Trials@uspto.gov Paper 16
`571-272-7822
` Date Entered: October 11, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PROTECTION ONE, INC.,
`Petitioner,
`v.
`MD SECURITY SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01235
`Patent 7,864,983 B2
`____________
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`571-272-7822
` Date Entered: October 11, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PROTECTION ONE, INC.,
`Petitioner,
`v.
`MD SECURITY SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01235
`Patent 7,864,983 B2
`____________
`
`Before SALLY C. MEDLEY, TRENTON A. WARD, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`IPR2016-01235
`Patent 7,864,983 B2
`
`
`
`
`
`I. INTRODUCTION
`Protection One, Inc. (“Petitioner” or “Protection One”) filed a Petition
`
`for inter partes review of claims 1–20 of U.S. Patent No. 7,864,983 B2 (Ex.
`1001, “the ’983 patent”). Paper 2 (“Pet.”). Concurrently with its Petition,
`Protection One filed a Motion for Joinder with RPX Corporation v. MD
`Security Systems, LLC, Case IPR2016-00285 (“the RPX IPR”), a case
`challenging the same claims of the ’983 patent on the same grounds as this
`matter. Paper 3 (“Mot.”). Protection One represents that Petitioner in the
`RPX IPR—RPX Corporation (“RPX”)—does not oppose the Motion for
`Joinder. Mot. 7. MD Security Systems, LLC (“Patent Owner”) did not file
`an opposition to Protection One’s Motion for Joinder after being given an
`opportunity to do so. See Paper 6. Patent Owner also did not file a
`Preliminary Response by the deadline set forth in Paper 6.
`For the reasons explained below, we institute inter partes review of
`
`claims 1–20 of the ’983 patent and grant Protection One’s Motion for
`Joinder.
`
`II. RELATED PROCEEDINGS
`In addition to the RPX IPR identified above, Petitioner and Patent
`Owner identify the following pending judicial matters as relating to the ’983
`patent: MD Security Solutions, LLC v. Bright House Networks, LLC, No.
`6:15-cv-00777 (M.D. Fl.), MD Security Solutions LLC v. CenturyTel
`Security Systems, Inc., No. 6:15-cv-01967 (M.D. Fl.), and MD Security
`Solutions LLC v. Protection 1, Inc., No. 6:15-cv-01968 (M.D. Fl.). Pet. 2–3;
`Paper 7, 1.
`In the RPX IPR, we instituted inter partes review of claims 1–20 of
`the ’983 patent on the following grounds:
`
`2
`
`
`
`
`IPR2016-01235
`Patent 7,864,983 B2
`
`
`References
`Milinusic1 and Osann2
`Milinusic, Osann, and Ozer3
`
`
`
`
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`1–8, 11, and 18–20
`9, 10, and 12–17
`
`
`RPX Corporation v. MD Security Systems, LLC, Case IPR2016-00285, slip
`op. at 20 (PTAB June 6, 2016) (Paper 9) (“the RPX Dec.”).
`III. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`
`unpatentability as those shown above on which we instituted review in the
`RPX IPR. Compare Pet. 13–38, with RPX Dec. 20. Indeed, the “Petition is
`substantively identical as to those grounds, and presents no new issues.”
`Mot. 3.
`
`For the same reasons set forth in our institution decision in the RPX
`IPR, we determine that the information presented in Protection One’s
`Petition shows a reasonable likelihood that Petitioner would prevail in
`showing (a) claims 1–8, 11, and 18–20 would have been obvious over
`Milinusic and Osann; and (b) claims 9, 10, and 12–17 would have been
`obvious over Milinusic, Osann, and Ozer. See RPX Dec. 10–19.
`Accordingly, we institute inter partes review on the same grounds as those
`on which we instituted review in the RPX IPR. We do not institute inter
`partes review on any other grounds.
`
`
`1 U.S. Patent No. 7,106,333 B1, issued September 12, 2006 (Ex. 1003)
`(“Milinusic”)
`2 U.S. Patent No. 7,253,732 B2, issued August 7, 2007 (Ex. 1004) (“Osann”)
`3 U.S. Patent Application Publication No. 2004/0120581 A1, published June
`24, 2004 (Ex. 1005) (“Ozer”).
`
`3
`
`
`
`
`
`
`IPR2016-01235
`Patent 7,864,983 B2
`
`
`
`III. GRANT OF MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`
`a filing date of July 5, 2016. See Paper 4. Thus, Petitioner’s Motion for
`Joinder is timely because joinder was requested no later than one month
`after the institution date of the RPX IPR, i.e., June 6, 2016. See 37 C.F.R.
`§ 42.122(b).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`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.
`
`A motion 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 Corp. v. Softview LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`As noted, the Petition in this case asserts the same invalidity grounds
`on which we instituted review in the RPX IPR. See Mot. 3. Protection One
`also relies on the same prior art analysis and expert testimony submitted by
`RPX. See id. at 4. Indeed, the Petition is nearly identical to the petition
`filed by RPX with respect to the grounds on which review was instituted in
`the RPX IPR. See id. at 3–4. Thus, this inter partes review does not present
`any ground or matter not already at issue in the RPX IPR.
`
`4
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`
`
`
`
`
`IPR2016-01235
`Patent 7,864,983 B2
`
`
`If joinder is granted, Protection One agrees to participate in an
`
`“‘understudy’ role” unless RPX ceases to participate. Mot. 4, 7. Protection
`One agrees to consolidate its filings with those of RPX, unless a filing solely
`concerns issues that do not involve RPX, not introduce argument or
`discovery not already introduced by RPX, to be bound by any agreement
`between Patent Owner and RPX concerning discovery or depositions, and
`not to receive any direct, cross or redirect time beyond that permitted for
`RPX. Id. at 7. Protection One concludes that, if joined, there will be only
`one set of briefing on the issues as opposed to briefing from both sets of
`Petitioners if that would result if the cases are not joined. Id.
`We agree with Petitioner that joinder with the RPX IPR is appropriate
`under the circumstances. Accordingly, we grant Petitioner’s Motion for
`Joinder.
`
`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that an inter partes review is instituted in IPR2016-
`01235;
`FURTHER ORDERED that the Motion for Joinder with IPR2016-
`00285 is granted, and Protection One, Inc. is joined as a petitioner in
`IPR2016-00285;
`FURTHER ORDERED that IPR2016-01235 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2016-
`00285;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2016-00285 remain unchanged;
`
`5
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`
`IPR2016-01235
`Patent 7,864,983 B2
`
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`
`Order in place for IPR2016-00285 (Paper 10) remains unchanged;
`FURTHER ORDERED that in IPR2016-00285, RPX and Protection
`One will file each paper, except for a motion that does not involve the other
`party, as a single, consolidated filing, subject to the page limits set forth in
`37 C.F.R. § 42.24, and shall identify each such filing as a consolidated
`filing;
`FURTHER ORDERED that for any consolidated filing, if Protection
`One wishes to file an additional paper to address points of disagreement with
`RPX, Protection One must request authorization from the Board to file a
`motion for additional pages, and no additional paper may be filed unless the
`Board grants such a motion;
`FURTHER ORDERED that RPX and Protection One shall
`collectively designate attorneys to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
`by RPX and Protection One, within the timeframes set forth in 37 C.F.R.
`§ 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that RPX and Protection One shall
`collectively designate attorneys to present a consolidated argument at the
`oral hearing, if requested and scheduled;
`FURTHER ORDERED that the case caption in IPR2016-00285 shall
`be changed to reflect joinder of Protection One as a petitioner in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-00285.
`
`
`6
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`
`
`IPR2016-01235
`Patent 7,864,983 B2
`
`FOR PETITIONER:
`
`Richard Giunta
`Daniel Wehner
`Randy Pritzker
`Rgiunta-PTAB@wolfgreenfield.com
`Dwehner-PTAB@wolfgreenfield.com
`Rpritzker-PTAB@wolfgreenfield.com
`
`
`
`FOR PATENT OWNER:
`
`Jason S. Angell
`FREITAS ANGELL & WEINBERG LLP
`jangell@fawlaw.com
`
`
`
`7
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION and
`PROTECTION ONE, INC.,
`Petitioner,
`v.
`MD SECURITY SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-002851
`Patent 7,864,983 B2
`____________
`
`
`
`
`1 Protection One, Inc., who filed a Petition in IPR2016-01235, has been
`joined as a party to the petitioner in this proceeding.
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