UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`COX COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`C-CATION TECHNOLOGIES, LLC
`
`Patent Owner
`
`Patent No. 5,563,883
`Filing Date: July 18, 1994
`Issue Date: October 8, 1996
`Title: DYNAMIC CHANNEL MANAGEMENT AND SIGNALLING METHOD
`AND APPARATUS
`
`
`Inter Partes Review No. Unassigned
`
`
`
`MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`COX COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`C-CATION TECHNOLOGIES, LLC
`
`Patent Owner
`
`Patent No. 5,563,883
`Filing Date: July 18, 1994
`Issue Date: October 8, 1996
`Title: DYNAMIC CHANNEL MANAGEMENT AND SIGNALLING METHOD
`AND APPARATUS
`
`
`Inter Partes Review No. Unassigned
`
`
`
`MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`Cox Communications, Inc. (“Cox”) submits concurrently herewith a Petition
`
`for Inter Partes Review of U.S. Patent No. 5,563,883 (“Petition”) based on
`
`grounds identical to those that formed the basis for pending IPR proceeding ARRIS
`
`Group, Inc. v. C-Cation Technologies, LLC, IPR2015-00635 (“the ARRIS IPR”).
`
`Pursuant to 35 U.S.C. § 315(c), Cox respectfully moves that its Petition be
`
`instituted and joined with the ARRIS IPR.1 Cox does not seek to alter the grounds
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`upon which the Board has already found support in instituting the ARRIS IPR, and
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`joinder will have no impact on the existing schedule in the joined IPRs. ARRIS
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`does not oppose Cox’s present motion for joinder.
`
`Cox submits that joinder is appropriate because it will promote efficient
`
`resolution of the issues without affecting scheduling for the pending proceeding
`
`and will not prejudice the parties to the ARRIS IPR. Absent joinder, Cox may be
`
`prejudiced as it has a significant interest in the underlying validity determination at
`
`issue in this proceeding, given the potential impact on litigation proceedings
`
`between C-Cation Technologies and Cox involving the same patent. Joinder
`
`would protect Cox’s interests and avoid the potential prejudice to Cox that could
`
`result from a settlement between C-Cation Technologies and ARRIS.
`
`1 As stated in the Frequently Asked Questions section of the Patent Trial and
`
`Appeal Board’s website (http://www.uspto.gov/ip/boards/bpai/prps.jsp), “No prior
`
`authorization is required for filing the motion for joinder with the petition.”
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`
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`1
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`
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`Cox’s motion for joinder and accompanying Petition are timely under 37
`
`C.F.R. §§ 42.22 and 42.122(b), as they are submitted within one month of July 31,
`
`2015, the date that the ARRIS IPR was instituted.
`
`I.
`
`BACKGROUND AND RELATED PROCEEDINGS
`
`C-Cation Technologies, LLC is the owner of U.S. Patent No. 5,563,883.
`
`The ’883 Patent is asserted against Cox in C-Cation Techs., LLC v. Atlantic
`
`Broadband Group LLC, et al., C.A. No. 15-295 (RGA) (D. Del.). The ’883 Patent
`
`is also asserted in C-Cation Techs., LLC v. Time Warner Cable Inc., et al., No.
`
`2:14-cv-00059 (E.D. Tex.) (naming ARRIS as a defendant) (together the
`
`“Underlying Litigations”). The ’883 Patent is also involved in pending inter partes
`
`review Nos. IPR2015-00635 filed by ARRIS Group, Inc. and IPR2015-01045 filed
`
`by Unified Patents Inc. Unified Patents Inc. has also filed an Unopposed Motion
`
`for Joinder to join the ARRIS IPR. See IPR2015-01045, Paper No. 11.
`
`The ’883 Patent was also asserted in the following actions: C-Cation Techs.,
`
`LLC v. Cable One, Inc., No. 2:11-cv-00030 (E.D. Tex.) (filed Jan. 25, 2011;
`
`terminated Jan. 21, 2014); Comcast Cable Commc’ns, LLC v. C-Cation, Inc., No.
`
`1:11-cv- 01922 (S.D.N.Y.) (filed Mar. 18, 2011; terminated Jan. 21, 2014). It was
`
`
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`2
`
`
`
`also the subject of IPR2014-00454 filed by Cisco Systems, Inc.2 and IPR2014-
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`00746 filed by ARRIS Group, Inc.
`
`IPR2015-00635 was filed by ARRIS Group, Inc. on February 5, 2015. The
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`ARRIS IPR covered claims 1, 3, and 4 of the ’883 patent. On July 31, 2015, the
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`Board instituted trial on claims 1, 3, and 4 of the ’883 patent in the ARRIS IPR.
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`II. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Leahy–Smith America Invents Act (AIA) allows an IPR party to be
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`joined with a preexisting IPR. See generally Pub. L. No. 112-29, 125 Stat. 284
`
`(2011). The statutory provision governing IPR joinder, 35 U.S.C. § 315(c), reads:
`
`(c) 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
`
`
`2 The Board denied institution in IPR2014-00454 finding that the petition failed to
`
`“provide sufficient articulated reasoning with rational underpinning explaining
`
`why one with ordinary skill in the art would modify the teachings of the applied
`
`references to arrive at the claimed invention.” See Cisco Systems, Inc. v. C-Cation
`
`Technologies, LLC, IPR2014-00454, Paper 12 at 14-15 (Aug. 29, 2014).
`
`
`
`3
`
`
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`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`
`Motions for joinder should: (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing
`
`review; and (4) address specifically how briefing and discovery may be simplified.
`
`See Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper No. 15 at 4
`
`(April 24, 2013). Under its discretion, the Board considers how joinder will affect
`
`the substance and procedure of the preexisting proceeding. See Decision on Motion
`
`for Joinder, Motorola Mobility LLC v. Softview LLC, IPR2013-00257, Paper 10
`
`(June 20, 2013).
`
`B. Joinder is Appropriate.
`
`Joinder is appropriate here because it will not “unduly complicate or delay”
`
`the ARRIS IPR. SAP America Inc. v. Clouding IP, LLC, Case IPR2014-00306,
`
`Paper No. 13 (May 19, 2014) at 4. In other IPR proceedings, the Board has found
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`that joinder is appropriate when, like here, (1) joinder is timely (2) no new grounds
`
`of unpatentability are introduced; (3) the party joining the proceeding agrees to
`
`consolidated filings and discovery; (4) joinder will not affect the schedule; and (5)
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`joinder will streamline the proceedings, reduce the costs and burdens on the
`
`parties, and increase efficiencies for the Board without prejudicing the parties. See
`
`
`
`4
`
`
`
`e.g. Motorola Mobility LLC v. Softview LLC, Case IPR2013-00256 Paper No. 10
`
`(Jun. 20, 2013) at 4-10; see also Mylan Pharmaceuticals Inc. v. Novartis AG et al.,
`
`IPR2015-00268, Paper No. 17 (April 10, 2015). Joinder of the instant proceeding
`
`to the ARRIS IPR is appropriate for all of these reasons.
`
`1.
`
`This Joinder Motion and the Petition Are Timely.
`
`The Petition and the instant motion for joinder are timely under 35 U.S.C. §
`
`315(c), 37 C.F.R. §§ 42.22, and 42.122(b), as they are being submitted within one
`
`month of the date that the ARRIS IPR was instituted. Rule 42.122 states that a
`
`motion for joinder shall be filed no later than one month after the granting of the
`
`petition that is sought to be joined. ARRIS’s petition was granted on July 31, 2015.
`
`See IPR2015-00635, Paper 19. The Petition, filed on August 24, 2015 was filed
`
`less than one month from the granting of ARRIS’s IPR.
`
`Further, the Petition is not subject to the one-year time bar of Section 315(b)
`
`and Rule 42.101(b). Pursuant to Section 315(b), the one-year bar “shall not apply
`
`to a request for joinder under subsection (c).” See 35 U.S.C. §§ 315(b), 315(c); see
`
`also Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 4-
`
`5. Similarly, Rule 42.101(b), which provides that a petition for inter partes review
`
`may not be “filed more than one year after the date on which the petitioner…is
`
`served with a complaint alleging infringement of the patent,” “shall not apply,”
`
`pursuant to Rule 42.122(b), “when the petition is accompanied by a request for
`
`
`
`5
`
`
`
`Joinder.” See 37 C.F.R. §§ 42.101(b), 42.122(b); see also Microsoft Corp. v.
`
`Proxyconn, Inc., IPR2013-00109, Paper 15 (granting joinder beyond the one-year
`
`window). In any event, Cox was served with the Complaint in C-Cation Techs.,
`
`LLC v. ABB, Inc., et al., C.A. No. 15-295 (RGA) (D. Del.) on June 23, 2015 (Dkt.
`
`9) so the one-year time bar has not yet commenced.
`
`2.
`
`Joinder Will Not Introduce Any New Grounds of
`Patentability.
`
`Cox’s Petition is based only on the grounds on which the Board granted the
`
`
`
`ARRIS IPR, for which joinder is requested. Cox submits that C-Cation
`
`Technologies does not need to file a new Patent Owner’s Preliminary Response in
`
`this instance, because the invalidity grounds are identical to those grounds raised in
`
`the petition for the ARRIS IPR. C-Cation Technologies already submitted a Patent
`
`Owner’s Preliminary Response, which the Panel has already considered. See
`
`IPR2014-00635, Paper No. 16; cf. Motorola Mobility LLC v. Softview LLC,
`
`IPR2013-00256, Paper No. 8 (allowing a preliminary response limited to the points
`
`in the new petition which are different from the granted petition). Moreover, Cox
`
`has retained the same expert witness that submitted a declaration in the ARRIS IPR
`
`covering the same subject matter. There is nothing new for C-Cation Technologies
`
`to address in response to the Petition.
`
`3.
`
`Cox Agrees to Consolidated Filings and Subordination.
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`6
`
`
`
`
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`
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`Cox agrees to allow ARRIS to take the lead in all matters. Cox agrees to
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`work with ARRIS to submit consolidated filings, except for motions that do not
`
`involve the other party, although none are at this point anticipated.3 Cox will rely
`
`on ARRIS to take testimony and defend depositions of all witnesses, unless Arris
`
`wishes otherwise or until ARRIS terminates its involvement in the joined
`
`proceeding, and Cox will refrain from requesting or reserving any additional
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`deposition or oral hearing time. Cox is willing to agree to any other procedural
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`concessions that will minimize complication or delay and result in a speedy trial
`
`with little or no impact on the ARRIS IPR or the Board. In short, as long as
`
`ARRIS remains an active participant in the IPR, Cox will adopt an “understudy” or
`
`3 Cox proposes an arrangement similar to Motorola Mobility LLC v. Softview LLC,
`
`IPR2013-00257, Paper No. 10 at 8-10 and Twitter, Inc. and Yelp Inc. v.
`
`Evolutionary Intelligence, LLC, IPR2014-00812, Paper No. 12 at 4; IPR2014-
`
`00086, Paper No. 16 at 4, whereby Cox incorporates its filings with those of
`
`ARRIS in a consolidated filing. Any separate filing by Cox would be limited to no
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`more than seven pages directed only to points of disagreement with ARRIS. Cox
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`would not be permitted any arguments in furtherance of those advanced in
`
`ARRIS’s consolidated filing. C-Cation Technologies would be allowed a
`
`corresponding number of pages to respond separately to Cox’s filings. Cox also
`
`agrees to work with ARRIS to manage any depositions within ordinary time limits.
`
`
`
`7
`
`
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`“second chair” role, assuming the primary role only if ARRIS ceases to participate
`
`in the IPR. See, e.g., Mylan Pharmaceuticals Inc. v. Novartis AG et al., IPR2015-
`
`00268, Paper No. 17, p. 5.
`
`4.
`
`Joinder Will Not Impact the Board’s Ability to Complete
`the Review Within the One-Year Period.
`
`Joinder in this case will not impact the Board’s ability to complete its review
`
`
`
`in a timely manner. 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c) provide that
`
`inter partes review proceedings should be completed and the Board’s final
`
`decision issued within one year of institution of the review. The same provisions
`
`provide the Board with flexibility to extend the one-year period by up to six
`
`months for good cause, or in the case of joinder. Id. In this case, joinder should
`
`not affect the Board’s ability to issue its final determination within one year
`
`because Cox does not raise any issues that are not already before the Board.
`
`As discussed above, as long as ARRIS remains in the ARRIS IPR, Cox will
`
`coordinate its approach and filings with ARRIS. In the event that ARRIS settles,
`
`Cox will be well positioned to continue participating in this proceeding without
`
`any delay.
`
`The first deadline in the ARRIS IPR is C-Cation Technologies’ response to
`
`ARRIS’s petition (37 C.F.R. § 42.120) and any motion to amend the patent (37
`
`C.F.R. § 42.121). Pursuant to the Scheduling Order in the ARRIS IPR, this
`
`deadline is currently set for November 5, 2015 – over ten weeks from the date of
`8
`
`
`
`
`
`this motion. IPR2015-00635, Paper 20. Should the Board determine to grant
`
`Cox’s request for joinder, C-Cation Technologies will have ample time to
`
`complete its submissions by its deadline. Because Cox’s petition for inter partes
`
`review does not raise any new issues, C-Cation Technologies’ response would not
`
`require any analysis beyond what C-Cation Technologies is already required to
`
`undertake to respond to ARRIS’s petition.
`
`In view of the above, Cox submits that the current schedule in the ARRIS
`
`IPR can remain unchanged. At most, the Board could add a deadline for C-Cation
`
`Technologies to respond to this Petition if it felt a separate response was necessary,
`
`but this deadline should not impact any other deadline in the schedule.
`
`5.
`
`Joinder Will Streamline the Proceedings, Reduce the Costs
`and Burdens on the Parties, and Increase Efficiencies for
`the Board Without Prejudicing the Parties.
`
`As discussed above, the validity of the ’883 patent is squarely at issue in the
`
`
`
`Underlying Litigations and the ARRIS IPR. A final written decision on the
`
`validity of claims 1, 3, and 4 of the ’883 patent will simplify, minimize, or even
`
`entirely resolve, issues in the Underlying Litigations. If claims 1, 3, and 4 of the
`
`’883 patent are invalidated in a final decision, the Underlying Litigations are
`
`resolved. If the ’883 patent is upheld in a final decision, and the Board permits
`
`Cox to join the ARRIS IPR, Cox will be estopped from further challenging the
`
`validity of the patent on these grounds, avoiding duplication of C-Cation
`
`
`
`9
`
`
`
`Technologies’ efforts in the litigation against Cox. See 35 U.S.C. § 315(e)(1).
`
`Accordingly, regardless of the Board’s final decision, joinder simplifies the issues
`
`and avoids duplicate efforts and the possibility of inconsistencies.
`
`The possibility of settlement between C-Cation Technologies and ARRIS,
`
`and the resulting impact on Cox if the ARRIS IPR is terminated, likewise supports
`
`the conclusion that joinder is appropriate. 35 U.S.C. § 317(a) provides that an
`
`inter partes review “shall be terminated with respect to any petitioner upon the
`
`joint request of the petitioner and the patent owner” unless the Board has already
`
`reached its decision on the merits, and if no petitioner remains after settlement,
`
`“the Office may terminate the review.” Thus, if C-Cation Technologies were to
`
`reach a settlement with ARRIS, the ARRIS IPR may be terminated without
`
`proceeding to a final written decision. If this were to occur, Cox would have to
`
`reargue in its Petition or in C-Cation Techs., LLC v. Atlantic Broadband Group
`
`LLC, et al., C.A. No. 15-295 (RGA) (D. Del.), the exact same arguments on which
`
`the Board has already determined that ARRIS is reasonably likely to prevail. Cox
`
`would further have to raise arguments related to both claim construction and
`
`validity, increasing the burden for both Cox and C-Cation Technologies.
`
`Finally, permitting joinder will not prejudice the parties to the ARRIS IPR.
`
`Cox raises no issues that are not already before the Board, such that joinder would
`
`not affect the timing of the ARRIS IPR or the content of C-Cation Technologies’
`
`
`
`10
`
`
`
`response due on November 5, 2015. Moreover, as discussed above, Cox agrees to
`
`coordinate with ARRIS and, as such, ARRIS and C-Cation Technologies will not
`
`suffer any additional costs or burdens in preparing motions and arguments.
`
`Moreover, C-Cation Technologies will suffer no prejudice from joinder because
`
`the IPR proceedings will provide a relatively inexpensive full and fair opportunity
`
`to respond to the challenged claims in a venue that should proceed much more
`
`quickly than the litigation against Cox. See Sony Corp. v. Yissum Research
`
`Development Company of the Hebrew University of Jerusalem, IPR2013-00326,
`
`Paper 15 at 4.
`
`III. CONCLUSION
`
`For the foregoing reasons, Cox respectfully requests that its Petition for Inter
`
`Partes Review of U.S. Patent No. 5,563,883 be granted and that the proceedings be
`
`joined with pending IPR proceeding ARRIS Group, Inc. v. C-Cation Technologies,
`
`LLC, IPR2015-00635.
`
`Respectfully submitted,
`
`
`By: /s/ Mitchell G. Stockwell
`Mitchell G. Stockwell
`Registration No. 39,389
`Lead Counsel for Petitioner
`
`
`Lead Counsel
`Mitchell G. Stockwell
`Registration No. 39,389
`mstockwell@kilpatricktownsend.com
`
`
`
`
`
`Back-Up Counsel
`Michael J. Turton
`Registration No. 40,852
`mturton@kilpatricktownsend.com
`
`11
`
`
`
`
`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta , GA 30309-4528 USA
`Telephone: (404) 815-6500
`Fax: (404) 541-3403
`
`
`Postal and Hand-Delivery Address:
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta , GA 30309-4528 USA
`Telephone: (404) 815-6500
`Fax: (404) 541-3250
`
`
`
`12
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e) and 42.105(b), the undersigned certifies that
`
`on August 24, 2015 a copy of the MOTION FOR JOINDER was served upon the
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`Patent Owner via express mail at the following addresses:
`
`Alexander L. Cheng
`12 Hidden Glen Road
`Scarsdale, NY 10583
`
`Angelo Guglielmo
`150 Purchase Street
`Rye, NY 10580
`
`Lewis V. Popovski (Reg. No. 37,423)
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`David J. Kaplan (Reg. No. 57,117)
`David J. Cooperberg (Reg. No. 63,250)
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`lpopovski@kenyon.com
`jginsberg@kenyon.com
`djkaplan@kenyon.com
`dcooperberg@kenyon.com
`
`
`A copy of the MOTION FOR JOINDER was served upon the IPR2015-
`00635 Petitioner via express mail at the following addresses:
`
`Andrew R. Sommer (Reg. No.53,932)
`WINSTON & STRAWN LLP
`1700 K Street, N.W.
`Washington, DC 20006-3817
`Tel: (202) 282-5000
`Fax: (202) 282-5100
`asommer@winston.com
`
`
`
`
`
`
`
`
`
`
`Jonathan E. Retsky (Reg. No. 34,415)
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`Tel: (312) 558-3791
`Fax: (312) 558-5700
`jretsky@winston.com
`
`Dated: August 24, 2015
`
`
`
`By: /s/ Mitchell G. Stockwell
`Mitchell G. Stockwell
`Registration No. 39,389
`Counsel for Petitioner
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