UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
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`ARRIS GROUP, INC.,
`
`Petitioner,
`
`v.
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`
`Patent Owner
`
`
`
`Case IPR2016-00766 (Patent 5,659,891)
`
`
`
`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
`
`
`
`Case IPR2016-00766 (Patent 5,659,891)
`
`
`
`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
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED ....................1
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`II.
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`STATEMENT OF MATERIAL FACTS ....................................................3
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ..................4
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`A.
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`B.
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`Joinder is appropriate because it will not impact the Board’s
`ability to complete the review in a timely manner............................. 5
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`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies. ............................. 6
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`C. Joinder will not prejudice any party.................................................... 6
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`D. Procedures to simplify briefing and discovery.................................. 7
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`IV. CONCLUSION ..............................................................................................9
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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 .................................4, 5
`
`SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306 ................................................ 6
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`Sony Corp. of Am. and Hewlett-Packard Co. v. Network-1 Security
`Sols., Inc., IPR2013-00495 ................................................................................. 6
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`Taiwan Semiconductor Mfg. Co. v. Zond, LLC, IPR2014-00781, -00782................ 1
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`Statutes
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`35 U.S.C. § 315(c) .................................................................................................1, 4
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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
`
`ii
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`
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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 it be
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`joined as a party to the following pending inter partes review proceeding
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`concerning the same patent at issue here, U.S. Patent No. 5,659,891 (“the ‘891
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`Patent”): Aruba Networks, Inc., Hewlett Packard Enterprise Company, and HP,
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`Inc., IPR2016-00768 (the “Aruba IPR”). This Motion is timely under 37 C.F.R.
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`§§ 42.22 and 42.122(b) because it is being submitted within 30 days of
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`institution of both cases. See Taiwan Semiconductor Mfg. Co. v. Zond, LLC,
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`IPR2014-00781, -00782, Paper 5 (May 29, 2014) at 3; 37 C.F.R. § 42.122(b).
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`The petitions in both cases were filed on the same date, use the same
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`expert declaration, and assert the same grounds of invalidity. The Board
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`likewise instituted both cases on the same date, and set the same schedule for
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`both cases. The Board also recognized that “the issues are the same in both
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`cases,” and exercised its discretion to enter the same Institution Decision and
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`Scheduling Order in both cases. See Paper 14 at 1; paper 15 at 1.
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`
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`Because the invalidity grounds raised in both cases are identical, joining the
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`two cases will streamline the proceedings for all parties involved. Joinder will not
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`impact the Board’s ability to complete its review in the statutorily prescribed
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`1
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`timeframe. Accordingly, joinder will ensure the Board’s efficient and consistent
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`resolution of the issues surrounding the invalidity of the ‘891 Patent.
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`ARRIS has informed counsel for the parties to the Aruba IPR of its intent to
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`seek joinder. The Aruba petitioners agree to joinder, and recognize that joinder
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`will streamline the cases for all parties. The Patent Owner has not given its
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`consent to this joinder request at the present time.1
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`1
`Patent Owner’s consent was originally indicated to be contingent upon more
`than 7 hours of deposition time. In particular, Patent Owner indicated that it
`opposed joinder on the basis it would reduce the amount of deposition time of
`Petitioners’ expert from 14 hours (across two cases) to 7. However, this case
`involves just 1 base reference and 5 claims. Under these circumstances, a
`deposition of more than 7 hours on the same expert declaration is unnecessary and
`a waste of resources, and would likely exceed the proper scope of the deposition.
`Indeed, the expert declaration in this proceeding is exactly the same as the expert
`declaration in the proceeding to which ARRIS seeks to be joined. Further,
`Petitioners' total deposition time would be similarly reduced from 14 hours per
`declarant to 7 if the proceedings are joined. Given the limited scope of depositions
`in the PTAB and the limited scope of this case, 7 hours per declarant is more than
`sufficient.
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`Patent Owner’s consent was subsequently indicated to be contingent upon
`the Petitioners waiving reliance on declarants in support of its reply (which
`Petitioners cannot do since they have not seen Patent Owner’s response).
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`2
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`II.
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`STATEMENT OF MATERIAL FACTS
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`A. On March 16, 2016, ARRIS filed its Petition (“the ARRIS Petition”)
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`to institute an inter partes review of claims 1-5 of U.S. Patent No. 5,659,891 (“the
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`’891 patent”). Paper 1 (“Pet.”).
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`B.
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`Concurrently with the filing of the ARRIS Petition, Petitioners Aruba
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`Networks, Inc., Hewlett Packard Enterprise Company, and HP, Inc. (collectively,
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`“the Aruba petitioners”), filed a nearly identical Petition (“the Aruba Petition”) to
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`institute an inter partes review of claims 1-5 of the ’891 patent.
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`C.
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`Both the ARRIS Petition and the Aruba Petition challenge the
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`patentability of claims 1–5 of the ’891 patent on identical grounds and rely upon
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`the same expert declaration. Pet. 1.
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`D.
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`In response to both the ARRIS Petition and the Aruba Petition, Patent
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`Owner Mobile Telecommunications Technologies, LLC (“Patent Owner”), filed a
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`substantially identical Preliminary Response in both proceedings. Paper 13
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`(“Prelim. Resp.”).
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`E.
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`On September 21, 2016, the Board entered the same Decision in both
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`proceedings, instituting inter partes review of the ’891 patent as to all the
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`challenged claims on the following grounds:
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`
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`1. Claims 1–5 as anticipated by Petrovic;
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`2. Claim 5 as obvious over Petrovic, Raith, and Alakija.
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`3
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`Paper 14.
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`F.
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`On September 21, 2016, the Board exercised its discretion to issue
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`
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`one Scheduling Order, to be filed in each proceeding. Paper 15.
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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.
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`§315(c), which provides:
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`(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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`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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`4
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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 in the petition;
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`(3) explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified.” Id. at 4. An analysis of each of these issues supports joinder.
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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, as the Board acknowledged in entering the
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`Decision (Paper 14) and Scheduling Order (Paper 15), both cases involve the
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`same issues and are subject to the same schedule. Both cases assert the same
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`grounds of unpatentability, advance identical arguments, and rely on the same
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`technical expert declaration. Thus, joinder is appropriate. 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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`5
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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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`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 two
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`cases. Joinder will also eliminate any risk of inconsistent results and piecemeal
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`review. This also weighs in favor of joinder.
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`C. Joinder will not prejudice any party.
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`Counsel for ARRIS has spoken with counsel for the Aruba petitioners, and
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`has confirmed that the Aruba petitioners do not object to joinder.
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`Also, permitting joinder will not prejudice the Patent Owner. As
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`acknowledged by the Board, the issues are the same in each proceeding, and both
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`cases are subject to the same schedule. Therefore, joinder will not impact the
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`scope or timing of the cases. ARRIS and the Aruba petitioners are both relying on
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`the same testimony of the same technical expert to support their identical asserted
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`grounds for unpatentability, further avoiding any potential delay. Joinder is
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`therefore more convenient and efficient for the Patent Owner and the Board
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`because it will provide a single trial on the ‘891 Patent.
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`6
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`D. Procedures to simplify briefing and discovery.
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`Given that ARRIS will be addressing identical grounds for identical claims,
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`the Board may adopt procedures similar to those adopted in IPR2013-00256 and
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`IPR2013-00385. In those cases, the Board ordered the petitioners to file
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`consolidated filings, for which the first set of petitioners (here, Aruba) were
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`responsible, and allowed the new petitioner (here, ARRIS) to file separate filings,
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`if any, of no more than seven pages directed only to points of disagreement with
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`the other petitioners. IPR2013-00385, Pap. 17 at 8; IPR2013-00256, Pap. 10 at 8-
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`9. The Board also allowed the Patent Owner a corresponding number of pages to
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`respond to any separate filings. Id. The Board recognized that this procedure
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`would minimize any complication or delay caused by joinder, while providing the
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`parties an opportunity to address all issues that may arise. ARRIS agrees to such
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`procedures in the present case.
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`In addition, ARRIS agrees to coordinate and work together with Aruba to
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`manage the time normally allotted and to avoid redundancy. See IPR2013-00385,
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`Paper 17 at 9; IPR2013-00256, Paper 10 at 9-10. Furthermore, ARRIS agrees that
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`Aruba will be permitted to ask questions before ARRIS at any deposition and
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`present argument before ARRIS at any oral argument if Aruba so chooses. See
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`IPR2013-00385, Paper 17 at 9. Further, if the parties are unable to reach
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`agreement, ARRIS will request a conference call. Id. Consequently, these
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`7
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`procedures will help minimize any prejudice or burden on the parties based on
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`joinder.
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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 ‘891 Patent.
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`8
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`IV. CONCLUSION
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`For the foregoing reasons, ARRIS respectfully requests that Case
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`IPR2016-00766 be joined with Case IPR2016-00768.
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`Although ARRIS 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: October 21, 2016
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`Respectfully submitted,
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`
`
` /Dan R. Gresham/
`Dan R. Gresham
`Registration No. 41,805
`Thomas | Horstemeyer, LLP
`400 N. Interstate Pkwy, Suite 1500
`Atlanta, GA 30339
`(770) 933-9500 (telephone)
`(770) 951-0933 (fax)
`dan.gresham@thomashorstemeyer.com(email)
`
`
`
`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)
`
`9
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Motion for Joinder Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) was
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`served on October 21, 2016, via electronic mail, per agreement of the parties, to
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`counsel for the following addresses:
`
`John R. Kasha
`KASHA LAW LLC
`14532 Dufief Mill Road
`North Potomac, MD 20878
`Tel.: 703-867-1886
`Fax: 301-340-3022
`john.kasha@kashalaw.com
`Attorney for PATENT OWNER
`
`
`
`Kelly L. Kasha
`KASHA LAW LLC
`14532 Dufief Mill Road
`North Potomac, MD 20878Tel.: 703-
`867-1886
`Fax: 301-340-3022
`kelly.kasha@kashalaw.com
`Attorney for PATENT OWNER
`
`
`
`By:
`
` /Charles W. Griggers/
`
`Charles W. Griggers
`Reg. No. 47,283
`
`Attorney for Petitioner
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