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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`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 IPR2015-01486
`Patent 6,549,130
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`
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`PETITIONER COXCOM LLC’S REQUEST FOR REHEARING UNDER 37
`C.F.R. § 42.71 ON THE DECISION NOT TO INSTITUTE
`INTER PARTES REVIEW
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`
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.71(d), Petitioner CoxCom hereby requests
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`rehearing of the Board’s decision denying institution of IPR2015-01486 (Paper 10,
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`entered December 28, 2015; “Decision”) concerning U.S. Patent No. 6549,130.1
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`The Decision found that “the Petition was not filed timely within the statutory
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`period of 35 U.S.C. § 315(b).” Paper 10 at 2.
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`Rehearing is warranted because the Decision misapplied 35 U.S.C. § 315(b)
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`(“Section 315(b)”). Specifically, the Decision overlooked a recent Federal Circuit
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`case stating that a petition is not time-barred unless it is time-barred as to all
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`petitioners or real parties in interest. Click-To-Call Technologies, LP v. Oracle
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`Corporation, et al., No. 15-1242, 622 Fed. Appx. 907 (Fed. Cir. Nov. 12, 2015).
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`The Decision overlooked Click-To-Call when it held that “[t]he presence of
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`CoxCom, LLC . . . does not remove the statutory bar.” Paper 10 at 15. Under
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`Click-to-Call, the Petition could not possibly be time-barred because CoxCom was
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`served with a complaint alleging infringement of the ‘130 patent less than one year
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`before the filing date of the Petition. Therefore, the Petition was timely filed and
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`should be considered on the merits.
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`
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`1 Abbreviations used in this motion are consistent with the abbreviations used in
`the Petition and the Decision.
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`- 1 -
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`For this reason, Petitioner CoxCom respectfully requests the Board vacate its
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`decision denying the Petition, consider the merits of the Petition, and institute trial.
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`II. ARGUMENT
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`Standard of Review
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`A.
`“When rehearing a decision on petition, a panel will review the decision for
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`an abuse of discretion.” 37 C.F.R. § 42.71(c). An abuse of discretion “occurs
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`when a court misunderstands or misapplies the relevant law or makes clearly
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`erroneous findings of fact.” Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed.
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`Cir. 2007). Petitioner CoxCom respectfully submits that this standard is met.
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`Section § 315(b) and the Click-to-Call Decision
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`B.
`Section 315(b) provides that a petition is untimely only “if the petition
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`requesting the proceeding is filed more than 1 year after the date on which the
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`petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Click-To-Call
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`interprets this section and is critical to any analysis of whether a petition filed by
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`multiple petitioners is time-barred.
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`In Click-To-Call, the Federal Circuit stated that “the § 315(b) time bar does
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`not impact the Board’s authority to invalidate a patent claim—it only bars
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`particular petitioners from challenging the claim.” Click-To-Call Technologies, LP
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`v. Oracle Corporation, et al., No. 15-1242, 622 Fed. Appx. 907-908 (Fed. Cir.
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`Nov. 12, 2015) (citing Achates Reference Publishing, Inc. v. Apple Inc., No. 14-
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`1767, 2015 U.S. App. LEXIS 17183 (Fed. Cir. Sept. 30, 2015)). The Court made
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`clear that “[t]he Board may still invalidate a claim challenged in a time barred
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`petition via a properly-filed petition from another petitioner.” Id.
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`The Court pointed out that, when evaluating whether a petition is time-
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`barred under § 315(b), the focus is on the petitioners, not the real-parties-in-
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`interest. The threshold question is whether each individual Petitioner is time-
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`barred. This analysis is consistent with the plain language of Section 315(b),
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`which focuses on the date upon which “the petitioner” is served with a
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`complaint—not “any petitioner” or “a petitioner.”
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`C. The Petition Is Proper And CoxCom Is Not Time-Barred Under
`Section 315(b) And Click-to-Call
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`Under a proper application of § 315(b) the Petition is proper because
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`CoxCom is not time-barred. An evaluation of each Petitioner reveals that
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`Petitioners Terremark North America, LLC, Verizon Business Network Services,
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`Inc., Verizon Services, Corp., and Time Warner Cable Inc. are time-barred because
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`the Petition was accorded a filing date of June 24, 2015, more than one year after
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`those Petitioners were served with the complaint. However, CoxCom is not time-
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`barred because, unlike the other Petitioners, it was served with the complaint on
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`August 18, 2014, less than one year before the Petition was filed. Paper 6 at 9.
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`Thus, the Petition was filed within CoxCom’s one year window under Section
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`315(b). Since CoxCom was not time-barred as of the filing date accorded to the
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`Petition, the Board should have evaluated the Petition on the merits. Click-to-Call
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`makes this clear.
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`The Decision is contrary to Click-to-Call because it concluded that the
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`Petition was time-barred as to all Petitioners rather than just some Petitioners. As
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`pointed out in Click-To-Call, “the § 315(b) time bar does not impact the Board’s
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`authority to invalidate a patent claim—it only bars particular petitioners from
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`challenging the claim.” See Click-To-Call Technologies, LP, No. 15-1242, 622
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`Fed. Appx. 907-908 (Fed. Cir. Nov. 12, 2015). As explained above, CoxCom is
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`not a time-barred petitioner under § 315(b) and the Board should consider the
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`merits of the petition in making its institution decision. Id. at 907-908 (“[t]he
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`Board may still invalidate a claim challenged in a time barred petition via a
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`properly-filed petition from another petitioner.”); see also Achates Reference
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`Publishing, Inc. v. Apple Inc., 803 F.3d 652, 657 (Fed. Cir. Sept. 30, 2015)(“This
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`means that an otherwise time-barred party may nonetheless participate in an inter
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`partes review proceeding if another party files a proper petition.”). The presence
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`of other time-barred petitioners is of no consequence because CoxCom could have
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`filed an identical petition, leaving off all of the other Petitioners, one day or even
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`one month later and such petition would have unquestionably been considered a
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`proper petition under § 315(b). Achates Reference Publishing, Inc., 803 F.3d at
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`- 4 -
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`657 (“The fact that the petition was defective is irrelevant because a proper petition
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`could have been drafted.”) As explained in Achates, any alleged timeliness issue
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`related to the presence of the other Petitioners is a minor defect this Board can
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`overlook because it could have been avoided had CoxCom filed a second identical
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`petition even a month later leaving off those other Petitioners. Id. at 657 (“the
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`timeliness issue here could have been avoided if Apple’s petition had been filed a
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`year earlier or if a petition identical to Apple’s were filed by another party.”)
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`However, the filing of another petition by CoxCom was not necessary in this
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`instance since CoxCom was not time-barred.
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`Accordingly, non-time-barred Petitioner, CoxCom, should be permitted to
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`proceed.
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`III. REMEDY
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`Petitioner CoxCom respectfully requests the Board vacate its decision
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`denying the Petition, consider the merits of the Petition, and institute trial. The
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`Petition should be considered on its merits with at least CoxCom as the Petitioner.
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`The Board could strike the other Petitioners and proceed with CoxCom as the sole
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`Petitioner. Under the Board’s joinder rules, that result is appropriate. Equitably,
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`the fact that the other Petitioners, besides CoxCom, may be time-barred is of no
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`consequence. The joinder rules are time-bar agnostic. See Achates Reference
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`Publishing, Inc. v. Apple Inc., 803 F.3d 652, 657 (Fed. Cir. Sept. 30,
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`2015)(“Further, § 315(b) provides that ‘[t]he time limitation ... shall not apply to a
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`request for joinder under subsection (c).’”); see also Zhongshan Broad Ocean
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`Motor Co. v. Nidec Motor Corp., Case No. IPR2015-00762 (PTAB Oct. 5, 2015)
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`(Paper 16). Accordingly, CoxCom should be permitted to proceed since the
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`petition was properly filed and within its statutory period for filing.
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`V. CONCLUSION
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`For the foregoing reasons, Petitioner CoxCom respectfully requests that the
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`Board grant this request for rehearing.
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`Respectfully submitted,
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`By:
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`
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`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
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`Dated: January 27, 2016
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 27th day of January 2016, a copy of this
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`PETITIONER COXCOM LLC’S REQUEST FOR REHEARING UNDER
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`37 C.F.R. § 42.71 ON THE DECISION NOT TO INSTITUTE INTER
`
`PARTES REVIEW has been
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`served
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`electronically via
`
`
`to
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`PG_JCMS@hgdlawfirm.com(as consented to by the Patent Owner) on July 14,
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`2015, upon the following:
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`Raymond A. Joao
`Reg. No. 35,907
`122 Bellevue Place
`Yonkers, New York 10703
`rayjoao@optonline.net
`Tel: (914) 969-2992
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`
`
`Lead Counsel For Patent Owner
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`
`
`Date: January 27, 2016
`
`
`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
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`Back-up Counsel For Patent Owner
`
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`KILPATRICK TOWNSEND & STOCKTON LLP
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`
`
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`
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`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