UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`ARRIS GROUP, INC.,
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-00765
`Patent 5,915,210
`
`____________
`
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S RESPONSE IN OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`ARRIS GROUP, INC.,
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-00765
`Patent 5,915,210
`
`____________
`
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S RESPONSE IN OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`II.
`III. ARGUMENT ................................................................................................... 3
`A.
`Patent Owner Punished For Focusing On Settlement ........................... 3
`B. ARRIS And Aruba Have Not Agreed To Consolidate Filings ............. 6
`C. Motion Filed Only To Prevent Termination Of Samsung IPR ............. 6
`D.
`Patent Owner Prejudiced by ARRIS’s Delay........................................ 8
`E.
`Bad Policy - Legal Extortion ............................................................... 10
`F.
`Joinder Should Be Denied Because It Creates An Impossible
`Scheduling Conflict ............................................................................. 11
`IV. CONCLUSION .............................................................................................. 13
`
`
`
`i
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner, Mobile Telecommunications Technologies, LLC, (“Patent
`
`Owner”) files this Response in Opposition to Petitioner ARRIS Group, Inc.’s
`
`(“ARRIS”) motion (the “ARRIS Motion”) to join this IPR proceeding, No.
`
`IPR2016-00765 (the “ARRIS IPR”) with the pending inter partes review in
`
`IPR2014-01724 (the “Samsung IPR”), filed by Samsung Electronics Co., Ltd.
`
`(“Samsung”), involving U.S. Patent No. 5, 915,210 (“the ’210 Patent”). In short,
`
`granting joinder in this case would unduly burden the Patent Owner, because in the
`
`time period between institution of the Samsung IPR and the due date of the Patent
`
`Owner’s Response, the Patent Owner and Samsung have in good faith sought and
`
`achieved settlement. As a result, if the ARRIS motion is granted the Patent Owner
`
`will be prejudiced in that it will have much less time to depose ARRIS’s expert and
`
`prepare its own expert declaration and response. In addition, Aruba Networks,
`
`Inc., Hewlett Packard Enterprise Company, and HP Inc. (“Aruba”) has also filed a
`
`motion (the “Aruba Motion”) to join IPR proceeding, No. IPR2016-00769 (the
`
`“Aruba IPR”) with the Samsung IPR. As a result, if the Aruba motion is also
`
`granted the Patent Owner will further be prejudiced in that it will have to
`
`coordinate with two parties in a shortened time period.
`
`1
`
`
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1. On February 16, 2016, the Samsung IPR was instituted. See Paper 9 of the
`
`Samsung IPR.
`
`2. In the Samsung IPR, Patent Owner’s Response was scheduled for May 18,
`
`2016. See Paper 12 of the Samsung IPR.
`
`3. The co-pending district court case trial between the Patent Owner and
`
`Samsung involving the ’210 Patent was scheduled to begin before May 18, 2016.
`
`4. On March 16, 2016, ARRIS filed the petition of the ARRIS IPR and the
`
`ARRIS Motion.
`
`5. On April 11, 2016, the Patent Owner and Samsung settled their dispute
`
`regarding the ’210 Patent.
`
`6. On April 12, 2016, the Patent Owner and Samsung requested permission
`
`to file a joint motion to terminate the Samsung IPR.
`
`7. On April 13, 2016, the Patent Owner and Samsung filed a joint stipulation
`
`of due dates moving the due date of Patent Owner’s response to June 18, 2016 and
`
`Petitioner’s reply to September 10, 2016.
`
`8. On April 13, 2016, Patent Owner and Samsung received permission to file
`
`a joint motion to terminate the Samsung IPR.
`
`9. On April 14, 2016, Patent Owner and Samsung filed a joint motion to
`
`terminate the Samsung IPR.
`
`
`
`2
`
`
`
`
`III. ARGUMENT
`
`Patent Owner opposes the ARRIS motion as follows.
`
`A.
`
`Patent Owner Punished For Focusing On Settlement
`
`As described above, if the ARRIS Motion is granted the Patent Owner will
`
`be prejudiced in that it will have much less time to depose ARRIS’s expert and
`
`prepare its own expert declaration and response. In other words, if the ARRIS
`
`Motion is granted, the Patent Owner will be punished for focusing on seeking and
`
`achieving settlement with Samsung in the Samsung IPR.
`
`On February 16, 2016, the Samsung IPR was instituted. See Paper 9 of the
`
`Samsung IPR. In general, an IPR proceeding regarding a patent is instituted to
`
`affect: (1) the public’s interest in this patent; (2) the resolution of disputes
`
`involving the patent in other jurisdictions; or (3) the construction of claim terms of
`
`the patent.
`
`In the Samsung IPR, Patent Owner’s Response was scheduled for May 18,
`
`2016. See Paper 12 of the Samsung IPR. Because the co-pending district court
`
`case trial between the Patent Owner and Samsung involving the ’210 Patent was
`
`scheduled to begin before May 18, 2016, the district court case was going to
`
`resolve the three factors mentioned above long before the Samsung IPR. As a
`
`result, the Patent Owner and Samsung focused on settling the Samsung IPR.
`
`
`
`3
`
`
`
`
`
`Indeed, on April 12, 2016, the Patent Owner and Samsung requested
`
`permission to file a joint motion to terminate the Samsung IPR. On April 13,
`
`2016, Patent Owner and Samsung received permission to file a joint motion to
`
`terminate the Samsung IPR. Finally, on April 14, 2016, Patent Owner and
`
`Samsung filed a joint motion to terminate the Samsung IPR.
`
`By focusing on settlement, Patent Owner and Samsung did not schedule the
`
`deposition of Samsung’s expert, and Patent Owner did not prepare its own expert
`
`declaration and response. Patent Owner and Samsung, however, did, on April 13,
`
`2016, file a joint stipulation of due dates moving the due date of Patent Owner’s
`
`response to June 18, 2016 and Petitioner’s reply to September 10, 2016. This
`
`movement of due dates was to allow time for the settlement to be finalized and the
`
`termination motion to be granted.
`
`If the ARRIS Motion is granted, the Patent Owner will therefore have lost
`
`significant time for deposing ARRIS’s expert and preparing its own expert
`
`declaration and response. Further, if the ARRIS Motion is granted, the Aruba
`
`Motion is likely to be granted also. As a result, Patent Owner will further be
`
`burdened with coordinating with two separate parties on discovery within a
`
`shortened time frame.
`
`In IPR2015-00568, joinder to an earlier filed IPR was granted even after the
`
`parties to the earlier filed IPR had filed Joint Motions to Terminate. The instant
`
`
`
`4
`
`
`
`
`case, however, is distinguishable from that case in that two motions for joinder are
`
`filed in the instant case versus one motion in that case. In IPR2015-00568, it was
`
`found that coordination among Petitioner parties was unlikely to disrupt the set
`
`schedule, because only one Petitioner party remained. See IPR2015-00568, Paper
`
`12 at page 5. In the instant case, if joinder is granted in both the ARRIS Motion
`
`and the Aruba Motion, two new Petitioner parties will remain. In addition, in
`
`IPR2015-00568, the Motion to Terminate the preceding IPR was not filed until
`
`almost one month after the Patent Owner’s Opposition to the Motion for Joinder
`
`was filed. In the instant case, the Motion to Terminate in the Samsung IPR has
`
`already been filed.
`
`It is true that the Patent Owner has been aware of the ARRIS Motion and the
`
`Aruba Motion since March 16, 20016, and did not file this Opposition until the
`
`deadline one month later. The Patent Owner’s delay, however, was entirely
`
`necessary to affect settlement with Samsung. The Patent Owner could not disclose
`
`settlement in an opposition until settlement was agreed to.
`
`In summary, the ARRIS Motion should be denied, because the Patent Owner
`
`will be unduly burdened with a shorter time period for discovery and response
`
`preparation with joinder.
`
`
`
`5
`
`
`
`
`
`B. ARRIS And Aruba Have Not Agreed To Consolidate Filings
`
`In the ARRIS Motion, ARRIS has agreed to participate as an “understudy”
`
`to Samsung in the Samsung IPR. ARRIS Motion, Paper 5 at page 9. Similarly, in
`
`the Aruba Motion, Aruba has agreed to designate a single attorney to work on
`
`behalf of Aruba and Samsung in the Samsung IPR. Aruba Motion, Paper 3 at page
`
`8. However, Samsung has withdrawn from the IPR, and neither the ARRIS
`
`Motion nor the Aruba Motion describe or contemplate working with anyone other
`
`than Samsung.
`
`In IPR2015-00550, the failure to obtain agreement to consolidate filings
`
`among Petitioner parties was one reason for denying joinder. See IPR2015-00550,
`
`Paper 11 at page 6.
`
`In summary, the ARRIS Motion should be denied, because ARRIS has not
`
`received agreement from all potential Petitioner parties of the Samsung IPR to
`
`consolidate filings.
`
`C. Motion Filed Only To Prevent Termination Of Samsung IPR
`
`The ARRIS Motion and the Aruba Motion were filed simply to prevent the
`
`Samsung IPR from terminating. Preventing the Samsung IPR from terminating
`
`places ARRIS and Aruba in a better bargaining position in their disputes with the
`
`Patent Owner. Placing ARRIS and Aruba in a better bargaining position
`
`prejudices the Patent Owner.
`
`
`
`6
`
`
`
`
`
`In the ARRIS Motion, ARRIS describes that “Mobile Telecommunications
`
`Technologies will have to consider the presence of an additional party to the IPR in
`
`weighing settlement of the IPR proceeding.” ARRIS Motion, Paper 5 at page 11.
`
`Further ARRIS “requests an opportunity to join with the Samsung IPR as an
`
`‘understudy’ to Samsung, only assuming an active role in the event Samsung
`
`settles with Mobile Telecommunications Technologies.” Id. at page 9. In both
`
`passages, ARRIS reveals its objective of preventing the Samsung IPR from
`
`terminating in order to place itself in a better bargaining position.
`
`Similarly, in the Aruba Motion, Aruba declares that “Petitioners are filing
`
`this petition and joinder motion to ensure that the instituted trial is completed in the
`
`event that the petitioner in the Samsung IPR reaches a settlement with the Patent
`
`Owner.” Aruba Motion, Paper 3 at page 1. Aruba cannot be clearer. Its main
`
`objective is to prevent the Samsung IPR from terminating.
`
`As described above, as a matter of public policy, an IPR proceeding
`
`regarding a patent is instituted to affect: (1) the public’s interest in this patent; (2)
`
`the resolution of disputes involving the patent in other jurisdictions; or (3) the
`
`construction of claim terms of the patent. ARRIS and Aruba have almost openly
`
`described that they seek joinder mainly to improve their bargaining position with
`
`the Patent Owner. Although an objective of an IPR is to help resolve a dispute
`
`
`
`7
`
`
`
`
`about a particular patent, it is not to prejudice one side in that dispute in order to
`
`bring about resolution.
`
`In summary, the ARRIS Motion should be denied, because ARRIS’s
`
`purpose for joinder is simply to prevent the Samsung IPR from terminating thereby
`
`placing itself in a better bargaining position and prejudicing the Patent Owner.
`
`D.
`
`Patent Owner Prejudiced by ARRIS’s Delay
`
`The Patent Owner is prejudiced by ARRIS’s delay in filing the ARRIS
`
`Motion. ARRIS admits in the ARRIS Motion that it was aware of the complaints
`
`filed January 4, 2016 against Multiple System Operators (MSOs) using its
`
`equipment. ARRIS Motion, Paper 5 at page 2. ARRIS also admits that
`
`“Petitioner’s arguments regarding the asserted references are identical to the
`
`arguments Samsung raised in the Samsung IPR.” Id. at page 8. However, ARRIS
`
`waited until the last possible day, March 16, 2016 and exactly one month after the
`
`Samsung IPR was instituted, to file the ARRIS Motion. ARRIS provides no
`
`explanation for its delay.
`
`In IPR2015-00271, joinder was denied when the “Petitioner utilized all of its
`
`available time under the statute and filed its request for joinder on the last possible
`
`day (i.e., one month after the institution date of the inter partes review for which
`
`joinder is requested).” See IPR2015-00271, Paper 15 at page 8. The Board found
`
`that the Petitioner did not provide a compelling reason why the “Petitioner did not
`8
`
`
`
`
`
`
`seek to immediately pursue similar grounds of unpatentability after the ’635 IPR
`
`was instituted.” Id.
`
`As just mentioned, ARRIS provides no explanation for its delay in filing the
`
`ARRIS motion. Clearly such a delay prejudices the Patent Owner by impacting
`
`the schedule and introducing uncertainty at the last possible moment. Also,
`
`ARRIS cannot claim that the delay was due to the time needed to draft the Petition.
`
`ARRIS admits that its “arguments regarding the asserted references are identical to
`
`the arguments Samsung raised in the Samsung IPR.” ARRIS Motion, Paper 5 at
`
`page 8. In other words, ARRIS simply copied the petition of the Samsung IPR and
`
`cites to the same expert declaration. Copying a petition does not require one
`
`month.
`
`In addition, on April 15, 2016, just three days before the due date of this
`
`opposition, counsel for ARRIS and Aruba requested a conference call with the
`
`Board to seek authorization to file a motion for expedited action regarding the
`
`ARRIS Motion and the Aruba Motion. This is almost an entire month after filing
`
`the ARRIS Motion and the Aruba Motion. Both ARRIS and Aruba took the
`
`maximum time for themselves, and the minimal possible time for Patent Owner to
`
`react, and now seek to even further limit Patent Owner’s time to respond. Again,
`
`they provide no explanation for their delay in making this request.
`
`
`
`9
`
`
`
`
`
`In summary, the ARRIS Motion should be denied, because ARRIS delayed
`
`filing the ARRIS Motion until the last possible moment and provided no
`
`explanation for the delay. Further ARRIS has continued this pattern of waiting
`
`until the last possible moment and then asking for expedited action on the ARRIS
`
`Motion.
`
`E.
`
`Bad Policy - Legal Extortion
`
`ARRIS simply copied a Petition and filed it to prevent an IPR from
`
`terminating to improve settlement for itself. Granting joinder under such
`
`circumstances sets a bad precedent and is bad policy.
`
`As described above, ARRIS admits that its “arguments regarding the
`
`asserted references are identical to the arguments Samsung raised in the Samsung
`
`IPR.” ARRIS Motion, Paper 5 at page 8. In other words, ARRIS simply copied
`
`the petition of the Samsung IPR.
`
`Also, as described above, ARRIS provides that “Mobile
`
`Telecommunications Technologies will have to consider the presence of an
`
`additional party to the IPR in weighing settlement of the IPR proceeding.” ARRIS
`
`Motion, Paper 5 at page 11. Further ARRIS “requests an opportunity to join with
`
`the Samsung IPR as an ‘understudy’ to Samsung, only assuming an active role in
`
`the event Samsung settles with Mobile Telecommunications Technologies.” Id. at
`
`
`
`10
`
`
`
`
`page 9. In both passages, ARRIS reveals its objective of preventing the Samsung
`
`IPR from terminating in order to place itself in a better bargaining position.
`
`Granting joinder in this case sets a bad precedent and is bad policy, because
`
`it alerts any party to the fact that it can extort money from a Patent Owner by
`
`simply looking for IPRs likely to settle. All that party needs to do is file the copied
`
`petition and a motion for joinder. Very little work is involved. It is a form of legal
`
`extortion and it may actually be a profitable business for an “IPR troll.” Granting
`
`joinder in this case would simply validate such a business.
`
`In summary, the ARRIS Motion should be denied, because it validates the
`
`bad policy of allowing a party to extort money from a Patent Owner by simply
`
`copying a petition and filing a motion for joinder.
`
`F.
`
`Joinder Should Be Denied Because It Creates An Impossible
`Scheduling Conflict
`
`Joinder would make it impossible for the Board to complete the Samsung
`
`IPR within the statutory limit. This Opposition has been filed on April 16, 2016.
`
`ARRIS’s reply to this Opposition is due May 16, 2016, assuming the Board spends
`
`at least some time on deciding institution, the Board will be able to decide joinder
`
`just before Patent Owner’s response is due on June 18, 2016. The Board will
`
`likely have already acted upon the Motion to Terminate in the Samsung IPR by
`
`
`
`11
`
`
`
`
`then. Therefore, realistically, joinder is either extremely prejudicial to the Patent
`
`Owner or infeasible under the instituted schedule.
`
`Notably, ARRIS does not even suggest a modified schedule to show how
`
`joinder could be accomplished. Sony, IPR2013-00386, Paper 16 at 9 (denying
`
`joinder because petitioner failed to “explain in detail what procedures should be
`
`followed or how such procedures would minimize the impact on the current
`
`schedule”); Samsung, IPR2014-01142, Paper 11 at 5 (denying joinder because the
`
`petitioner did not suggest any specific changes to the schedule in the instituted
`
`petition other than suggesting that it would have seven additional pages for papers
`
`filed).
`
`It is almost impossible to imagine how the Board might modify the schedule,
`
`since the Samsung IPR is likely to be terminated before the joinder decision is
`
`made. However, if the Samsung IPR is not terminated and joinder is granted, the
`
`Patent Owner suggests resetting the dates of the Samsung IPR so that the Patent
`
`Owner is allowed a full three months for discovery and for preparation of its
`
`response. In order to maintain the schedule of the Samsung IPR, the Patent Owner
`
`suggests removing the additional time needed from ARRIS’s time for their reply.
`
`For example, if joinder is granted by April 30, Patent Owner requests that Due
`
`Date 1 be reset to July 30 and that Dates 2 and 3 remain as September 10, 2016.
`
`
`
`12
`
`
`
`
`
`This is only fair since, as described above, ARRIS has caused a delay of at
`
`least 2 months by waiting to file the ARRIS Motion and by waiting almost an
`
`entire month to request that the ARRIS Motion be expedited. Further, when T-
`
`Mobile was joined to IPR2014-01036, which was also directed to the ’210 Patent,
`
`the Board gave the Patent Owner an additional month for its response and deducted
`
`one month from the Petitioner’s reply. See Papers 10 and 11 of IPR2014-01036.
`
`In summary, the ARRIS Motion should be denied, because it creates an
`
`impossible scheduling conflict.
`
`IV. CONCLUSION
`
`In light of the facts of the instant case and the analysis presented here,
`
`joinder is not appropriate. Patent Owner therefore respectfully requests that the
`
`ARRIS Motion be denied.
`
`Date: April 18, 2016
`
`
`Customer No. 67050
`
`
`
`Respectfully submitted,
`
`/John R. Kasha/___________________
`John R. Kasha, Lead Counsel
`Registration No. 53,100
`Attorney for Patent Owner
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`13
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 1.550(f), a copy of Patent Owner’s Response
`
`in Opposition
`
`to Petitioner’s Motion
`
`for
`
`Joinder
`
`filed by Mobile
`
`Telecommunications Technologies, LLC on April 18, 2016 was duly served via
`
`electronic mail upon charles.griggers@thomashorstemeyer.com (Charles Griggers)
`
`and dan.gresham@thomashorstemeyer.com (Dan Gresham) - counsel of record for
`
`ARRIS Group, Inc. (“Petitioner”).
`
`
`
`
`
`Respectfully submitted,
`/John R. Kasha/
`Registration No. 53,100
`Attorney for Patent Owner
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`14
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