Paper No. __
`
`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’ REPLY
`TO PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`WEST\268546490.2
`
`
`
`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’ REPLY
`TO PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`WEST\268546490.2
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`
`
`I.
`
`ARGUMENT
`
`A. Joinder is In the Public Interest
`
`In instituting IPR2015-01724 and IPR2015-01726 (the “Samsung IPRs”),
`
`the Board found that Samsung “has established a reasonable likelihood of pre-
`
`vailing on the [challenged] claims” of the ’891 and ’210 patents. No substantive
`
`paper has been filed since the Board instituted the Samsung IPRs. Thus, based on
`
`the information presently available, the challenged claims of the ’891 and ’210
`
`patents are more likely than not unpatentable. Some of these same challenged
`
`claims are now being asserted in ongoing litigation against the Aruba Petitioners,
`
`users of accused products of the ARRIS petitioner, and third parties. Moreover,
`
`the Patent Owner has asserted these claims against other parties in the past (Paper
`
`No. 1 at 1-2), and there is no indication that Patent Owner will not do so again.
`
`Under these circumstances – both ongoing litigation and possible future
`
`litigation involving the challenged claims ’891 and ’210 patents at issue here –
`
`there is a strong public interest in obtaining a final written decision on the
`
`challenged claims as soon as possible. If joinder is granted, the final written
`
`decision will be due on February 16, 2017. If joinder is not granted and the Aruba
`
`and ARRIS IPRs continue on the default schedule, the institution decision will not
`
`be due until September 29, 2016 (six months from the 3/29/16 Notice of Filing
`
`Date Accorded), and a final written decision will not be due until September 29,
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`1
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`Petitioners’ Reply to Opp. to Motion for Joinder
`
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
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`2017. This is a difference of more than seven months. An additional seven
`
`months of litigation can amount to a significant expense, both for defendants that
`
`are already involved in suits by Patent Owner on these patents, and for other
`
`defendants that Patent Owner may name in future Eastern District of Texas
`
`lawsuits. Additionally, seven months will have passed from the February 16th date
`
`of the Board’s Institution Decision in the Samsung IPRs. This length of time will
`
`place a burden on the Board as it will have to expend more effort to re-familiarize
`
`itself with the technology at issue then would be the case if joinder were granted.
`
`B. The Board Has The Authority to Grant Joinder On An Expedited Basis
`
`The only obstacle to granting joinder immediately is the Patent Owner’s
`
`desire to file a Preliminary Response. However, as discussed on the April 19th
`
`conference call, the Board has the authority to expedite Patent Owner’s
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`Preliminary Response under 37 C.F.R. § 42.5(c)(1). Petitioners in the Aruba and
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`ARRIS IPRs have proposed a schedule to allow for Patent Owner’s preliminary
`
`response. In particular, the Aruba and ARRIS petitioners proposed the following
`
`schedule on the April 19th call (recalling that no motion to amend is possible):
`
`Patent Owner Preliminary Response:
`
`Due Date 1 (Patent Owner Response)
`
`Due Dates 2 and 3 (Petitioner’s Reply)
`
`
`
`
`
`
`
`May 20, 2016
`
`July 20, 2016
`
`September 20, 2016
`
`Due Date 4 (Mot. for Obs., Mots. To Exclude)
`
`October 5, 2016
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`2
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`Petitioners’ Reply to Opp. to Motion for Joinder
`
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`Due dates 5-7 would remain unchanged. It should be noted that, under this
`
`proposed schedule, even if the Board were to take a month after Patent Owner’s
`
`preliminary response to issue its institution decision , Patent Owner would have
`
`two months to file its Response, which is almost exactly the time it had left to file
`
`its response when it filed its April 14th motion to terminate the Samsung IPRs.
`
`C. Joinder Would Neither Punish Nor Unfairly Prejudice Patent Owner
`
`Patent Owner’s Opposition asserts that Patent Owner would be “punished”
`
`for focusing on settlement with Samsung, and that Patent Owner would be
`
`“prejudiced,” if the Aruba and ARRIS IPRs are joined with this case. Opp. at 3-4.
`
`This “punishment” and “prejudice” would result because Patent Owner would need
`
`to file its Patent Owner Response by June 18th, which is just over two months
`
`from the filing of its motion to terminate on April 14th. However, as discussed
`
`above, the timing issue is moot in light of the proposed schedule discussed above.
`
`Moreover, Patent Owner is not entitled to have its IPR terminated just because it
`
`settled with Samsung. Indeed, in IPR2015-00568, Paper No. 12, the Board granted
`
`joinder after a settlement had been reached despite Patent Owner’s claim of
`
`prejudice. Id. at 3-5. A Patent Owner can always claim some prejudice when IPRs
`
`are joined, but the correct inquiry is whether the prejudice is unfair. Under the
`
`proposed schedule set out above, there is neither unfair prejudice nor punishment
`
`because patent owner will have more than sufficient time for its filings.
`
`
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`3
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`Petitioners’ Reply to Opp. to Motion for Joinder
`
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`D. Patent Owner’s Other Objections to Joinder Are Baseless
`
`In section B of its Opposition in IPR2016-00769, Patent Owner asserts
`
`prejudice because the Aruba and ARRIS IPR petitioners had not agreed to
`
`consolidate filings. This issue is now moot because those petitioners have now
`
`agreed to consolidated filings. Ex. 1023 at 21:22-22:9.
`
`In Section C of its Opposition, Patent Owner asserts that the Aruba and
`
`ARRIS IPR petitioners are seeking joinder only to improve their bargaining
`
`position. Of course, the same can be said of Patent Owner’s motive in opposing
`
`joinder. When one considers that a reasonable likelihood of unpatentability has
`
`been established, and the public’s interest (which the Opposition admits at 3 is a
`
`relevant factor) in avoiding further waste of time and money on patent claims that
`
`should not have been granted, the balance of interest clearly favor joinder.
`
`In Section D, the Patent Owner relies on the denial of joinder in IPR2015-
`
`00271 to argue that joinder should be denied here because of a one month period
`
`between the Samsung IPR institution decision and the filing of the Aruba and
`
`ARRIS petitions. However, neither the Aruba nor the ARRIS petitioners had any
`
`prior notice that settlement was imminent, and Patent Owner admits that it kept
`
`this information a secret. Opp. at 5. Moreover, IPR2015-00271 and this case are
`
`very different. Granting joinder in IPR2015-00271 would have involved new
`
`substantive grounds and three additional claims. IPR2015-00271, Paper 15, at 4-5.
`
`
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`4
`
`Petitioners’ Reply to Opp. to Motion for Joinder
`
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`Here, there are no new grounds and no additional claims. In IPR2015-00271, the
`
`proceeding to be joined had already progressed past the oral argument (id. at 6),
`
`whereas not even patent owner response has been filed in the Samsung IPR.
`
`Finally, in IPR2015-00271, the grounds being asserted by the petitioner seeking
`
`joinder could have been raised in an earlier petition filed by that same petitioner
`
`(id. at 8) whereas there are no such earlier petitions here. In contrast, the Board’s
`
`decision to grant joinder even after motions to terminate in IPR2015-00568, Paper
`
`No. 12 is much more relevant to this case, and the only distinctions drawn in the
`
`Opposition at 5 are either moot (Aruba and ARRIS will consolidate filings) or
`
`irrelevant (timing of motion to terminate and opposition to joinder).
`
`Patent Owner raises the specter of “legal extortion” and “IPR trolls” in
`
`Section E. Beyond noting the irony given Patent Owner’s assertion of patents for
`
`which a reasonable likelihood of unpatentability has been shown, Petitioners
`
`submit that any such likelihood of joinder as a mechanism for “legal extortion” is
`
`remote. Finally, with regard to Section F, any scheduling conflict is mooted by
`
`Petitioners’ proposed schedule set out above.
`
`II. CONCLUSION
`Joinder should be granted for the reasons discussed above.
`
`
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`5
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`Petitioners’ Reply to Opp. to Motion for Joinder
`
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`Dated: April 25, 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-891IPR-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: 512-457-700
`HP-MTel-891IPR-DLA@dlapiper.com
`
`Attorneys for Petitioners
`
`
`
`
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`6
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`Petitioners’ Reply to Opp. to 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 Reply to Patent
`
`Owner’s Opposition to 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
`
`
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`WEST\268546490.2
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`7
`
`Petitioners’ Reply to Opp. to Motion for Joinder
`
`IPR2016-00769 (U.S. Patent No. 5,915,210)
`
`
`
`Dated: April 25, 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-891IPR-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-891IPR-DLA@dlapiper.com
`
`
`
`Attorneys for Petitioners
`
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`WEST\268546490.2
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`8
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`Petitioners’ Reply to Opp. to Motion for Joinder
`
`IPR2016-00769 (U.S. Patent No. 5,915,210)
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