UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARRIS GROUP, Inc. Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`Inter Partes Review of U.S. Patent No. 5,915,210
`
`IPR Case No.: To Be Assigned
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.122(b)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARRIS GROUP, Inc. Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`Inter Partes Review of U.S. Patent No. 5,915,210
`
`IPR Case No.: To Be Assigned
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.122(b)
`
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`TABLE OF CONTENTS
`TABLE OF CONTENTS
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`I.
`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED ....................1
`STATEMENT OF THE PRECISE RELIEF REQUESTED ....................1
`
`II.
`II.
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`STATEMENT OF MATERIAL FACTS ....................................................2
`STATEMENT OF MATERIAL FACTS .................................................. ..2
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ..................6
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ..................6
`
`A. Joinder is appropriate because it will not impact the Board’s ability
`A.
`Joinder is appropriate because it will not impact the Board’s ability
`to complete the review in a timely manner. ....................................... 8
`to complete the review in a timely manner. .......................................8
`
`B. Joinder will promote efficiency by consolidating issues, avoiding
`B.
`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies. ............................. 9
`duplicate efforts, and preventing inconsistencies.............................. 9
`
`C. Joinder will not prejudice Mobile Telecommunications
`C.
`Joinder will not prejudice Mobile Telecommunications
`Technologies or Samsung.................................................................... 9
`
`Technologies or Samsung.................................................................... 9
`
`D. Without joinder, Petitioner may be prejudiced. .............................. 11
`D. Without joinder, Petitioner may be prejudiced............................... 11
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`IV. CONCLUSION ............................................................................................. 12
`IV. CONCLUSION ........................................................................................... .. 12
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`i
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-00385 ...................................7, 8
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`SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306 .................................................. 8
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`Sony Corp. of Am. and Hewlett-Packard Co. v. Network-1 Security
`Sols., Inc., IPR2013-00495 ................................................................................... 8
`
`Taiwan Semiconductor Mfg. Co. v. Zond, LLC, IPR2014-00781, -00782.................. 1
`
`Statutes
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`35 U.S.C. § 102(a) ................................................................................................ ...... 6
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`35 U.S.C. § 103 ........................................................................................................... 6
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`35 U.S.C. § 315(c) .........................................................................................1, 6, 7, 13
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`Regulations
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`37 C.F.R. § 42.22 ......................................................................................................1
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`37 C.F.R. § 42.122(b) ...........................................................................................1, 13
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`ii
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), petitioner
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`ARRIS Group, Inc. (“ARRIS” or “Petitioner”) respectfully requests that they be
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`joined as a party to the following pending inter partes review proceeding
`
`concerning the same patent at issue here, U.S. Patent No. 5,915,210 (“the ‘210
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`Patent”): Samsung Electronics Co., Ltd. v. Mobile Telecommunications
`
`Technologies, LLC, IPR2014-01724 (the “Samsung IPR”). Petitioners have
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`filed concurrently herewith a “Petition for Inter Partes Review of Claims 1, 7-8,
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`10, 15-17, and 19 of U.S. Patent No. 5,915,210,” in which they assert the same
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`grounds of invalidity as have been raised in the Samsung IPR. This Motion is
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`timely under 37 C.F.R. §§ 42.22 and 42.122(b) because it is being submitted
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`within 30 days of institution of the Samsung IPR. See Taiwan Semiconductor
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`Mfg. Co. v. Zond, LLC, IPR2014-00781, -00782, Paper 5 (May 29, 2014) at 3;
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`37 C.F.R. § 42.122(b).
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`Petitioners respectfully submit that joinder of these proceedings is
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`appropriate. Joinder will not impact the Board’s ability to complete its review in
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`the statutorily prescribed timeframe. Indeed, the invalidity grounds raised in this
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`IPR are identical to the invalidity grounds raised in the Samsung IPR.
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`Accordingly, joinder will ensure the Board’s efficient and consistent resolution of
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`the issues surrounding the invalidity of the ‘210 Patent. Moreover, joinder will
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`1
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`not prejudice the Samsung IPR parties because the scope and timing of the
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`Samsung IPR proceeding should remain the same. Finally, the Board can
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`implement procedures that are designed to minimize any impact to the schedule of
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`the Samsung IPR. For these reasons and the reasons outlined herein, joinder
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`should be granted.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
`
`On January 4, 2016 Mobile Telecommunications Technologies, LLC
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`(“M-Tel” or “Patent Owner”) filed a complaint against several Multiple System
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`Operators (MSOs) in the United States District Court for the Eastern District of
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`Texas alleging infringement of three expired U.S. patents alleged to cover various
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`Wi-Fi functionality, including the ‘210 Patent. See, e.g., Complaint for Mobile
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`Telecommunications Technologies, LLC v. Time Warner Cable Inc., 2:16-cv-
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`00007 (E.D. Tex.); Complaint for Mobile Telecommunications Technologies,
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`LLC v. Cox Communications, Inc., 2:16-cv-00010 (E.D. Tex.); Complaint for
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`Mobile Telecommunications Technologies, LLC v. Bright House Networks,
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`LLC., 2:16-cv-00008 (E.D. Tex.) at ¶¶ 11 and 27; (hereinafter, collectively
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`referred as “the Underlying Litigation”).
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`2.
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`In its Complaint, Mobile Telecommunications Technologies, LLC
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`purports to be the owner of the ‘210 Patent. See id.
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`2
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`3.
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`Several of the MSOs that were served with the complaint included
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`customers of Petitioner, such as Time Warner Cable Inc., Cox Communications,
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`Inc., Charter Communications, Inc., and Bright House Networks, LLC.
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`4.
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`In its Complaint against Time Warner Cable Inc., Patent Owner
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`alleges that that Time Warner Cable Inc. made used, sold, and offered to sell
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`wireless equipment and services that infringed the claims of the ‘210 Patent and
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`that ARRIS provided one or more pieces of said wireless equipment to Time
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`Warner Cable Inc. See Complaint for Mobile Telecommunications Technologies,
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`LLC v. Time Warner Cable Inc., 2:16-cv-00007 (E.D. Tex.) at ¶¶ 9, 13, 29, 68, and
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`70.
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`5.
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`In its Complaint against Cox Communications, Inc., Patent Owner
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`alleges that Cox Communications, Inc. made used, sold, and offered to sell
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`wireless equipment and services that infringed the claims of the ‘210 Patent and
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`that ARRIS provided one or more pieces of said wireless equipment to Cox
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`Communications,
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`Inc. See Complaint
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`for Mobile Telecommunications
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`Technologies, LLC v. Cox Communications, Inc., 2:16-cv-00010 (E.D. Tex.) at ¶¶
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`6, 9, 26, and 65-67.
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`6.
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`In its Complaint against Charter Communications Inc., Patent Owner
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`alleges that Charter Communications Inc. made used, sold, and offered to sell
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`wireless equipment and services that infringed the claims of the ‘210 Patent and
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`3
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`
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`that ARRIS provided one or more pieces of said wireless equipment to Charter
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`Communications Inc. See Complaint for Mobile Telecommunications Technologies,
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`LLC v. Charter Communications Inc., 2:16-cv-00009 (E.D. Tex.) at ¶¶ 6, 14, 24,
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`and 61-63.
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`7.
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`In its Complaint against Bright House Networks, LLC, Patent
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`Owner alleges that Cox Communications, Inc. made used, sold, and offered to sell
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`wireless equipment and services that infringed the claims of the ‘210 Patent and
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`that ARRIS provided one or more pieces of said wireless equipment to Bright
`
`House Networks, LLC. See Complaint
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`for Mobile Telecommunications
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`Technologies, LLC v. Bright House Networks, LLC, 2:16-cv-00008 (E.D. Tex.) at
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`¶¶ 8, 11, 27, and 66-68.
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`8.
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`On February 9, 2015 Mobile Telecommunications Technologies,
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`LLC (“M-Tel” or “Patent Owner”) filed a complaint against several
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`telecommunication operators in the United States District Court for the Eastern
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`District of Texas alleging infringement of six patents, including the ‘210 Patent.
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`See Mobile Telecommunications Technologies, LLC v. Samsung Electronics Co.,
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`Ltd., et al., Case No. 2:15-cv-183 (E.D. Tex.) (hereinafter, the “Samsung
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`Litigation”); Mobile Telecommunications Technologies, LLC v. T-Mobile USA,
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`Inc., et al., Case No. 2:13-cv-886-JRG- RSP
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`(E.D. Tex.); Mobile
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`Telecommunications Technologies, LLC v. Apple, Inc., Case No. 2-13-cv-258
`
`
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`4
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`
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`(E.D. Tex.); Mobile Telecommunications Technologies, LLC v. Leap Wireless
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`International,
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`Inc., Case No. 2-13-cv-885
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`(E.D. Tex.); and Mobile
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`Telecommunications Technologies, LLC v. AT&T Mobility LLC, et al., Case No.
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`2:14-cv-897 (E.D. Tex.).
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`9.
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`In its Complaint against Samsung Electronics Co., Ltd., Mobile
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`Telecommunications Technologies, LLC purports to be the owner of the ‘210
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`Patent. See Mobile Telecommunications Technologies, LLC v. Samsung
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`Electronics Co., Ltd., et al., Case No. 2:15-cv-183 (E.D. Tex.).
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`10. Samsung Electronics Co., Ltd. (“Samsung”) filed a petition for inter
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`partes review of the ‘210 Patent on August 13, 2015 (the “Samsung Petition”). See
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`IPR2015-01724, Paper 1 (August 13, 2015).
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`11. Patent Owner has asserted the ‘210 Patent against customers of
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`Petitioner in co-pending litigation in the United States District Court for the
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`Eastern District of Texas and has identified Petitioner as providing equipment
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`that allegedly infringes the ‘210 Patent. See, e.g., Complaint for Mobile
`
`Telecommunications Technologies, LLC v. Time Warner Cable Inc., 2:16-cv-
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`00007 (E.D. Tex.) at ¶¶ 9, 13, 29, 68, and 70.
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`12. The Petitioner’s Petition includes the following two grounds for
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`invalidity:
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`5
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`a.
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`Claims 1, 7, 10, 16, 17, and 19 are unpatentable under 35
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`U.S.C. § 102(a) as being anticipated by Saalfrank; and
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`b. Claims 8, 15, and 19 are unpatentable under 35 U.S.C. § 103(a)
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`as being obvious over Saalfrank in view of Nakamura.
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`13. The two invalidity grounds raised in Petitioners’ Petition filed in the
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`present IPR proceeding are identical to the two invalidity grounds raised in the
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`Samsung IPR Petition:
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`a. Claims 1, 7, 10, 16, 17, and 19 are unpatentable under 35
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`U.S.C. § 102(a) as being anticipated by Saalfrank; and
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`b. Claims 8, 15, and 19 are unpatentable under 35 U.S.C. § 103(a)
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`as being obvious over Saalfrank in view of Nakamura.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`Joinder of inter partes review proceedings is permitted under 35 U.S.C.
`
`§ 315(c), which provides:
`
`(c) JOINDER.--If the Director institutes an inter partes review, the
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`Director, in his or her discretion, may join as a party to that inter
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`partes review any person who properly files a petition under section
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`311 that the Director, after receiving a preliminary response under
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`section 313 or the expiration of the time for filing such a response,
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`determines warrants the institution of an inter partes review under
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`section 314.
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`6
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`35 U.S.C. § 315(c).
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`In deciding whether to allow joinder, the Board takes into account “the
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`particular facts of each case, substantive and procedural issues, and other
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`considerations,” while remaining “mindful that patent trial regulations, including
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`the rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” See Dell Inc. v. Network-1 Security Sols., Inc.,
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`IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. The Board also takes into
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`account “the policy preference for joining a party that does not present new issues
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`that might complicate or delay an existing proceeding.” Id. at 10 (citing 157
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`Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the basis of a petition, for example, a party that files an identical
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`petition will be joined to that proceeding, and thus allowed to file its own briefs
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`and make its own arguments.”)).
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`“A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted
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`in the petition; (3) explain what impact (if any) joinder would have on
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`the trial schedule for the existing review; and (4) address specifically
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`how briefing and discovery may be simplified.” Id. at 4. An analysis
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`of each of these issues supports joinder.
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`7
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`A.
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`Joinder is appropriate because it will not impact the
`Board’s ability to complete the review in a timely manner.
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`Joinder is appropriate because it will not impact the Board’s ability to
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`complete its review of the Samsung IPR within the statutorily prescribed
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`timeframe. First, this inter partes review proceeding does not raise any new
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`grounds of unpatentability over what has been asserted in the Samsung IPR.
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`Specifically, Petitioner asserts in its petition the same grounds of unpatentability
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`Samsung asserted in the Samsung IPR; Petitioner’s arguments regarding the
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`asserted references are identical to the arguments Samsung raised in the Samsung
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`IPR; and Petitioner has submitted, in support of its petition, the same declaration
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`of the technical expert that Samsung submitted in support of its petition. Thus,
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`this proceeding does not raise any new issues beyond those already before the
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`Board in Samsung IPR, and this weighs in favor of joinder. See, e.g., Dell Inc. v.
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`Network-1 Security Sols., Inc., IPR2013-00385, Paper 17 (July 29, 2013) at 7, 10
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`(granting joinder where unpatentability grounds identical and noting “policy
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`preference for joining a party that does not present new issues that might
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`complicate or delay an existing proceeding”); Sony Corp. of Am. and Hewlett-
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`Packard Co. v. Network-1 Security Sols., Inc., IPR2013-00495, Paper 13 (Sept.
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`16, 2013) at 5 (same); SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306, Paper
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`13 (May 19, 2014) at 4.
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`8
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`Petitioner merely requests an opportunity to join with the Samsung IPR as
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`an “understudy” to Samsung, only assuming an active role in the event Samsung
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`settles with Mobile Telecommunications Technologies. Thus, Petitioner does not
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`seek to alter the grounds upon which the Board has already found support in
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`instituting the Samsung IPR and joinder will have no impact on the existing
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`schedule in the Samsung IPR.
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`B.
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`Joinder will promote efficiency by consolidating issues,
`avoiding duplicate efforts, and preventing inconsistencies.
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`Further, joinder is appropriate because it will promote efficiency by
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`avoiding duplicative reviews and filings of the same invalidity issues across
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`multiple PTAB proceedings. Joinder will also eliminate any risk of
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`inconsistent results and piecemeal review. This also weighs in favor of joinder.
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`C. Joinder will not prejudice Mobile Telecommunications
`Technologies or Samsung.
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`Permitting
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`joinder will not prejudice Mobile Telecommunications
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`Technologies, LLC. or Samsung Electronics Co., Ltd. Petitioner’s proposed
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`grounds for instituting an IPR are identical to those proposed by Samsung in its
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`petition, and therefore, joinder will not impact the scope or timing of the Samsung
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`IPR. Petitioner and Samsung are relying on the same testimony of the same
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`technical expert to support their respective petitions, further avoiding any
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`potential delay.
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`9
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`Moreover, joinder is likely more convenient and efficient for Mobile
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`Telecommunications Technologies, LLC. because it will provide a single trial on
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`the ‘210 Patent. By allowing all grounds of invalidity to be addressed in a single
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`proceeding, the interests of all parties and the Board will be well served.
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`Further, briefing and discovery can be simplified to minimize any impact
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`on the participants and to streamline the filings for the Board. As long as
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`Samsung remains in the IPR, Petitioner agrees to remain in a circumscribed role
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`without a separate opportunity to actively participate. Thus, Petitioner will not
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`file additional written submissions, nor will they pose questions at depositions or
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`argue at oral hearing without the prior permission of Samsung. Only in the event
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`that Samsung settles will Petitioner seek to become active in the IPR. If Samsung
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`settles, Petitioner can assume the “first chair” role, with its role dictated
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`according to the same rules that govern Samsung’s current first chair role.
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`As Petitioner will assume a passive role, Samsung will not be required to
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`cooperate with Petitioner. Thus, Samsung will not suffer further cost or burden in
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`preparing motions and arguments.
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`Mobile Telecommunications Technologies is already defending its patent
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`against the same arguments as presented in Petitioner’s Petition. As Petitioner
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`will assume a passive role, Mobile Telecommunications Technologies will not
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`have to address additional pages of arguments if Petitioner is joined.
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`10
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`
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`Mobile Telecommunications Technologies will have to consider the
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`presence of an additional party to the IPR in weighing settlement of the IPR
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`proceeding. Regardless of whether Petitioner is joined, a majority of the accused
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`infringers of the ‘210 Patent will remain excluded from the IPR by their own
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`choice.
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`For these reasons, joinder will not prejudice any party, but rather will
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`promote the just, speedy, and inexpensive resolution of these proceedings
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`involving the ‘210 Patent.
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`D. Without joinder, Petitioner may be prejudiced.
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`Petitioner would be prejudiced if they are not permitted to join and
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`participate in the Samsung IPR, impacting not only Petitioner’s pending inter
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`partes review petition, but also the Underlying Litigation in which the
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`Petitioner’s products are named directly. Any decision in the Samsung IPR
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`will likely simplify, or even resolve, the issues in the Underlying Litigation.
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`Joinder is necessary to allow Petitioner to protect its interests with respect to
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`matters that are at issue in both the inter partes review proceedings and the
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`Underlying Litigation (where validity of the ‘210 Patent would have to be
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`litigated at a higher burden of proof).
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`11
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that its
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`Petition for Inter Partes Review of U.S. Patent No. 5,915,210 be instituted and
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`that this proceeding be joined with Samsung Electronics Co., Ltd. v. Mobile
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`Telecommunications Technologies, LLC, IPR2014-01724.
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`Although Petitioner believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees that may be
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`required for this Motion to Deposit Account No. 20-0778.
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`Dated: March 16, 2016
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`Respectfully submitted,
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` /Charles W. Griggers/
`
`Charles W. Griggers
`Registration No. 47,283
`Thomas | Horstemeyer, LLP
`400 N. Interstate Pkwy, Suite 1500
`Atlanta, GA 30339
`(770) 933-9500 (telephone) (770)
`951-0933 (fax)
`charles.griggers@thomashorstemeyer.com (email)
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`12
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