`571-272-7822
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` Paper 9
`Entered: November 24, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VERIZON SERVICES CORP. and VERIZON BUSINESS NETWORK
`SERVICES INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01407
`Patent 6,131,121 C1
`____________
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
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`INTRODUCTION
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`
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`Verizon Services Corp. and Verizon Business Network Services Inc.
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`(collectively, “Petitioner”) filed a Petition requesting an inter partes review
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`of claims 3, 4, and 6–14 of U.S. Patent No. 6,131,121 C1 (Ex. 1001, “the
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`
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`IPR2015-01407
`Patent 6,131,121 C1
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`’121 patent”). Paper 1 (“Pet.”). With the Petition, Petitioner filed a Motion
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`for Joinder (Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v.
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`Straight Path IP Grp., Inc., IPR2015-00196, filed by LG Electronics, Inc.,
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`Toshiba Corp., VIZIO, Inc., and Hulu, LLC (collectively, “LG”). Patent
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`Owner does not oppose the Motion for Joinder. Paper 7, 2. In a separate
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`decision, entered today, we institute an inter partes review as to the same
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`claims on the same ground of unpatentability for which we instituted trial in
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`LG Elecs., Inc. v. Straight Path IP Grp., Inc., IPR2015-00196. For the
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`reasons that follow, Petitioner’s Motion for Joinder is granted.
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`BACKGROUND
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`Petitioner filed its Petition and Motion for Joinder on June 15, 2015,
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`within one month after the institution date of IPR2015-00196. Petitioner’s
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`Motion for Joinder includes a proposed order defining the parameters of
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`joinder. See Mot. 8–9.
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`The Petition in this case asserts that claims 3, 4, and 6–14 of the
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`’121 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
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`WINS1 and NetBIOS.2 Pet. 30–59. These are the same claims and the same
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`ground for which we instituted trial in IPR2015-00196. LG Elecs., Inc. v.
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`Straight Path IP Grp., Inc., Case IPR2015-00196, slip op. at 9–19 (PTAB
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`May 15, 2015) (Paper 20).
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`
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`1 MICROSOFT WINDOWS NT SERVER VERSION 3.5, TCP/IP USER
`GUIDE, © 1994 Microsoft Corporation (Ex. 1003, “WINS”).
`2 X/OPEN PC INTERWORKING: SMB, VERSION 2, THE OPEN GROUP,
`© September 1992, X/Open Company Limited (Ex. 1004, “NetBIOS”).
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`2
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`
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`IPR2015-01407
`Patent 6,131,121 C1
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`ANALYSIS
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29 (2011),
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`permits joinder of like review proceedings. Thus, an inter partes review
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`may be joined with another inter partes review. The statutory provision
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`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c),
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`which provides:
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`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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`As the movant, Petitioner bears the burden to show that joinder is
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`appropriate. 37 C.F.R. § 42.20(c). In its Motion for Joinder, Petitioner
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`contends that joinder is appropriate because “it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related
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`proceedings.” Mot. 4. In particular, Petitioner (1) represents that IPR2015-
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`01407 is identical to IPR2015-00196 in all substantive aspects, including
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`identical grounds, analysis, exhibits, and relies upon the same expert
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`Declaration; (2) agrees to (a) incorporate its filings with LG, (b) not advance
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`any arguments separate from those advanced by LG, and (c) consolidate
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`discovery; (3) represents that joinder will not have any impact on the
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`IPR2015-00196 schedule; and (4) asserts that there will be no prejudice to
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`Patent Owner. Id. at 4–8.
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`Acting on behalf of the Director, we have discretion to join
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`proceedings. 35 U.S.C. § 315(c). In exercising our discretion, we consider
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`3
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`IPR2015-01407
`Patent 6,131,121 C1
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`the impact of both substantive issues and procedural matters on the
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`proceedings.
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`The substantive issues in IPR2015-00196 will not be affected by
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`joinder because Petitioner asserts the same ground of unpatentability, for
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`which trial was instituted in IPR2014-00196, presents the same arguments as
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`those advanced by LG, and, therefore, our analysis would similarly institute
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`review of the claims for the same ground for which trial was instituted in
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`IPR2015-00196. Compare Pet. 30–59 with LG Elecs., Inc. v. Straight Path
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`IP Grp., Inc., Case IPR2015-00196, Paper 1, 29–59. Further, Petitioner
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`submits the same Declaration of Dr. Bruce M. Maggs that Samsung
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`submitted in support of its Petition. See Ex. 1002; LG Elecs., Inc. v. Straight
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`Path IP Grp., Inc., Case IPR2015-00196, Ex. 1002. Thus, Petitioner asserts
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`that the Petition in this proceeding raises no new issues beyond those already
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`before the Board in IPR2015-00196.
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`Regarding procedural matters, Petitioner argues that joinder would not
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`require any change to the trial schedule in IPR2015-00196. Mot. 6–7.
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`Petitioner further argues that joinder would “permit Petitioners to maintain
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`their ongoing interests in the Board’s review of the ʼ121 patent” in the event
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`Samsung withdraws from the proceeding. Id. at 8.
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`CONCLUSION
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`Under the circumstances, we conclude Petitioner has demonstrated
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`that joinder will not unduly complicate or delay IPR2015-00196, and
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`therefore joinder is appropriate. Petitioner’s Motion for Joinder is granted.
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`4
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`IPR2015-01407
`Patent 6,131,121 C1
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`Accordingly, it is:
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`ORDER
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` ORDERED that Petitioner’s Motion for Joinder with IPR2015-00196
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`is granted;
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` FURTHER ORDERED that this proceeding is joined with IPR2015-
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`00196;
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` FURTHER ORDERED that the ground on which a trial was instituted
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`in IPR2015-00196 is unchanged and that no other grounds raised in the
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`IPR2015-01407 Petition are authorized for inter partes review;
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` FURTHER ORDERED that the Scheduling Order for IPR2015-00196
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`(Paper 21) shall govern the joined proceedings;
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`FURTHER ORDERED that throughout the proceeding, LG and
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`Petitioner will file papers as consolidated filings, except for motions that do
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`not involve the other party, in accordance with the Board’s established rules
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`regarding page limits. So long as they both continue to participate in the
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`merged proceeding, LG and Petitioner will identify each such filing as a
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`Consolidated Filing and will be responsible for completing all consolidated
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`filings;
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`FURTHER ORDERED that Petitioner will refrain from requesting or
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`reserving any additional depositions or deposition time;
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`
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`FURTHER ORDERED that LG and Petitioner will jointly conduct the
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`cross-examination of any given witness produced by Patent Owner and the
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`redirect of any given witness produced by LG or Petitioner within the
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`timeframe normally allotted by the rules for one party. LG and Petitioner
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`will not receive any separate cross-examination or redirect time;
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`5
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`IPR2015-01407
`Patent 6,131,121 C1
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`FURTHER ORDERED that Patent Owner will conduct any cross-
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`examination of any given witness jointly produced by LG or Petitioner and
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`the redirect of any given witness produced by Patent Owner within the time
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`frame normally allotted by the rules for one cross-examination or redirect
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`examination;
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`FURTHER ORDERED that LG and Petitioner agree not to request
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`additional oral hearing time solely on the basis of the participation of
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`multiple petitioners;
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`FURTHER ORDERED that Petitioner will assume a second-chair role
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`as long as LG remains in the proceeding. Should LG cease to be in the
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`proceeding, Petitioner will consolidate its activities with the remaining
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`petitioners for the remainder of the proceeding consistent with the applicable
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`rules and the direction of the Board;
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`FURTHER ORDERED that IPR2015-01407 is instituted, joined, and
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`terminated under 37 C.F.R. § 42.72, and all further filings in the joined
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`proceeding shall be made in IPR2015-00196;
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` FURTHER ORDERED that the case caption in IPR2015-00196 shall
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`be changed to reflect the joinder with this proceeding in accordance with the
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`attached example; and
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` FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2015-00196.
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`6
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`IPR2015-01407
`Patent 6,131,121 C1
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`For PETITIONER:
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`Rajeev Gupta
`Darren M. Jiron
`Finnegan, LLP
`raj.gupta@finnegan.comdarren.jiron@finnegan.com
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`Clint Conner
`conner.clint@dorsey.com
`
`Leo Lam
`llam@kvn.com
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`
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`For PATENT OWNER:
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`William Meunier
`Michael Newman
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`WAMeunier@mintz.com
`MCNewman@mintz.com
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`7
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`Trials@uspto.gov
`571-272-7822
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` Paper 9
`Entered: November 24, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., HULU, LLC,
`CISCO SYSTEMS, INC., AVAYA INC.,
`VERIZON SERVICES CORP., and VERIZON BUSNESS NETWORK
`SERVICES INC.,
`Petitioner,
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`v.
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`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-001961
`Patent 6,131,121 C1
`____________
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`1 IPR2015-01397 and IPR2015-01407 have been joined with this
`proceeding.