Patent No. 8,648,717
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` Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC. AND RPX
`CORP.
`
`Petitioner
`v.
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`M2M SOLUTIONS LLC
`Patent Owner
`
`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
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`Inter Partes Review No. Unassigned
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`MOTION FOR JOINDER TO RELATED INSTITUTED INTER PARTES
`REVIEW (37 C.F.R. § 42.122(b))
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
`Statement of Relief Requested ........................................................................ 1
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`Statement of Material Facts ............................................................................. 1
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`III. Legal Standards and Applicable Rules ............................................................ 4
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`IV. Argument ......................................................................................................... 5
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`This Motion for Joinder is Timely ........................................................ 5
`A.
`B. Multiple Reasons Show that Joinder Is Appropriate ............................ 5
`1.
`Considerations of Efficiency Support Joinder ............................ 6
`2.
`Public Policy Considerations Support Joinder ........................... 7
`3.
`Lack of Prejudice ........................................................................ 8
`Joinder Will Not Result in Unnecessary Delay..................................... 9
`C.
`V. Conclusion ...................................................................................................... 9
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`i
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286 ...................................................................4
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`Ariosa Diagnostics v. ISIS Innovation Ltd., IPR2012-00022 ..........................................4
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`Ariosa Diagnostics v. Isis Innovation Ltd., IPR2013-00250 ...........................................7
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`Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385 ...........................................4
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`Lear, Inc. v. Adkins, 395 U.S. 653, 656, 670 (1969) ......................................................6, 8
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`M2M SOLUTIONS LLC v. SIERRA WIRELESS AMERICA, INC., et al.,
`C.A. No. 1:14-cv-01102-RGA ...........................................................................................1
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`Medtronic, Inc. v. Mirowski Family Ventures, LLC,
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`143 S.Ct. 843 (2014) ........................................................................................................6, 8
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`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109 ........................................................4
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`Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc.,
`IPR2014-00557 ......................................................................................................................4
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`Sierra Wireless America Inc., Sierra Wireless Inc. and RPX Corp. v. M2M
`Solutions LLC,
`Case No. IPR2015-01823 (“IPR2015-01823”) ................................................... passim
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`Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem,
`IPR2013-00326 ......................................................................................................................4
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`Target Corp. v. Destination Maternity Corp., IPR2014-00508 ......................................4
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`FEDERAL STATUTES
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`35 U.S.C. 102(b) .........................................................................................................................2
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`35 U.S.C. § 315(c) ..................................................................................................................1, 4
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`35 U.S.C. § 316(b) ..................................................................................................................7, 9
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`ii
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`Table of Contents (continued)
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`Page
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`RULES
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`Rule 42.122(b) .........................................................................................................................5, 9
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`REGULATIONS
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`37 C.F.R. § 1.56(a) .....................................................................................................................7
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`37 C.F.R. § 41.1(b) .....................................................................................................................9
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`37 C.F.R. §§ 42.20(c), 42.122(b) ............................................................................................5
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`37 C.F.R. § 42.101(b) ................................................................................................................4
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`37 C.F.R. § 42.122(b) ............................................................................................................1, 4
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`iii
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`I.
`Statement of Relief Requested
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners Sierra
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`Wireless America Inc., Sierra Wireless Inc. and RPX Corp. seek with this Motion
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`to have its petition for inter partes review of U.S. Patent No. 8,648,717 (“the ‘717
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`patent”), filed contemporaneously herewith, joined with the Sierra Wireless
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`America Inc., Sierra Wireless Inc. and RPX Corp. v. M2M Solutions LLC, Case
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`No. IPR2015-01823, inter partes review, which was instituted on March 8, 2016.
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`II.
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`Statement of Material Facts
`1.
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`On August 26, 2014, Patent Owner, M2M Solutions LLC (“M2M”),
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`filed a presently copending lawsuit against Sierra Wireless America, Inc. and
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`Sierra Wireless, Inc., involving the ‘717 patent (M2M SOLUTIONS LLC v.
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`SIERRA WIRELESS AMERICA, INC., et al., C.A. No. 1:14-cv-01102-RGA) in the
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`United States District Court for the District of Delaware (“the ‘717 District Court
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`Action”). The ‘717 District Court Action is currently stayed.
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`2.
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`On August 26, 2015, Petitioners filed a petition seeking inter partes
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`review of claims 1-3, 5-7, 10-24, and 29-30 of the ‘717 Patent. Sierra Wireless
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`America Inc., Sierra Wireless Inc. and RPX Corp. v. M2M Solutions LLC, Case
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`No. IPR2015-01823 (“IPR2015-01823”), Paper 1.
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`3.
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`On March 8, 2016, the Patent Trial and Appeal Board instituted inter
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`partes review of claims 1, 3, 5, 6, 10-13, 15-24, and 29 of the ‘717 patent, and
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`1
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`denied institution of claims 2, 7, 14 and 30. IPR2015-01823, Paper 16, p. 30, 25-
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`26.
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`4.
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`Concurrently with this Motion, Petitioners are filing a second ‘717
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`Petition, challenging claims 2, 7, 14 and 30, on new grounds – i.e., Whitley in view
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`of the SIM+ME Spec., Whitley in view of the SIM+ME Spec. and the SIM
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`Application Toolkit, and Whitley in view of the SIM+ME Spec., the SIM
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`Application Toolkit and the SIM API Spec. See second ‘717 Petition, concurrently
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`filed, p. 8-9, 19-60.
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`5. Whitley qualifies as prior art to the ‘717 patent under 35 U.S.C.
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`102(b). SIM+ME Spec qualifies as prior art to the ‘717 patent under 35 U.S.C.
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`102(b). The SIM Application Toolkit qualifies as prior art to the ‘717 patent under
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`35 U.S.C. 102(b). The SIM API also qualifies as prior art to the ‘717 patent under
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`35 U.S.C. 102(b). See second ‘717 Petition, concurrently filed, p. 6-8.
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`6.
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`Claims 2, 7, 14 and 30 of the ‘717 patent require that the processing
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`module of independent claim 1 perform additional functions including processing
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`data received through the programmable interface (claim 2), causing processed
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`data to be transmitted (claim 7), causing received data to be transmitted (claim 14)
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`and processes the received data to determine whether it indicates a change in status
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`(claim 30). In IPR2015-01823, the Board found that the Petitioner had not shown
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`that the same “processing module” performs the functions required in dependent
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`claims 2, 7, 14, and 30, is the same “processing module” in claim 1 that performs
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`the coded number authentication. IPR2015-01823, Paper 16, p. 25-26.
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`7.
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`As set forth in Petitioners’ second ‘717 Petition, Whitley discloses
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`receiving and processing data from a monitored technical device and causing the
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`received and/or processed data to be transmitted to a remote monitoring device in
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`response to programming instructions; the GSM standards documents (SIM+ME
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`Spec, the SIM Application Toolkit and the SIM API Spec.) disclose that the
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`microprocessor in the SIM card performs processing of the received data and
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`causes transmission of the received or processed data; and, a person of ordinary
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`skill in the art would combine Whitley with the GSM standards documents because
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`there is an express teaching for the combination, because it is a combination of
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`well-known features that would yield predictable results, and because it would be
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`obvious to try to implement the processing in the processor of the SIM card
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`because there are only two possibilities and the outcome is predictable – that the
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`processing to determine an alarm condition as described in Whitley would be
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`performed in the processor of the SIM card. See second ‘717 Petition, concurrently
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`filed, p. 39-60.
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`8.
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`The present Motion and Petitioners’ second ‘717 Petition are being
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`filed just over six weeks before the Patent Owner’s first deadline, May 25, 2016,
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`under the Board’s Scheduling Order. IPR2015-01823, Paper 17.
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`9.
`Apart from the SIM Application Toolkit and the SIM API Spec.,
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`Petitioners rely on the same prior art in the second ‘717 Petition as in IPR2015-
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`01823.
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`III. Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to a previously
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`instituted IPR proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell
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`Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony
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`Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-
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`00326, Paper 15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109,
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`Paper 15, at 3-4; Target Corp. v. Destination Maternity Corp., IPR2014-00508,
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`Paper 28 at 5-19, Ariosa Diagnostics v. ISIS Innovation Limited, IPR2012-00022,
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`Paper 16 at 18-22, Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences,
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`Inc., IPR2014-00557, Paper 10 at 18, and ABB Inc. v. Roy-G-Biv Corp., IPR2013-
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`00286, Paper 14 at 4. In particular, in Target Corp. v. Destination Maternity Corp.,
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`the Board held that self-joinder is permissible. IPR2014-00508, Paper 28 at 5-19.
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`This request for joinder is timely, and the time periods set forth in 37 C.F.R.
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`§42.101(b) do not apply to Petitioners’’ second ‘717 Petition because it is
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`accompanied by this request for joinder. 35 U.S.C. § 315(c); 37 C.F.R. §
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`42.122(b). “The Board will determine whether to grant joinder on a case-by-case
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`basis, taking into account the particular facts of each case, substantive and
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`U.S. Patent No. 8,648,717
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`procedural issues, and other considerations.” Dell, IPR2013-0385, Paper 19, at 3.
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`As the moving party, Petitioners have the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
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`A motion for joinder should: (1) set forth the reasons why
`joinder is appropriate; (2) identify any new grounds of
`unpatentability asserted in the petition; (3) explains what
`impact (if any) joinder would have on the trial schedule for the
`existing review; and (4) address specifically how briefing and
`discovery may be simplified.
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`Dell, IPR2013-0385, Paper 19, at 4.
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`IV. Argument
`The Board should exercise its discretion and grant this Motion for Joinder of
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`the second ‘717 Petition with the already instituted IPR2015-01823 proceeding
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`because joinder provides a vehicle to efficiently all asserted claims with respect to
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`the art presented by the Petitioner and avoid wasteful litigation of the issues on a
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`claim by claim bases in both the PTAB and the district court.
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`A. This Motion for Joinder is Timely
`This motion is made within one month of the date the trial was instituted in
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`IPR2015-01823 as required by Rule 42.122(b). Trial was instituted on March 8,
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`2016 and the instant motion has been filed on or before April 8, 2016.
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`B. Multiple Reasons Show that Joinder Is Appropriate
`Joinder is appropriate here for reasons including efficiency, fairness, equity
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`and public policy. Joining the second ‘717 Petition with IPR2015-01823 will
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`allow for numerous efficiencies in these proceedings. Petitioners’ second ‘717
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`Petition challenges claims 2, 7, 14 and 30 based on a combination of Whitley with
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`the SIM+ME Spec., and the SIM Application Toolkit, and/or the SIM API Spec.
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`As set forth in the second ‘717 Petition, Whitley in view of the SIM+ME Spec., the
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`SIM Application Toolkit and/or SIM API disclose that the “processing module” of
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`the independent claims also performs the additional functions of dependent claims
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`2, 7, 14, and 30 that the Board found lacking in IPR2015-01823, (see Paper 16 at
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`25-26). Moreover, the Supreme Court has made clear that there is a strong public
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`policy in favor of rooting out invalid patents. See Medtronic, Inc. v. Mirowski
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`Family Ventures, LLC, 143 S.Ct. 843, 851-52 (2014); Lear, Inc. v. Adkins, 395
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`U.S. 653, 656, 670 (1969). For these reasons, further discussed below, good cause
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`exists for joinder.
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`1. Considerations of Efficiency Support Joinder
`Several factors support that joinder will allow for efficiencies in these
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`proceedings. First, all of the petitions in question involve the same parties and the
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`same patent, the ‘717 Patent. Second, the second ‘717 Petition challenges claims
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`2, 7, 14 and 30, which were also challenged in IPR2015-01823. The Board is
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`already familiar with the claimed subject matter and has already addressed the
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`construction of the challenged claims in its decision instituting trial in IPR2015-
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`01823. Third, other than the SIM Application Toolkit and the SIM API Spec., the
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`second ‘717 Petition relies on the same prior art as IPR2015-01823. Thus, the
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`Board is already familiar with all but two of the references cited in the second ‘717
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`Petition. See, e.g., Ariosa Diagnostics v. Isis Innovation Ltd., IPR2013-00250,
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`Paper 24, at 5 (permitting joinder in part because “[t]here is an overlap in the cited
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`prior art.”). Fourth, the second ‘717 Petition relies, in part, on a declaration of
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`Kevin Negus, the same expert who has provided an expert declaration in support of
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`Petitioners’ arguments in IPR2015-01823.
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`Thus, joinder is appropriate for all these reasons and due to the efficiencies
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`resulting from the substantial overlap between the second ‘717 Petition and the
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`instituted proceedings.
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`2. Public Policy Considerations Support Joinder
`Joinder is further supported by public policy considerations and the public
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`interest in seeing invalid patents formally invalidated. The Board is charged with
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`considering the “effect… on the economy” and “the integrity of the patent system”
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`among other considerations, when implementing and applying its rules, including
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`those relating to joinder. See 35 U.S.C. § 316(b); see also 37 C.F.R. § 1.56(a) (“A
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`patent by its very nature is affected with a public interest. The public interest is
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`best served… when, at the time an application is being examined, the Office is
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`aware of and evaluates the teachings of all information material to patentability.”).
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`There is an “important public interest in permitting full and free competition in the
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`use of ideas which are in reality a part of the public domain” and a corresponding
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`“strong federal policy favoring free competition in ideas which do not merit patent
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`protection.” Lear, 395 U.S. at 656, 670. The Supreme Court recently confirmed
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`these policies, stating that although the “public interest… favors the maintenance
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`of a well-functioning patent system,” “the ‘public’ also has a ‘paramount interest in
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`seeing that patent monopolies … are kept within their legitimate scope.’”
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`Medtronic, 134 S.Ct. at 851 (quoting Precision Instrument Mfg. Co. v. Auto.
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`Maint. Mach. Co., 324 U.S. 806, 816 (1945).
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`These important public policy considerations further support joinder,
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`because, as shown in the second ‘717 Petition, the four dependent claims of the
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`‘717 patent for which the Board did not institute trial in IPR2015-01823 are
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`invalidated by the combination of Whitley and the GSM standards documents.
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`3. Lack of Prejudice
`Finally, any prejudice to M2M will be minimal and certainly not undue.
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`Wasteful district court litigation can be avoided can be avoided by considering at
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`the Board the art presented on the four dependent claims in the second petition.
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`Because Petitioners have filed the present Motion, and its second ‘717 Petition,
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`over six weeks before M2M’s response to IPR2015-01823 is due, there is minimal
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`prejudice to Patent Owner.
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`C.
`Joinder Will Not Result in Unnecessary Delay
`Permitting joinder will not unduly affect the IPR2015-01823 proceedings.
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`As discussed above, the second ‘717 Petition presents similar grounds of invalidity
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`as presented in the original petition.
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`Further, Petitioner is willing to forfeit a reasonable portions of its response
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`period to the extent that it is deemed necessary to provide M2M sufficient time to
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`address issues raised in the second ‘717 Petition. Petitioners will also
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`accommodate any reasonable logistical or scheduling request of M2M in order to
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`accommodate joinder of the proceedings. Thus, joining the second ‘717 Petition
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`with IPR2015-01823 will not unduly delay resolution of these proceedings and will
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`help “secure the just, speedy, and inexpensive resolution” of the proceedings. See
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`37 C.F.R. § 41.1(b); see also 35 U.S.C. § 316(b).
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`V. Conclusion
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`For the foregoing reasons, Petitioners respectfully request that the Board
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`grant the present Motion and join Petitioners’ second ‘717 Petition with IPR2015-
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`01823 under Rule 42.122(b).
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`Respectfully submitted,
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`Dated: April 8, 2016
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`
`/Jennifer Hayes/
`Reg. No. 50,845
`Nixon Peabody LLP
`P.O. Box 60610
`Palo Alto, CA 94306
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`By:
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`Tel. (650) 320-7763
`Fax (650) 320-7701
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`U.S. Patent No. 8,648,717
`Motion for Joinder
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Motion for Joinder
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`to Related Instituted Inter Partes Review was served on April 8, 2016 by placing a
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`copy into FEDERAL EXPRESS directed to the attorneys of record for the patent at
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`the following address:
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`Sunstein Kann Murphy & Timbers LLP
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`Attn: Jonathan C. Lovely, Reg. No. 60,821
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`125 Summer Street
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`Boston MA 02110-1618
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`Counsel for Patent Owner, M2M SOLUTIONS LLC
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` A
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` courtesy copy of the Motion for Joinder to Related Instituted Inter Partes Review
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`was served in its entirety on April 8, 2016 by e-mail on the following individuals:
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`Jeffrey Costakos
`jcostakos@foley.com
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`Michelle Moran
`mmoran@foley.com
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`
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`By: /Jennifer Hayes/
`Counsel for Petitioner
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`11