UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`
`
`ARUBA NETWORKS, INC., HEWLETT PACKARD ENTERPRISE
`COMPANY, AND HP INC.,
`Petitioner
`
`v.
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-00769
`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
`
`____________
`
`
`
`
`
`ARUBA NETWORKS, INC., HEWLETT PACKARD ENTERPRISE
`COMPANY, AND HP INC.,
`Petitioner
`
`v.
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-00769
`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. Aruba And ARRIS Have Not Agreed To Consolidate Filings ............. 6
`C. Motion Filed Only To Prevent Termination Of Samsung IPR ............. 6
`D.
`Patent Owner Prejudiced by Aruba’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 Aruba Networks, Inc.,
`
`Hewlett Packard Enterprise Company, and HP Inc.’s (“Aruba”) motion (the
`
`“Aruba Motion”) to join this IPR proceeding, No. IPR2016-00769 (the “Aruba
`
`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 Aruba motion is granted the Patent Owner will be prejudiced in that it
`
`will have much less time to depose Aruba’s expert and prepare its own expert
`
`declaration and response. In addition, ARRIS Group, Inc. (“ARRIS”) has also
`
`filed a motion (the “ARRIS Motion”) to join IPR proceeding, No. IPR2016-00765
`
`(the “ARRIS IPR”) with the Samsung IPR. As a result, if the ARRIS 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, Aruba filed the petition of the Aruba IPR and the
`
`Aruba 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 Aruba motion as follows.
`
`A.
`
`Patent Owner Punished For Focusing On Settlement
`
`As described above, if the Aruba Motion is granted the Patent Owner will be
`
`prejudiced in that it will have much less time to depose Aruba’s expert and prepare
`
`its own expert declaration and response. In other words, if the Aruba 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 Aruba Motion is granted, the Patent Owner will therefore have lost
`
`significant time for deposing Aruba’s expert and preparing its own expert
`
`declaration and response. Further, if the Aruba Motion is granted, the ARRIS
`
`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 Aruba Motion and
`
`the ARRIS 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 Aruba Motion and the
`
`ARRIS 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 Aruba 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. Aruba And ARRIS Have Not Agreed To Consolidate Filings
`
`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. Similarly, 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. However, Samsung has withdrawn from the IPR, and neither the Aruba Motion
`
`nor the ARRIS 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 Aruba Motion should be denied, because Aruba 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 Aruba Motion and the ARRIS Motion were filed simply to prevent the
`
`Samsung IPR from terminating. Preventing the Samsung IPR from terminating
`
`places Aruba and ARRIS in a better bargaining position in their disputes with the
`
`Patent Owner. Placing Aruba and ARRIS in a better bargaining position
`
`prejudices the Patent Owner.
`
`
`
`6
`
`
`
`
`
`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.
`
`Similarly, 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.
`
`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. Aruba and ARRIS 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 Aruba Motion should be denied, because Aruba’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 Aruba’s Delay
`
`The Patent Owner is prejudiced by Aruba’s delay in filing the Aruba
`
`Motion. Aruba admits in the Aruba Motion that it was aware of the institution of
`
`the Samsung IPR, which occurred on February 16, 2016. Aruba Motion, Paper 3
`
`at page 3. Aruba also admits that the “Aruba IPR is intentionally identical to the
`
`Samsung IPR in all substantive aspects.” Aruba Motion, Paper 3 at page 1.
`
`However, Aruba waited until the last possible day, March 16, 2016 and exactly one
`
`month after the Samsung IPR was instituted, to file the Aruba Motion. Aruba
`
`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, Aruba provides no explanation for its delay in filing the
`
`Aruba motion. Clearly such a delay prejudices the Patent Owner by impacting the
`
`schedule and introducing uncertainty at the last possible moment. Also, Aruba
`
`cannot claim that the delay was due to the time needed to draft the Petition. Aruba
`
`admits that the “Aruba IPR is intentionally identical to the Samsung IPR in all
`
`substantive aspects.” Aruba Motion, Paper 3 at page 1. In other words, Aruba
`
`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 Aruba and ARRIS requested a conference call with the
`
`Board to seek authorization to file a motion for expedited action regarding the
`
`Aruba Motion and the ARRIS Motion. This is almost an entire month after filing
`
`the Aruba Motion and the ARRIS Motion. Both Aruba and ARRIS took the
`
`maximum time for themselves, and the minimal possible time for patent owner to
`
`react, and now seek to even further limit the Patent Owner’s time to respond.
`
`Again, they provide no explanation for their delay in making this request.
`
`In summary, the Aruba Motion should be denied, because Aruba delayed
`
`filing the Aruba Motion until the last possible moment and provided no
`
`
`
`9
`
`
`
`
`explanation for the delay. Further Aruba has continued this pattern of waiting until
`
`the last possible moment and then asking for expedited action on the Aruba
`
`Motion.
`
`E.
`
`Bad Policy - Legal Extortion
`
`Aruba 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, Aruba admits that the “Aruba IPR is intentionally
`
`identical to the Samsung IPR in all substantive aspects.” Aruba Motion, Paper 3 at
`
`page 1. In other words, Aruba simply copied the petition of the Samsung IPR.
`
`Also, as described above, 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 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
`10
`
`
`
`
`
`
`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 Aruba 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.
`
`Aruba’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
`
`then. Therefore, realistically, joinder is either extremely prejudicial to the Patent
`
`Owner or infeasible under the instituted schedule.
`
`Notably, Aruba 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
`
`
`
`11
`
`
`
`
`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 Aruba’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.
`
`This is only fair since, as described above, Aruba has caused a delay of at
`
`least 2 months by waiting to file the Aruba Motion and by waiting almost an entire
`
`month to request that the Aruba 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.
`
`
`
`
`
`12
`
`
`
`
`
`In summary, the Aruba 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
`
`Aruba 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 HP-MTel-210IPR-DLA@dlapiper.com - counsel of record
`
`for Aruba Networks, Inc., Hewlett Packard Enterprise Company, and HP 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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