Paper No. 3
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`Aruba Networks, Inc., Hewlett Packard Enterprise Company, and HP Inc.,
`Petitioners
`
`v.
`
`Mobile Telecommunications Technologies, LLC
`Patent Owner.
`
`Patent No. 5,915,210
`Issued: June 22, 1999
`Filed: July 24, 1997
`Inventors: Dennis Wayne Cameron, Walter Charles Roehr, Jr., Jai P. Bhagat,
`Masood Garahi, William D. Hays, David W. Ackerman
`Title: METHOD AND SYSTEM FOR PROVIDING MULTICARRIER
`SIMULCAST TRANSMISSION
`
`_______________
`
`
`Inter Partes Review No. IPR2016-00769
`
`PETITIONERS’ MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`WEST\268528787.4
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`Aruba Networks, Inc., Hewlett Packard Enterprise Company, and HP Inc.,
`Petitioners
`
`v.
`
`Mobile Telecommunications Technologies, LLC
`Patent Owner.
`
`Patent No. 5,915,210
`Issued: June 22, 1999
`Filed: July 24, 1997
`Inventors: Dennis Wayne Cameron, Walter Charles Roehr, Jr., Jai P. Bhagat,
`Masood Garahi, William D. Hays, David W. Ackerman
`Title: METHOD AND SYSTEM FOR PROVIDING MULTICARRIER
`SIMULCAST TRANSMISSION
`
`_______________
`
`
`Inter Partes Review No. IPR2016-00769
`
`PETITIONERS’ MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`WEST\268528787.4
`
`
`
`I.
`
` INTRODUCTION
`
`Petitioners move the Patent Trial and Appeal Board (“Board”) for joinder of
`
`this inter partes review (Case No. IPR2016-00769, “Aruba IPR”) to an earlier
`
`inter partes review filed by Samsung Electronics Co., Ltd. (Case No. IPR2015-
`
`01724, “Samsung IPR”). The Aruba IPR is intentionally identical to the Samsung
`
`IPR in all substantive aspects. Both seek inter partes (“IPR”) review of claims 1,
`
`7-8, 10, 15-17 and 19 (the “Challenged Claims”) of Mobile Telecommunications
`
`Technologies, LLC’s (“PO”) U.S. Patent 5,915,210 (the “’210 patent”). Further,
`
`the Aruba IPR and Samsung IPR rely upon the same analytical framework (e.g.,
`
`same expert declarant, prior art, claim charts, and claim constructions) in
`
`addressing the Challenged Claims. Accordingly, resolving the Aruba IPR and
`
`Samsung IPR will necessarily involve considering the same issues by all parties
`
`and the Board.
`
`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. Joinder of these proceedings also
`
`presents the best opportunity to secure the just, speedy, and inexpensive resolution
`
`of the related proceedings without any prejudice to the PO. This includes
`
`consolidated filings and discovery and eliminating the duplicate hearings and
`
`briefing that would surely accompany separate proceedings, which Samsung does
`
`
`
`WEST\268528787.4
`
`1
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`not oppose. Joinder should also provide for case management efficiencies for the
`
`Board.
`
`In light of the similarities of the proceedings and the efficiencies that can be
`
`realized via joinder, Petitioners respectfully request that the Board join the
`
`Samsung IPR and Aruba IPR.
`
`II. BACKGROUND
`Samsung filed a petition requesting inter partes review of the ’210 Patent on
`
`August 13, 2015. Samsung IPR, Paper 1. A decision granting institution of that
`
`petition was granted on February 16, 2016. Paper 11.
`
`The Samsung IPR and Aruba IPR involve different petitioner groups and
`
`real parties-in-interest. Compare Samsung IPR, Paper 1 at 1 (identifying real
`
`party-in-interest) with Aruba IPR, Paper 1 at 1 (identifying real parties-in-interest).
`
`However, all such parties are defendants in numerous different infringement
`
`lawsuits asserting the ’210 Patent and two other patents filed by the PO
`
`(collectively, the “PO Patents”) in the U.S. District Court for the Eastern District of
`
`Texas. See Samsung IPR, Paper 1 at 1-2 (listing related matters); Aruba IPR,
`
`Paper 1 at 1-2 (listing related matters). The other two PO Patents are U.S. Patent
`
`No. 5,590,403 (“’403 patent”), and U.S. Patent No. 5,659,891 (“’891 patent”), for
`
`which there are multiple other pending IPR proceedings. A summary of the IPR
`
`proceedings related to the PO Patents is provided below in Tables 1 and 2.
`
`
`
`WEST\268528787.4
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`2
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`Table 1: Related Proceedings
`
`Case
`
`Petition Filed Petitioner
`
`IPR2013-00306
`IPR2014-01032
`IPR2015-00017
`IPR2014-01035
`IPR2015-00018
`IPR2015-01726
`IPR2015-01727
`IPR2015-01036
`IPR2015-00015
`IPR2015-01724
`
`5/23/2013
`6/27/2014
`10/3/2014
`6/27/2014
`10/3/2014
`8/13/2015
`8/13/2015
`6/27/2014
`10/3/2014
`8/13/2015
`
`Clearwire
`Apple
`T-Mobile, et al.
`Apple
`T-Mobile, et al.
`Samsung
`Samsung
`Apple
`T-Mobile, et al.
`Samsung
`
`IPR2015-01725
`
`8/13/2015
`
`Samsung
`
`’403
`’403
`’403
`’891
`’891
`’891
`’891
`’210
`’210
`’210
`
`Patent Challenged
`Claims
`1, 10, 11
`1, 10
`1, 10, 11
`1-5
`1-5
`1-5
`1-5
`1, 10, 19
`1, 10, 19
`1, 7-8, 10, 15-17,
`19
`1, 7-8, 10, 15-17,
`19
`
`’210
`
`Table 2: Status of Related Proceedings
`
`Case
`IPR2013-00306
`IPR2014-01032
`IPR2015-00017
`IPR2014-01035
`
`IPR2015-00018
`
`IPR2015-01726
`IPR2015-01727
`IPR2015-01036
`IPR2015-00015
`
`IPR2015-01724
`
`IPR2015-01725
`
`Status
`Settled.
`Institution denied
`Institution denied
`Settled.
`Instituted for claims 1-5 as anticipated by Petrovic and claim 5
`as obvious over Petrovic, Raith, and Alakija. Parties settled and
`case terminated.
`Instituted for claims 1-5 as anticipated by Petrovic and claim 5
`as obvious over Petrovic, Raith, and Alakija. Case pending.
`Institution denied
`Settled.
`Settled.
`Instituted for claims 1, 7, 10, 16, 17, ad 19 as anticipated by
`Saalfrank, and for claims 8, 15 and 19 as obvious over
`Saalfrank and Nakamura. Case pending.
`Institution denied
`
`
`
`
`
`
`
`WEST\268528787.4
`
`3
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`In addition to the present motion, Petitioners will be concurrently filing a
`
`petition to join another IPR case pertaining to one of the PO patents. Specifically,
`
`by separate motion, Petitioners are seeking to join IPR2016-00769 with IPR2015-
`
`01726 (’891 patent) on bases parallel to the ones set forth below.
`
`III. LEGAL STANDARD
`When more than one petition for inter partes review of the same patent is
`
`properly filed and those petitions warrant institution, the Board has the authority
`
`and discretion to join the proceedings. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
`
`Joinder of one inter partes review with another inter partes review is appropriate
`
`where it secures the just, speedy, and inexpensive resolution of the inter partes
`
`review proceedings. See 37 C.F.R. § 42.1(b).
`
`A petitioner may request joinder, without prior authorization, up to one
`
`month after the institution date of the proceeding to which joinder is requested. 37
`
`C.F.R. § 42.122(b) (addressing timing to request joinder); Taiwan Semiconductor
`
`Mfg. Co., Ltd. v. Zond LLC, IPR2014-00781 and IPR2014-782, Paper 5 at 3 (May
`
`29, 2014) (prior authorization not required before one month deadline). Typically,
`
`such a joinder request: (1) sets forth the reasons why joinder is appropriate;
`
`(2) identifies any new grounds of unpatentability asserted in the petition; and
`
`(3) explains what impact (if any) joinder would have on the trial schedule for the
`
`existing review. See, e.g. Microsoft Corp. v. IPR Licensing, Inc., IPR2015-00074,
`
`
`
`WEST\268528787.4
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`4
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`Paper 21 at 4 (Mar. 4, 2015). A joinder request can additionally address
`
`specifically how briefing and discovery may be simplified. See, e.g., Sony Corp. of
`
`Am. v. Network-1 Security Solutions, Inc., IPR2013-00495, Paper 13 at 3 (Sep. 16,
`
`2013); Fujitsu Semiconductor Ltd. v. Zond, LLC, IPR2014-00845, Paper 14 at 304
`
`(Oct. 2, 2014). Petitioner addresses each of these points below.
`
`IV. ANALYSIS
`If inter partes review of any claim of the ’210 Patent is instituted based on
`
`the Samsung and Aruba IPRs, Petitioners respectfully request that the Board grant
`
`this motion for joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b)
`
`and enter an order consistent with the proposed order provided below.
`
`A. This Joinder Motion Is Timely
`This motion is timely. Under 37 C.F.R. § 42.122(b), joinder can be
`
`requested without prior authorization no later than one month after the institution
`
`date of the proceeding to which joinder is requested. Taiwan Semiconductor,
`
`IPR2014-00781 and IPR2014-782, Paper 5 at 3. Because this motion is being
`
`filed within one month of the Board’s decision instituting trial in the Samsung
`
`IPR, it meets the requirements of § 42.122(b). See, e.g., Biotronik, Inc. v. Atlas IP
`
`LLC, IPR2015-00534, Paper 10 (Feb. 25, 2015) (granting motion for joinder filed
`
`concurrently with institution of IPR review).
`
`
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`WEST\268528787.4
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`5
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`Joinder Is Appropriate
`
`B.
`Joinder of the Samsung IPR and the Aruba IPR is the most practical way to
`
`secure the just, speedy, and inexpensive resolution of these related proceedings.
`
`See 37 C.F.R. § 42.1(b). The petition in the Aruba IPR is intentionally identical to
`
`the petition in the Samsung IPR in all substantive aspects. That is, the same claims
`
`are challenged (1, 7-8, 10, 15-17 and 19 of the ’210 patent) based on the same prior
`
`art, same claim charts, and same claim constructions. The same expert declarant is
`
`used, and the expert’s declarations in the two cases are substantively identical.
`
`Further, unity of exhibits and exhibit numbering (particularly with respect to prior
`
`art) with the Samsung IPR have also been maintained, with only minor
`
`exceptions.1 Accordingly, resolving the Aruba IPR and Samsung IPR will
`
`necessarily involve considering the same issues and same papers. Joining these
`
`inter partes reviews thus presents an opportunity to streamline review of the ’210
`
`Patent’s Challenged Claims and eliminate unnecessary duplication of filings,
`
`papers, and efforts of the Petitioners, the PO, and the Board. On the other hand, if
`
`
`1 Exhibit 1002 (PO’s complaints against Petitioners) necessarily differs due to
`
`different real parties-in-interest in the Aruba IPR and Samsung IPR, and Ex. 1022,
`
`the Institution Decision in the Samsung IPR, has been added. Otherwise, all
`
`exhibits are the same.
`
`
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`WEST\268528787.4
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`6
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`the Aruba IPR and Samsung IPR proceed separately, there would undoubtedly be
`
`needless duplicate effort.
`
`C. Consolidated Filings and Discovery
`To further ensure a streamlined process, and because the grounds of
`
`unpatentability in the Samsung and Aruba IPRs are the same, Petitioners agree to
`
`work closely with Samsung to avoid redundancies wherever possible.
`
`For example, Petitioners will agree to consolidated filings for all substantive
`
`papers in the proceeding (e.g., Reply to the PO’s Response, Opposition to Motion
`
`to Amend, Motion for Observation on Cross Examination Testimony of a Reply
`
`Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude Evidence,
`
`and Reply). Specifically, so as to avoid lengthy and duplicative briefing,
`
`Petitioners will agree to:
`
`
`
`incorporate their filings with those of Samsung in a consolidated
`
`filing, subject to the ordinary rules for one party on page limits;
`
`
`
`
`
`be jointly responsible with Samsung for the consolidated filings; and
`
`not be permitted to make arguments separately from those advanced
`
`by Petitioner and Samsung in the consolidated filings.
`
`Petitioners will also agree to consolidated discovery. This is appropriate
`
`given that Petitioners and Samsung are using the same expert declarant who has
`
`submitted a substantively identical declaration in the two proceedings.
`
`
`
`WEST\268528787.4
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`7
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`Additionally, Petitioners will agree to designate a single attorney to conduct, on
`
`behalf of Petitioners and Samsung, the cross-examination of any witness
`
`produced by PO and the redirect of any witness produced by Petitioners and PO,
`
`and to limit such cross-examinations and redirect to the time normally allotted for
`
`one party. Petitioners and Samsung will not receive any separate cross-
`
`examination or redirect time.
`
`D. No New Grounds of Unpatentability
`The Aruba IPR raises no new grounds of unpatentability from those raised in
`
`the Samsung IPR. This is because, as noted above, the petitions in the Samsung
`
`IPR and Aruba IPR are substantively identical.
`
`E. No Impact on IPR Trial Schedule
`This motion is being filed within one month of institution of the Samsung
`
`IPR, and Petitioners have agreed to adhere to all applicable deadlines set forth in
`
`the Samsung IPR Scheduling Order. Accordingly, the trial schedule for the
`
`Samsung IPR should not be adversely affected.
`
`F.
`
`Joinder Will Streamline the Proceedings and Result in No
`Prejudice to PO
`
`Joinder will streamline the proceedings and reduce the costs and burden on
`
`Petitioners, PO, and the Board. Joining these proceedings will eliminate duplicate
`
`papers that must be filed, reviewed, and managed in each proceeding if the
`
`proceedings are not joined. Joinder will therefore also create case management
`
`
`
`WEST\268528787.4
`
`8
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`efficiencies for the Board and all parties. Further, because Petitioners and
`
`Samsung have agreed to cooperate, joinder will also reduce by half the time and
`
`expense for depositions and other discovery that would otherwise accompany
`
`separate IPR proceedings. As such, joinder will simplify briefing and discovery,
`
`without any foreseeable prejudice to PO.
`
`V.
`
`PROPOSED ORDER
`
`In light of the benefits of joinder described above, Petitioners propose an
`
`order joining the Aruba IPR with the Samsung IPR consistent with the following,
`
`which Samsung does not oppose:
`
`
`
`If inter partes review is instituted on any ground in the Aruba IPR, the
`
`Aruba IPR will be joined to the Samsung IPR;
`
`
`
`The scheduling order entered for the Samsung IPR will apply to the
`
`joined proceedings;
`
`
`
`Throughout the joined proceedings, Petitioners and Samsung will file
`
`papers as consolidated filings, except for motions that do not involve the other
`
`party, in accordance with the Board’s established rules regarding page limits. So
`
`long as they both continue to participate in the merged proceedings, Petitioners and
`
`Samsung will identify each such filing as a Consolidated Filing and will be
`
`responsible for completing all consolidated filings;
`
`
`
`WEST\268528787.4
`
`9
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`
`
`Petitioners and Samsung will designate an attorney to conduct the
`
`cross examination of any witness produced by PO and the redirect of any given
`
`witness produced by Petitioners and Samsung within the timeframe normally
`
`allotted by the rules for one party. Petitioners and Samsung will not receive any
`
`separate cross-examination or redirect time; and
`
`
`
`PO will conduct any cross examination of any given witness jointly
`
`produced by Petitioners and Samsung and the redirect of any given witness
`
`produced by PO within the timeframe normally allotted by the rules for one cross-
`
`examination or redirect examination.
`
`VI. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that the Board
`
`institute its Petition for Inter Partes Review of U.S. Patent No. 5,915,210 and grant
`
`joinder of the Samsung IPR and Aruba IPR.
`
`
`
`WEST\268528787.4
`
`10
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`Dated: March 16, 2016
`
`
`
`Respectfully Submitted,
`
`/s/ James M. Heintz
`James M. Heintz
`Registration No. 41,828
`DLA PIPER LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Telephone: 703-773-4148
`Facsimile: 703-773-5200
`HP-MTel-210IPR-DLA@dlapiper.com
`
`
`
`Brian K. Erickson
`Registration No. 48,895
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Telephone: 512-457-7000
`Facsimile: 512-457-7001
`HP-MTel-210IPR-DLA@dlapiper.com
`
`
`
`Attorneys for Petitioners
`
`
`
`
`
`
`
`
`WEST\268528787.4
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`11
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
`
`42.105(b) on the Patent Owner by overnight mail of a copy of this Motion for
`
`Joinder and supporting material at the following correspondence address of record
`
`for the ’210 Patent:
`
`KASHA LAW LLC
`14532 Dufief Mill Road
`North Potomac MC 20878
`
`In addition, a copy of this Motion for Joinder and supporting material is being
`
`electronically served in its entirety on counsel for Petitioner and counsel for Patent
`
`Owner in related Case No. IPR2015-01724:
`
`PETITIONER:
`
`Heath Briggs
`Patrick J. McCarthy
`GREENBERG TRAURIG, LLP
`BriggsH@gtlaw.com
`McCarthyP@gtlaw.com
`
`PATENT OWNER:
`
`John R. Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`
`Craig Steven Jepson
`Reed & Scardino LLP
`Kirk D. Dorius
`cjepson@reedscardino.com
`kdorius@reedscardino.com
`
`
`
`WEST\268528787.4
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`12
`
`
`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`
`
`Dated: March 16, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
` /James M. Heintz/
`James M. Heintz
`Registration Number 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`(703) 773-4148
`HP-MTel-210IPR-DLA@dlapiper.com
`
`
`
`Brian K. Erickson
`Registration Number 48,895
`DLA Piper LLP (US)
`401 Congress, Suite 2500
`Austin, TX 78701
`(512) 457-7000
`HP-MTel-210IPR-DLA@dlapiper.com
`
`
`
`Attorneys for Petitioners
`
`
`
`
`WEST\268528787.4
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`13
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`Petitioners’ Motion for Joinder
`IPR2016-00769 (U.S. Patent No. 5,915,210)
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