`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________________
`
`CISCO SYSTEMS, INC. and AVAYA, INC.
`Petitioners
`
`v.
`
`STRAIGHT PATH IP GROUP, LLC
`Patent Owner
`
`Case IPR2015-01400
`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
`
`___________________________________________
`
`______________________________________________________________
`
`PETITIONERS’ 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, “Petitioners”) 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). Petitioners submit 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.
`
`Petitioners hereby move for joinder of the present petition for inter partes
`
`review IPR2015-01400 (the “PETITIONERS’ IPR”) with IPR2015-00198 (the
`
`“LG IPR”), LG Electronics, Inc. (“LGE”), Toshiba Corp. (“Toshiba”), VIZIO, Inc.
`
`(“VIZIO”), and Hulu, LLC
`
`(“Hulu”)
`
`(collectively, “LG/Hulu”). The
`
`PETITIONERS’ IPR is identical to the LG IPR in all substantive respects, includes
`
`identical exhibits to the LG IPR, and relies upon the same expert declarant as the LG
`
`IPR. LG/Hulu does not oppose this motion, based on Petitioners’ and LG/Hulu’s
`
`agreement that LG/Hulu will continue to maintain the lead role in the proceedings so
`
`long as LG/Hulu are parties.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`The PETITIONERS’ IPR and the LG 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 Petitioners 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 and AVAYA and LG/Hulu:
`
`PETITIONERS’ IPRs
`
`LG IPRs
`
`Patent
`
`Reference
`
`Filed
`
`Reference
`
`Filed
`
`6,108,704 2015-01398 6/15/2015
`
`2015-00209 10/31/2014
`
`6,009,469 2015-01400 6/15/2015 2015-000198 10/31/2014
`
`Claims in
`IPR
`
`1, 11-12,
`14, 16, 19,
`22-23, 27,
`30-31
`
`1-3, 5-6,
`9-10, 14,
`17-18
`
`6,131,121 2015-01397 6/15/2015
`
`
`2015-00196 10/31/2014
`
`3, 4, 6-14
`
`
`
`- 3 -
`
`
`
`In addition to the present Motion for Joinder, Petitioners are presently filing
`
`Motions for Joinder for the other above-mentioned Petitioners’ petitions with the
`
`corresponding petitions filed by LG/Hulu, subject to the same conditions sought by
`
`this motion. LG/Hulu does not oppose the motions.
`
`III. DISCUSSION
`If the Director institutes an inter partes review, Petitioners respectfully
`
`requests that the Board exercise its discretion to grant joinder of the PETITIONERS’
`
`IPR and LG 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, Petitioners propose 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 PETITIONERS’ IPR is
`
`substantively identical to the corresponding LG 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,
`
`Petitioners will agree to consolidated filings and discovery, and procedural
`
`
`
`- 4 -
`
`
`
`concessions, which LG/Hulu does not oppose and which do not prejudice Straight
`
`Path.
`
`Substantively Identical Petitions
`
`a.
`Petitioners represent that the PETITIONERS’ IPR is identical to the LG IPR
`
`in all substantive respects. It includes identical grounds, analysis, and exhibits and
`
`relies upon the same expert declarant and declaration as the LG IPR. Accordingly, if
`
`instituted, maintaining the PETITIONERS’ IPR proceeding separate from that of the
`
`LG IPR would entail needless duplication of effort.
`
`Consolidated Filings and Discovery
`
`b.
`Because the grounds of unpatentability in the PETITIONERS’ IPR and LG
`
`IPR are the same, the case is amenable to consolidated filings. Petitioners 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, Petitioners will
`
`agree to incorporate its filings with those of LG/Hulu in a consolidated filing,
`
`subject to the ordinary rules for one party on page limits. LG/Hulu and Petitioners
`
`will be jointly responsible for the consolidated filings.
`
`Petitioners agree not to advance any arguments separate from those advanced
`
`by Petitioner and LG/Hulu in the consolidated filings. These limitations avoid
`
`
`
`- 5 -
`
`
`
`lengthy and duplicative briefing. Petitioners also agree that, so long as LG/Hulu are
`
`parties, LG/Hulu will maintain the lead role in the proceedings.
`
`Consolidated discovery is also appropriate given that Petitioners and LG/Hulu
`
`are using the same expert declarant who has submitted the same, identical
`
`declaration in the two proceedings. Petitioners and LG/Hulu 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 Petitioners or LG/Hulu
`
`within the time frame normally allotted by the rules for one party. Petitioners and
`
`LG/Hulu will not receive any separate cross-examination or redirect time.
`
`Petitioners 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 LG IPR.
`
`No New Grounds of Unpatentability
`
`2.
`The PETITIONERS’ IPR raises no new grounds of unpatentability from those
`
`of the LG IPR because, in fact, the petitions are identical.
`
`No Impact on IPR Trial Schedule
`
`3.
`The small difference between the filing date of the PETITIONERS’ IPR and
`
`the LG IPR is without consequence should the proceedings be joined. The trial
`
`schedule for the LG IPR would not need to be delayed to effect joinder based on
`
`Straight Path’s preliminary response and the later-filed PETITIONERS’ IPR. The
`
`
`
`- 6 -
`
`
`
`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 Petitioners seek an order
`
`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
`
`(PTAB June 20, 2013) (Paper 10). As discussed above, Petitioners and LG/Hulu
`
`will engage in consolidated filings and discovery, subject to the understanding that
`
`LG/Hulu will maintain the lead role in the proceedings so long as LG/Hulu are
`
`parties, which will simplify the briefing and discovery process.
`
`No Prejudice to Straight Path if Proceedings Are Joined
`
`5.
`Petitioners propose joinder to streamline the proceedings and reduce the costs
`
`and burdens on the parties. Petitioners believe 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 Petitioners. Although
`
`LG/Hulu is currently pursuing its challenge of the ’469 patent through the LG IPR,
`
`35 U.S.C. § 317 affords LG/Hulu 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 Petitioners to the LG IPR would permit Petitioners to
`
`maintain their ongoing interests in the Board’s review of the ’469 patent in the case
`
`of such a settlement. Because allowing Petitioners to join the LG IPR would not
`
`substantively affect the complexity or timing of that proceeding, as described
`
`previously, the maintenance of Petitioners’ legitimate and ongoing interests in the
`
`Board’s review of the ’469 patent makes joinder appropriate.
`
`
`
`- 8 -
`
`
`
`IV. PROPOSED ORDER
`Petitioners propose a joinder order for consideration by the Board as follows,
`
`which LG/Hulu does not oppose:
`
` The PETITIONERS’ IPR will be instituted and will be joined with the LG
`
`IPR on the same grounds as those for which the LG IPR has been instituted.
`
` The scheduling order for the LG IPR will apply to the joined proceeding, and
`
`LG/Hulu will maintain the lead role in the proceedings so long as they are
`
`parties.
`
` Throughout the proceeding, LG/Hulu and Petitioners 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, LG/Hulu and
`
`Petitioners will identify each such filing as a Consolidated Filing and will be
`
`responsible for completing all consolidated filings. Petitioners agree not to
`
`advance any arguments separate from those advanced by Petitioners and
`
`LG/Hulu in the consolidated filings so long as LG/Hulu remain parties.
`
` In consultation with Petitioners, LG/Hulu 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 LG/Hulu or Petitioners
`
`within the time frame normally allotted by the rules for one party. LG/Hulu
`
`
`
`- 9 -
`
`
`
`and Petitioners will not receive any separate cross-examination or redirect
`
`time.
`
` Straight Path will conduct any cross examination of any given witness jointly
`
`produced by LG/Hulu or Petitioners 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.
`
` LG/Hulu and Petitioners will coordinate their presentation at the oral hearing.
`
` Petitioners will assume a second-chair role as long as LG/Hulu remain in the
`
`proceedings.
`
`V. CONCLUSION
`For the foregoing reasons, Petitioners respectfully requests that the Board
`
`grant joinder of the PETITIONERS’ IPR and LG IPR proceedings.
`
`Date: June 15, 2015
`
`Respectfully submitted,
`
`
`
`/David L. Cavanaugh /
`David L. Cavanaugh
`Registration No. 36,476
`Counsel for Petitioners
`
`WILMER CUTLER PICKERING HALE AND DORR LLP
`1875 PENNSYLVANIA AVENUE NW
`WASHINGTON, DC 20006
`TEL: 650-600-5036
`
`
`
`- 10 -
`
`
`
`FAX: 650-858-6100
`EMAIL: david.cavanaugh@wilmerhale.com
`
`
`
`
`
`- 11 -
`
`
`
`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 “PETITIONERS’ 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
`
`
`
`June 15, 2015
`
`Federal Express
`
`PETITIONERS’ 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
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`
`/Victor F. Souto/
`
`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
`
`
`
`ActiveUS 145958508v.4
`
`- 12 -
`
`