UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS NETWORK
`SERVICES INC., VERIZON SERVICES CORP., TIME WARNER CABLE
`INC., ICONTROL NETWORKS, INC., AND COXCOM, LLC,
`Petitioners,
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner
`
`
`
`Case IPR2015-01482
`Patent 7,397,363
`
`
`
`PETITIONER COXCOM LLC’S REQUEST FOR REHEARING UNDER 37
`C.F.R. § 42.71 ON THE DECISION NOT TO INSTITUTE
`INTER PARTES REVIEW
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TERREMARK NORTH AMERICA LLC, VERIZON BUSINESS NETWORK
`SERVICES INC., VERIZON SERVICES CORP., TIME WARNER CABLE
`INC., ICONTROL NETWORKS, INC., AND COXCOM, LLC,
`Petitioners,
`v.
`
`JOAO CONTROL & MONITORING SYSTEMS, LLC,
`Patent Owner
`
`
`
`Case IPR2015-01482
`Patent 7,397,363
`
`
`
`PETITIONER COXCOM LLC’S REQUEST FOR REHEARING UNDER 37
`C.F.R. § 42.71 ON THE DECISION NOT TO INSTITUTE
`INTER PARTES REVIEW
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.71(d), Petitioner CoxCom hereby requests
`
`rehearing of the Board’s decision denying institution of IPR2015-01482 (Paper 10,
`
`entered December 28, 2015; “Decision”) concerning U.S. Patent No. 7,397,363.1
`
`The Decision found that “the Petition was not filed timely within the statutory
`
`period of 35 U.S.C. § 315(b).” Paper 10 at 2.
`
`Rehearing is warranted because the Decision misapplied 35 U.S.C. § 315(b)
`
`(“Section 315(b)”). Specifically, the Decision overlooked a recent Federal Circuit
`
`case stating that a petition is not time-barred unless it is time-barred as to all
`
`petitioners or real parties in interest. Click-To-Call Technologies, LP v. Oracle
`
`Corporation, et al., No. 15-1242, 622 Fed. Appx. 907 (Fed. Cir. Nov. 12, 2015).
`
`The Decision overlooked Click-To-Call when it held that “[t]he presence of
`
`CoxCom, LLC . . . does not remove the statutory bar.” Paper 10 at 15. Under
`
`Click-to-Call, the Petition could not possibly be time-barred because CoxCom was
`
`served with a complaint alleging infringement of the ‘363 patent less than one year
`
`before the filing date of the Petition. Therefore, the Petition was timely filed and
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`should be considered on the merits.
`
`
`
`1 Abbreviations used in this motion are consistent with the abbreviations used in
`the Petition and the Decision.
`
`
`
`- 1 -
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`
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`For this reason, Petitioner CoxCom respectfully requests the Board vacate its
`
`decision denying the Petition, consider the merits of the Petition, and institute trial.
`
`II. ARGUMENT
`
`Standard of Review
`
`A.
`“When rehearing a decision on petition, a panel will review the decision for
`
`an abuse of discretion.” 37 C.F.R. § 42.71(c). An abuse of discretion “occurs
`
`when a court misunderstands or misapplies the relevant law or makes clearly
`
`erroneous findings of fact.” Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed.
`
`Cir. 2007). Petitioner CoxCom respectfully submits that this standard is met.
`
`Section § 315(b) and the Click-to-Call Decision
`
`B.
`Section 315(b) provides that a petition is untimely only “if the petition
`
`requesting the proceeding is filed more than 1 year after the date on which the
`
`petitioner, real party in interest, or privy of the petitioner is served with a
`
`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Click-To-Call
`
`interprets this section and is critical to any analysis of whether a petition filed by
`
`multiple petitioners is time-barred.
`
`In Click-To-Call, the Federal Circuit stated that “the § 315(b) time bar does
`
`not impact the Board’s authority to invalidate a patent claim—it only bars
`
`particular petitioners from challenging the claim.” Click-To-Call Technologies, LP
`
`v. Oracle Corporation, et al., No. 15-1242, 622 Fed. Appx. 907-908 (Fed. Cir.
`
`
`
`- 2 -
`
`
`
`Nov. 12, 2015) (citing Achates Reference Publishing, Inc. v. Apple Inc., No. 14-
`
`1767, 2015 U.S. App. LEXIS 17183 (Fed. Cir. Sept. 30, 2015)). The Court made
`
`clear that “[t]he Board may still invalidate a claim challenged in a time barred
`
`petition via a properly-filed petition from another petitioner.” Id.
`
`The Court pointed out that, when evaluating whether a petition is time-
`
`barred under § 315(b), the focus is on the petitioners, not the real-parties-in-
`
`interest. The threshold question is whether each individual Petitioner is time-
`
`barred. This analysis is consistent with the plain language of Section 315(b),
`
`which focuses on the date upon which “the petitioner” is served with a
`
`complaint—not “any petitioner” or “a petitioner.”
`
`C. The Petition Is Proper And CoxCom Is Not Time-Barred Under
`Section 315(b) And Click-to-Call
`
`Under a proper application of § 315(b) the Petition is proper because
`
`CoxCom is not time-barred. An evaluation of each Petitioner reveals that
`
`Petitioners Terremark North America, LLC, Verizon Business Network Services,
`
`Inc., Verizon Services, Corp., and Time Warner Cable Inc. are time-barred because
`
`the Petition was accorded a filing date of June 24, 2015, more than one year after
`
`those Petitioners were served with the complaint. However, CoxCom is not time-
`
`barred because, unlike the other Petitioners, it was served with the complaint on
`
`August 18, 2014, less than one year before the Petition was filed. Paper 6 at 9.
`
`Thus, the Petition was filed within CoxCom’s one year window under Section
`
`
`
`- 3 -
`
`
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`315(b). Since CoxCom was not time-barred as of the filing date accorded to the
`
`Petition, the Board should have evaluated the Petition on the merits. Click-to-Call
`
`makes this clear.
`
`The Decision is contrary to Click-to-Call because it concluded that the
`
`Petition was time-barred as to all Petitioners rather than just some Petitioners. As
`
`pointed out in Click-To-Call, “the § 315(b) time bar does not impact the Board’s
`
`authority to invalidate a patent claim—it only bars particular petitioners from
`
`challenging the claim.” See Click-To-Call Technologies, LP, No. 15-1242, 622
`
`Fed. Appx. 907-908 (Fed. Cir. Nov. 12, 2015). As explained above, CoxCom is
`
`not a time-barred petitioner under § 315(b) and the Board should consider the
`
`merits of the petition in making its institution decision. Id. at 907-908 (“[t]he
`
`Board may still invalidate a claim challenged in a time barred petition via a
`
`properly-filed petition from another petitioner.”); see also Achates Reference
`
`Publishing, Inc. v. Apple Inc., 803 F.3d 652, 657 (Fed. Cir. Sept. 30, 2015)(“This
`
`means that an otherwise time-barred party may nonetheless participate in an inter
`
`partes review proceeding if another party files a proper petition.”). The presence
`
`of other time-barred petitioners is of no consequence because CoxCom could have
`
`filed an identical petition, leaving off all of the other Petitioners, one day or even
`
`one month later and such petition would have unquestionably been considered a
`
`proper petition under § 315(b). Achates Reference Publishing, Inc., 803 F.3d at
`
`
`
`- 4 -
`
`
`
`657 (“The fact that the petition was defective is irrelevant because a proper petition
`
`could have been drafted.”) As explained in Achates, any alleged timeliness issue
`
`related to the presence of the other Petitioners is a minor defect this Board can
`
`overlook because it could have been avoided had CoxCom filed a second identical
`
`petition even a month later leaving off those other Petitioners. Id. at 657 (“the
`
`timeliness issue here could have been avoided if Apple’s petition had been filed a
`
`year earlier or if a petition identical to Apple’s were filed by another party.”)
`
`However, the filing of another petition by CoxCom was not necessary in this
`
`instance since CoxCom was not time-barred.
`
`Accordingly, non-time-barred Petitioner, CoxCom, should be permitted to
`
`proceed.
`
`D. The Filing of Petitioner’s Declaration Is Proper
`The Petitioner’s Declaration in IPR2015-01482 was timely and properly
`
`filed. As acknowledged by the Decision, “Petitioner filed the Declaration for
`
`IPR2015-01485 in IPR2015-01482.” Paper 10 at 8-9. However, Petitioner
`
`submitted the proper “Declaration for IPR2015-01482 on July 29, 2015. . . .” Id.
`
`The proper Declaration for IPR2015-01482 was filed before August 18,
`
`2015 and is within CoxCom’s one year window under Section 315(b).
`
`Accordingly, the proper Declaration for IPR2015-01482 is timely and should be
`
`considered with the Petition.
`
`
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`- 5 -
`
`
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`III. REMEDY
`
`Petitioner CoxCom respectfully requests the Board vacate its decision
`
`denying the Petition, consider the merits of the Petition, consider the proper
`
`Declaration for IPR2015-01482, and institute trial. The Petition should be
`
`considered on its merits with at least CoxCom as the Petitioner. The Board could
`
`strike the other Petitioners and proceed with CoxCom as the sole Petitioner. Under
`
`the Board’s joinder rules, that result is appropriate. Equitably, the fact that the
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`other Petitioners, besides CoxCom, may be time-barred is of no consequence. The
`
`joinder rules are time-bar agnostic. See Achates Reference Publishing, Inc. v.
`
`Apple Inc., 803 F.3d 652, 657 (Fed. Cir. Sept. 30, 2015)(“Further, § 315(b)
`
`provides that ‘[t]he time limitation ... shall not apply to a request for joinder under
`
`subsection (c).’”); see also Zhongshan Broad Ocean Motor Co. v. Nidec Motor
`
`Corp., Case No. IPR2015-00762 (PTAB Oct. 5, 2015) (Paper 16). Accordingly,
`
`CoxCom should be permitted to proceed since the petition was properly filed and
`
`within its statutory period for filing.
`
`
`
`
`
`
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`- 6 -
`
`
`
`V. CONCLUSION
`
`For the foregoing reasons, Petitioner CoxCom respectfully requests that the
`
`Board grant this request for rehearing.
`
`
`Dated: January 27, 2016
`
`Respectfully submitted,
`
`By:
`D. Clay Holloway
`Reg. No. 58,011
`
`
`
`1100 Peachtree Street, NE, Suite 2800
`Atlanta, Georgia 30309-4530
`Telephone: (404) 815-6500
`Facsimile: (404) 815-6555
`cholloway@kilpatricktownsend.com
`
`Counsel for Petitioner CoxCom, LLC
`
`
`
`- 7 -
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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 27th day of January 2016, a copy of this
`
`PETITIONER COXCOM LLC’S REQUEST FOR REHEARING UNDER
`
`37 C.F.R. § 42.71 ON THE DECISION NOT TO INSTITUTE INTER
`
`PARTES REVIEW has been
`
`served
`
`electronically via
`
`
`to
`
`PG_JCMS@hgdlawfirm.com(as consented to by the Patent Owner) on July 14,
`
`Rene A. Vazquez
`Reg. No. 38,647
`Henniger Garrison Davis, LLC
`18296 St. Georges Ct.
`Leesburg, VA 20176
`rvazquez@hgdlawfirm.com
`Tel: (571) 206-1375
`
`Back-up Counsel For Patent Owner
`
`
`2015, upon the following:
`
`Raymond A. Joao
`Reg. No. 35,907
`122 Bellevue Place
`Yonkers, New York 10703
`rayjoao@optonline.net
`Tel: (914) 969-2992
`
`
`
`Lead Counsel For Patent Owner
`
`
`
`Date: January 27, 2016
`
`
`
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`
`
`
`
`
`D. Clay Holloway
`Counsel for Petitioner CoxCom, LLC
`Reg. No. 58,011
`1100 Peachtree Street, NE, Suite 2800
`Atlanta, Georgia 30309-4530
`Telephone: (404) 815-6500
`Facsimile: (404) 815-6555
`cholloway@kilpatricktownsend.com
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