ’704 patent through the LG IPR,
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`35 U.S.C. § 317 affords LG/Hulu the opportunity to withdraw from the proceeding
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`through settlement with Straight Path and permits the Board to thereafter terminate
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`the proceeding if “no petitioner remains in the inter partes review.” See 35 U.S.C. §
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`317. Accordingly, joinder of Petitioners to the LG IPR would permit Petitioners to
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`maintain their ongoing interests in the Board’s review of the ’704 patent in the case
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`of such a settlement. Because allowing Petitioners to join the LG IPR would not
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`substantively affect the complexity or timing of that proceeding, as described
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`previously, the maintenance of Petitioners’ legitimate and ongoing interests in the
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`Board’s review of the ’704 patent makes joinder appropriate.
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`IV. PROPOSED ORDER
`Petitioners propose a joinder order for consideration by the Board as follows,
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`which LG/Hulu does not oppose:
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`• The PETITIONERS’ IPR will be instituted and will be joined with the LG
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`IPR on the same grounds as those for which the LG IPR has been instituted.
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`• The scheduling order for the LG IPR will apply to the joined proceeding, and
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`LG/Hulu will maintain the lead role in the proceedings so long as they are
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`parties.
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`• Throughout the proceeding, LG/Hulu and Petitioners will file papers as
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`consolidated filings, except for motions that do not involve the other party, in
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`accordance with the Board’s established rules regarding page limits. So long
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`as they both continue to participate in the merged proceeding, LG/Hulu and
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`Petitioners will identify each such filing as a Consolidated Filing and will be
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`responsible for completing all consolidated filings. Petitioners agree not to
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`advance any arguments separate from those advanced by Petitioners and
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`LG/Hulu in the consolidated filings so long as LG/Hulu remain parties.
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`• In consultation with Petitioners, LG/Hulu will designate an attorney to
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`conduct the cross examination of any given witness produced by Straight Path
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`and the redirect of any given witness produced by LG/Hulu or Petitioners
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`within the time frame normally allotted by the rules for one party. LG/Hulu
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`and Petitioners will not receive any separate cross-examination or redirect
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`time.
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`• Straight Path will conduct any cross examination of any given witness jointly
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`produced by LG/Hulu or Petitioners and the redirect of any given witness
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`produced by Straight Path within the time frame normally allotted by the rules
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`for one cross-examination or redirect examination.
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`• LG/Hulu and Petitioners will coordinate their presentation at the oral hearing.
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`• Petitioners will assume a second-chair role as long as LG/Hulu remain in the
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`proceedings.
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`V. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that the Board grant
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`joinder of the PETITIONERS’ IPR and LG IPR proceedings.
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`Date: June 15, 2015
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`Respectfully submitted,
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`/David L. Cavanaugh /
`David L. Cavanaugh
`Registration No. 36,476
`Counsel for Petitioners
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`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
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I caused
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`to be served a true and correct copy of the foregoing “PETITIONER’S MOTION
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`FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND
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`42.122(b)” as detailed below:
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`Date of service
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`Manner of service
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`Documents served
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`Persons Served
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`June 15, 2015
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`Federal Express
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`PETITIONER’S 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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`Davidson Berquist Jackson & Gowdey LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
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`/Victor F. Souto/
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`Victor F. Souto, Reg. No. 33,458
`vic.souto@wilmerhale.com
`Wilmer Cutler Pickering Hale and Dorr LLP
`7 World Trade Center
`250 Greenwich Street
`New York, New York 10007
`Telephone: 212-937-7224
`Facsimile: 212-230-8888
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