UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. ________
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`SIERRA WIRELESS AMERICA, INC.,
`
`SIERRA WIRELESS, INC. and RPX CORP.,
`
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`_______________
`
`Case IPR2016-00853
`Patent 8,648,717
`_______________
`
`PATENT OWNER’S OPPOSITION TO 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
`
`
`
`
`
`
`
`Paper No. ________
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`SIERRA WIRELESS AMERICA, INC.,
`
`SIERRA WIRELESS, INC. and RPX CORP.,
`
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`_______________
`
`Case IPR2016-00853
`Patent 8,648,717
`_______________
`
`PATENT OWNER’S OPPOSITION TO 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
`
`I.
`
`II.
`
`OBJECTIONS TO STATEMENT OF MATERIAL FACTS ......................... 2
`
`BACKGROUND ............................................................................................. 2
`
`III. ARGUMENT ................................................................................................... 4
`
`A.
`
`Petitioner is not entitled to a “second bite at the apple” and fails
`to meet its burden that joinder is appropriate ........................................ 4
`
`i.
`
`ii.
`
`Joinder should be denied where the second-filed petition
`is an attempt to cure the deficiencies of the first-filed
`petition......................................................................................... 4
`
`Petitioner used the Board’s decision as a roadmap to
`attempt to address the deficiencies in its First Petition............... 6
`
`iii.
`
`Joinder is not appropriate for any of Petitioner’s reasons .......... 9
`
`Petitioner cites to decisions granting joinder that are not
`applicable to the circumstances of this case ........................................10
`
`Petitioner also fails to meet its burden of proof regarding
`impact on trial schedule and simplifications for briefing and
`discovery .............................................................................................12
`
`The Board should deny Petitioner’s Motion because the statute
`does not authorize joinder of the same party to an instituted
`IPR. ......................................................................................................14
`
`B.
`
`C.
`
`D.
`
`IV. CONCLUSION ..............................................................................................15
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286 (PTAB Aug. 9, 2013) ................... 12
`
`Apotech, Inc. v. Synopsys, Inc.,
`IPR2015-00760, (PTAB July 21, 2015) ............................................................... 8
`
`Ariosa Diagnostics v. ISIS Innovation Limited, IPR2013-00250 ............................ 11
`
`Butamax Adv. Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, (PTAB Oct. 14, 2014) ............................................................... 6
`
`Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385 (PTAB
`July 29, 2013)................................................................................................ 10, 12
`
`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-01620, (PTAB Feb. 2, 2016) ......................................................... 1, 5, 9
`
`Medtronic, Inc. et al. v. Endotach LLC,
`IPR2014-00695, (PTAB Sept. 25, 2014) .............................................................. 6
`
`Micro Motion, Inc. v. Invensys Systems, Inc.,
`IPR2014-01409, (PTAB Feb. 15, 2015) ............................................................... 5
`
`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109 (PTAB Feb. 25,
`2013) ................................................................................................................... 11
`
`Samsung Electronics Co., Ltd., et al. v. Affinity Labs of Texas, LLC,
`IPR2015-00820, (PTAB May 15, 2015) .............................................................. 5
`
`Samsung Electronics Co., Ltd., et al. v. Affinity Labs of Texas, LLC,
`IPR2015-00821, (PTAB May 15, 2015) .............................................................. 5
`
`Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc.,
`IPR2014-00557 (PTAB June 13, 2014) ............................................................. 11
`
`Skyhawke Tech., LLC v. L&H Concepts, LLC,
`IPR2014-01485, (PTAB Mar. 20, 2015) ............................................................ 14
`
`
`
`ii
`
`
`
`Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of
`Jerusalem, IPR2013-00326 (PTAB Sept. 24, 2013) .................................... 10, 11
`
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00907, slip op. (PTAB Dec. 1, 2014).................................................... 5
`
`Target Corp. v. Destination Maternity Corp., IPR2014-00508 (PTAB
`Feb. 12, 2015) ............................................................................................... 11, 14
`
`Statutes
`
`35 U.S.C. § 102(b) ..................................................................................................... 2
`
`35 U.S.C. § 315(b) ............................................................................................. 1, 4, 5
`
`35 U.S.C. § 315(c) ........................................................................................... 1, 4, 14
`
`35 U.S.C. § 325(d) ..................................................................................................... 6
`
`
`
`Other Authorities
`
`37 C.F.R. § 42.20(c) ................................................................................................... 4
`
`
`
`
`
`iii
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
`
`
`Patent Owner, M2M Solutions LLC (“M2M”), respectfully requests
`
`that the Board deny Sierra Wireless America Inc.’s, Sierra Wireless Inc.’s and
`
`RPX Corp.’s (collectively, “Petitioner”) Motion for Joinder to Related Instituted
`
`Inter Partes Review (“Motion”) filed on April 8, 2016. (Paper 4.) Petitioner’s
`
`Motion seeks to join IPR2016-00853 (“Second Petition”) filed April 8, 2016, to
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`IPR2015-01823 (“First Petition”), instituted by the Board on March 8, 2016.
`
`Petitioner seeks joinder because its Second Petition is time barred under 35 U.S.C.
`
`§ 315(b) as it was filed more than one year after Petitioner was served with a
`
`complaint alleging infringement of U.S. Patent No. 8,648,717. Further, the Second
`
`Petition challenges the same four claims from the ’717 patent that the Board denied
`
`instituting trial on that Petitioner challenged in the First Petition. However, the
`
`Board has used its discretion under 35 U.S.C. § 315(c) repeatedly to deny joinder
`
`when a petitioner uses a prior institution as a guide to remedy deficiencies in the
`
`first petition. See, e.g., LG Electronics, Inc. v. ATI Technologies ULC, IPR2015-
`
`01620, slip op. at 10-11 (PTAB Feb. 2, 2016) (Paper 10).
`
`Consistent with Board precedent, the Board should deny Petitioner’s
`
`Motion. Petitioner’s Second Petition is nothing more than an attempt at a “second
`
`bite at the apple” and Petitioner is not entitled to cure the deficiencies of its First
`
`Petition to again challenge claims 2, 7, 14, and 30 of the ’717 patent. The facts of
`
`this case and Petitioner’s arguments do not support its Motion, but instead weigh
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`1
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`heavily against joinder. Petitioner’s Motion fails to provide any valid reason to
`
`grant joinder, nor does the Motion address similar cases holding joinder
`
`inappropriate. Finally, contrary to Petitioner’s unsupported conclusory statement,
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`joinder will substantially prejudice M2M. The Board should deny the Motion.
`
`I.
`
`OBJECTIONS TO STATEMENT OF MATERIAL FACTS
`
`1. M2M does not object to Petitioner’s Material Fact Nos. 1-4, and 8-9.
`
`2. M2M objects to Petitioner’s Material Fact No. 5 as it pertains to
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`SIM+ME Spec, SIM Application Toolkit, and SIM API qualifying as prior art to
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`the ’717 patent under 35 U.S.C. § 102(b).
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`3. M2M objects to Petitioner’s Material Fact No. 6 to the extent it
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`mischaracterizes the limitations of claims 2, 7, 14, and 30.
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`4. M2M objects to Petitioner’s assertions in Material Fact No. 7
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`regarding disclosures by the Whitley, SIM+ME Spec, SIM Application Toolkit,
`
`and SIM API references. Further, M2M objects to Petitioner’s assertion that one
`
`of ordinary skill in the art would combine Whitley with the GSM standards.
`
`II. BACKGROUND
`M2M filed its complaint against Petitioner for infringement of the ’717
`
`patent in the District Court of Delaware on August 26, 2014. Petitioner filed
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`IPR2015-01823 on August 26, 2015, challenging claims 1-3, 5-7, 10-24, 29 and 30
`
`based on the following grounds:
`
`2
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`
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`Ground Claims
`1
`1-3, 5-7, 10-15, 18,
`22-24, 29-30
`1-3, 5-7, 10-15, 18,
`22-24, 29-30
`
`2
`
`Description
`Rendered obvious under 35 U.S.C. § 103(a)
`over Whitley in view of SIM+ME Spec.
`Rendered obvious under 35 U.S.C. § 103(a)
`over Whitley in view of SIM+ME Spec. and
`Admitted Prior Art
`Rendered obvious under 35 U.S.C. § 103(a)
`over Whitley in view of SIM+ME Spec. and
`further in view of Kail
`Rendered obvious under 35 U.S.C. § 103(a)
`over Whitley in view of SIM+ME Spec. and
`further in view of Eldredge
`
`16-17, 19-20
`
`21
`
`3
`
`4
`
`
`
`(IPR2015-01823, Paper 1, (First Petition) at 6).
`
`The Board instituted trial on claims 1, 3, 5, 6, 10-13, 15-24 and 29 and denied trial
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`for claims 2, 7, 14, and 30.
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`On April 8, 2016, over 19 months after being served with the complaint,
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`(more than seven months after the one-year time bar), Petitioner filed its Second
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`Petition challenging again the same claims that the Board denied instituting trial on
`
`in the First Petition. In the Second Petition, Sierra Wireless asserts the exact same
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`two references against claim 2 as it did in the First Petition, added one new
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`reference to the prior asserted references to challenge claims 7 and 14, and added
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`two new references to challenge claim 30.
`
`Ground Claims Description
`1
`2
`Rendered obvious under 35 U.S.C. § 103(a) over Whitley
`in view of SIM+ME Spec.
`Rendered obvious under 35 U.S.C. § 103(a) over Whitley
`in view of SIM+ME Spec. and further in view of the SIM
`
`7 and
`14
`
`2
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`3
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`
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`3
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`30
`
`Application Tool Kit
`Rendered obvious under 35 U.S.C. § 103(a) over Whitley
`in view of SIM+ME Spec. further in view of the SIM
`Application Tool Kit and the SIM API Spec
`
`
`(IPR2016-00853, Paper 1, (Second Petition) at 8-9.)
`
`
`After institution of a related IPR, the Board amended the schedule for the
`
`First Petition (IPR2015-01823, Paper 19) to set the hearing date for the First
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`Petition to be the same as the hearing date for the related inter partes review
`
`instituted on April 22, 2016. (IPR2015-00055, Paper 10.)
`
`III. ARGUMENT
`
`A.
`
`Petitioner is not entitled to a “second bite at the apple” and fails
`to meet its burden that joinder is appropriate
`
`The Board should deny Petitioner’s Motion because Petitioner is not entitled
`
`to use the prior institution decision as a roadmap to take a “second bite at the
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`apple.” Further, Petitioner fails to meet its burden under 37 C.F.R. § 42.20(c) to
`
`demonstrate that joinder is appropriate. Accordingly, the Board should exercise its
`
`discretion under § 315(c) to deny Petitioner’s Motion and dismiss the Second
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`Petition, which is untimely under § 315(b).
`
`i.
`
`Joinder should be denied where the second-filed petition is
`an attempt to cure the deficiencies of the first-filed petition
`
`The Board has repeatedly denied joinder when a petitioner attempts to use a
`
`prior institution decision to remedy deficiencies in the first-filed petition –
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`4
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`particularly where, as here, the petitioner does not offer any explanation why the
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`arguments were not offered during the first-filed petition and where the second-
`
`filed petition would be time-barred under 35 U.S.C. § 315(b). See, e.g., LG
`
`Electronics, IPR2015-01620, slip op. at 10-11 (“Petitioner now presents arguments
`
`that the Petitioner could have made in the First Petition, had it chosen to do so.
`
`The Petition is aimed at matters identified in the Decision to Institute in [the First
`
`Petition] as not adequately addressed to justify inter partes review.”); Samsung
`
`Electronics Co., Ltd., et al. v. Affinity Labs of Texas, LLC, IPR2015-00820, slip op.
`
`at 4 (PTAB May 15, 2015) (Paper 12) (petitioner provided no reason why the
`
`reference “could not have been identified and relied on in earlier, timely-filed
`
`petitions” and sought to use a prior decision “as guide to remedy deficiencies in
`
`the earlier filed petition”); Samsung Electronics Co., Ltd., et al. v. Affinity Labs of
`
`Texas, LLC, IPR2015-00821, slip op. at 4-5 (PTAB May 15, 2015) (Paper 10);
`
`Micro Motion, Inc. v. Invensys Systems, Inc., IPR2014-01409, slip op. at 14 (PTAB
`
`Feb. 15, 2015) (Paper 14); Standard Innovation Corp. v. Lelo, Inc. , IPR2014-
`
`00907, slip op. at 3-4, 10-11 (PTAB Dec. 1, 2014) (Paper 10).
`
`Further, the Board has denied joinder under these circumstances even when
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`the patent owner does not oppose the motion. Where “the § 315(b) bar would
`
`apply absent joinder, [the Board] hesitate[s] to allow a petitioner a second bite one
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`month after institution in a first case, at the expense of scheduling constraints for
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`5
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`everyone, as well as additional costs (and potential prejudice) to Patent Owner,
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`absent a good reason for doing so.” Medtronic, Inc. et al. v. Endotach LLC,
`
`IPR2014-00695, slip op. at 4 (PTAB Sept. 25, 2014) (Paper 18).
`
`Additionally, the Board has exercised its discretion under § 325(d), denying
`
`institution of an inter partes review and dismissing the motion for joinder as moot
`
`where “the obviousness grounds asserted in the present Petition are expressly
`
`intended to ‘squarely address[] the alleged deficiencies identified by the Board’ …
`
`the four obviousness grounds are ‘second bites at the apple,’ which use [the
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`Board’s] prior decision as a road map to remedy [petitioner’s] prior, deficient
`
`challenge.” Butamax Adv. Biofuels LLC v. Gevo, Inc., IPR2014-00581, slip op. at
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`12-13 (PTAB Oct. 14, 2014) (Paper 8).
`
`ii.
`
`Petitioner used the Board’s decision as a roadmap to
`attempt to address the deficiencies in its First Petition
`
`Here, Petitioner’s Second Petition is directly aimed at curing the deficiencies
`
`in its First Petition regarding claims 2, 7, 14, and 30, which it acknowledges in its
`
`Motion.
`
`As set forth in the second ’717 Petition, Whitley in view of the
`SIM+ME Spec., and the SIM Application Toolkit, and/or the SIM
`API Spec., disclose that the “processing module” of the independent
`claims also performs the additional functions of dependent claims 2,
`7, 14, and 30 that the Board found lacking in IPR2015-01823.
`(Motion at 6 (emphasis added).)
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`6
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`
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`The reason the Board denied institution of an inter partes review of claims
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`2, 7, 14, and 30 in the First Petition was due to Petitioner’s complete failure to
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`explain how the reference disclosed the limitation in the dependent claims.
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`[W]ith respect to each of dependent claims 2, 7, 14, and 30, Petitioner
`simply provides a block quote from Whitley with no explanation.
`Petitioner does not provide any explanation reconciling its reliance on
`the SIM Specification for teaching the ‘processing module’ of the
`independent claims with its reliance on Whitley for teaching the
`‘processing module’ limitations of claims 2, 7, 14, and 30.”
`(IPR2015-01823, Paper 16 at 26 (citations omitted).)
`
`The Second Petition addresses this lack of explanation regarding the
`
`“processing module” limitations of claims 2, 7, 14, and 30. This second bite at the
`
`apple by Petitioner for these claims requires four full pages of explanation for
`
`claim 2, nearly seven pages and an additional reference for claims 7 and 14, and
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`nearly ten pages for claim 30.1 (Second Petition, pp. 39-60.)
`
`
`1 M2M notes that if Petitioner had included the extensive explanations regarding
`
`claims 2, 7, 14, and 30 in the First Petition, they would have exceeded the page
`
`limitation by over fifteen pages, thus not only is the Second Petition a second bite
`
`at the apple, it also effectively circumvents the page limit rule.
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`7
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`
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`Petitioner offers no reason why it was unable to make the arguments it offers
`
`in the Second Petition at the time it filed its First Petition. Strikingly, Petitioner
`
`does not even change the ground for claim 2, but uses the exact same two
`
`references to challenge claim 2. But in its do-over Petitioner offers much more
`
`extensive explanation. (Second Petition, pp. 39-43.) Also, Petitioner admits that
`
`the additional references are part of a body of GSM standards documents related to
`
`SIM technology. (Second Petition, pp. 2-3.) Petitioner had relied on one GSM
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`document in the First Petition, the SIM+ME Spec. (Ex. 1004), and offers no
`
`explanation why it did not rely on the SIM Application Toolkit (Ex. 1014) or the
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`SIM API (Ex. 1019) in the First Petition. As informed by the Board’s decision for
`
`the First Petition, Petitioner added these references to address the First Petition’s
`
`inadequacies. The Second Petition is nothing more than an attempted do-over by
`
`Petitioner, and Petitioner’s Motion should be denied
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`The Board has stated that it is concerned about encouraging the filing of
`
`partially inadequate petitions. See Apotech, Inc. v. Synopsys, Inc., IPR2015-00760,
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`slip op at 8-9 (PTAB July 21, 2015) (Paper 14). The Board stated that “permitting
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`second chances without constraint undermines judicial efficiency by expending the
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`Board’s limited resources on issues that were not presented adequately the first
`
`time around.” Id. Particularly where “the [second] petition simply presents
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`arguments that reasonably could have been made in [the first petition], but were
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`8
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`not.” Id. Accordingly, the Board should deny Petitioner’s attempt to use a Second
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`Petition to cure the inadequate arguments presented in the First Petition.
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`iii.
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`Joinder is not appropriate for any of Petitioner’s reasons
`
`Petitioner provides only conclusory statements regarding the supposed
`
`efficiencies of joinder, public policy concerning joinder, and prejudice to M2M.
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`(Motion, 6-8.) In fact Petitioner’s argument for efficiency supports the opposite
`
`conclusion: joinder is not appropriate. Petitioner has already had its opportunity to
`
`challenge claims 2, 7, 14, and 30, which is why the Board is familiar with the
`
`issues, and the only reason there are two more references is because the Board
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`identified deficiencies in the First Petition.
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`Petitioner’s argument fails to consider the public policy considerations that
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`“[t]he Board is concerned about encouraging, unnecessarily, the filing of petitions
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`that are partially inadequate.” LG Electronics, IPR2015-01620, slip op. at 8. Where
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`a “[p]etition now presents arguments that the Petitioner could have made in the
`
`First Petition, had it chosen to do so,” joinder is not appropriate. Id. at 10-11.
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`Finally Petitioner’s statement (Motion at 8) that M2M would suffer only
`
`minimal prejudice that was “certainly not undue” is completely unsupported and
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`wrong. Filing the Motion and Second Petition seven months after the First Petition
`
`and six weeks before the deadline for the patent owner response to the First
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`Petition results in substantial prejudice. M2M has already filed a preliminary
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`9
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`response to the First Petition, which had inadequately addressed claims 2, 7, 14,
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`and 30. Now M2M will have to address those claims again in its preliminary
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`response to the Second Petition under the new rules allowing patent owners to
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`submit evidentiary support in their preliminary responses.
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`B.
`
`Petitioner cites to decisions granting joinder that are not
`applicable to the circumstances of this case
`
`The decisions to grant joinder cited by Petitioner in its Motion do not
`
`support Petitioner’s arguments or circumstances. In Dell Inc. v. Network-1 Sec.
`
`Solutions, Inc., IPR2013-00385 (PTAB Jul. 29, 2013) (Paper 17), joinder was
`
`granted to a petition filed by a different party, Avaya. The Board granted joinder
`
`because Dell’s petition asserted the “same grounds as those on which trial was
`
`instituted” and “submitted a declaration from the same declarant.” Id., slip op. at 7.
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`Here, Petitioner is the same party and the Second Petition is not offering the same
`
`grounds that were instituted in the First Petition.
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`In other decisions cited by Petitioner, joinder was granted as an equitable
`
`remedy for petitioner due to changed circumstances either in the related district
`
`court litigation or petitioner’s products. In Sony Corp. v. Yissum Res. & Dev. Co. of
`
`the Hebrew Univ. of Jerusalem, IPR2013-00326 (PTAB Sep. 24 2013) (Paper 15),
`
`the patent owner identified specific claims in the district court litigation after the
`
`first petition was filed, and the petitioner timely filed the second petition
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`10
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`challenging these newly identified claims. Id., slip op. at 6. Likewise in Microsoft
`
`Corp. v. Proxyconn, Inc., IPR2013-00109 (PTAB Feb. 25, 2013) (Paper 15), the
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`petitioner filed its “second Petition after learning that additional claims were being
`
`asserted by Patent Owner in concurrent district court litigation.” Id., slip op. at 3.
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`M2M has not asserted any additional claims, and as discussed above, the claims in
`
`the Second Petition were already challenged in the First Petition.
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`In Target Corp. v. Destination Maternity Corp., IPR2014-00508 (PTAB
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`Feb. 12, 2015) (Paper 28), the second petition’s grounds relied on a reference that
`
`“was withheld from Petitioner” by the patent owner in the district court litigation
`
`until after the first petition had been filed. Id., slip op. at 3. Here, M2M has not
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`disclosed any new reference to Petitioner; rather, Petitioner has located additional
`
`references. Nor has Petitioner brought a new product to market that might warrant
`
`concern that M2M would add claims to its infringement complaint that were not
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`challenged in the first-filed petition. Ariosa Diagnostics v. ISIS Innovation
`
`Limited, IPR2012-00250, Paper 4 at 3.
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`Finally, Petitioner cited to decisions that contained circumstances that
`
`joinder supported efficiency, for example due to identical references asserted in the
`
`two petitions. See Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences,
`
`Inc., IPR2014-00557 (PTAB June 13, 2014) (Paper 10). Here, Petitioner offers two
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`new references in the Second Petition that the Board and M2M will need to
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`11
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`address. The Board has also granted joinder when the patent owner did not oppose
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`joinder and waived its preliminary response reducing scheduling difficulties. ABB
`
`Inc. v. Roy-G-Biv Corp., IPR2013- 00286 (PTAB Aug. 9, 2013) (Paper 14). Here,
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`M2M opposes joinder and will not waive its preliminary response, particularly
`
`with the new rules in force as of May 2, 2016 allowing the patent owner to present
`
`testimonial evidence along with their preliminary response. Further, the scheduled
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`oral hearing date for First Petition is now the same as for related IPR2016-00055,
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`which creates more complications to any schedule changes due to joinder of the
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`Second Petition.
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`C.
`
`Petitioner also fails to meet its burden of proof regarding impact
`on trial schedule and simplifications for briefing and discovery
`
`Petitioner correctly cites the requisite contents of a motion for joinder.
`
`(Motion at 5.) However, in addition to failing to meet its burden to set forth
`
`reasons why joinder is appropriate as discussed above, Petitioner also fails to meet
`
`its burden of proof for explaining the impact joinder would have on the trial
`
`schedule for the existing review or to address specifically how briefing and
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`discovery may be simplified. Dell, IPR2013-00385, slip op. at 4.
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`To address potential impact on the trial for the First Petition, all Petitioner
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`offers is a vague offer to “forfeit a reasonable portions [sic] of its response period
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`to the extent that it is deemed necessary to provide M2M sufficient time” and to
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`12
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
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`“accommodate any reasonable logistical or scheduling request of M2M.” Yet, the
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`schedule for the First Petition is set. The dates are known. Petitioner offers
`
`nothing specific as to how the schedule for a second trial, which if instituted,
`
`would not start until October, after Dates 1-4 have passed in the Amended
`
`Scheduling Order in the first trial, would fit with the schedule for the existing trial.
`
`(IPR2015-01823, Paper 19) In a typical trial schedule, M2M’s response to the
`
`Second Petition would not be due until December, likely after the date set for the
`
`oral argument in for the first trial. Petitioner’s failure to address the impact of
`
`joinder on the trial schedule of the first review thus falls far short of meeting its
`
`burden of proof and the Board should deny the Motion for Joinder.
`
`Petitioner also does not meet its burden of proof to address specifically how
`
`briefing and discovery may be simplified. In fact, the Motion is silent as to this
`
`requirement. The addition of two new grounds and two new references does not
`
`lend itself to simplifying the existing briefing or discovery, rather it adds
`
`complexity and burden on M2M. At a minimum, in addition to the additional
`
`briefing required to respond to the Second Petition, M2M will need to take a
`
`second deposition of Petitioner’s expert (who is located in Montana), and M2M
`
`will need to prepare a second declaration of its own expert to address the new
`
`arguments and offer that expert for a second deposition. Accordingly, as Petitioner
`
`has failed to meet its burden of proof, the Board should deny the Motion
`
`13
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
`
`
`D. The Board should deny Petitioner’s Motion because the statute
`does not authorize joinder of the same party to an instituted IPR.
`
`While joinder of the Second Petition is not appropriate for the reasons
`
`discussed above, joinder of Petitioner to its own inter partes review is also
`
`impermissible under a proper interpretation of 35 U.S.C. § 315(c). M2M
`
`recognizes that different Board panels have come to contrary positions on the issue
`
`of same party joinder. See, e.g., Target Corp., IPR2014–00508 (Paper 28);
`
`Skyhawke Tech., LLC v. L&H Concepts, LLC, IPR2014-01485, slip op. at 3-4
`
`(Mar. 20, 2015) (Paper 13). However, M2M asserts that the statute does not allow
`
`joinder of a petitioner that is already a party to the instituted review. See Skyhawke,
`
`slip op. at 3. In particular § 315(c) provides: “If the Director institutes an inter
`
`partes review, the Director, in his or her discretion, may join as a party to that inter
`
`partes review any person who properly files a petition under section 311.”
`
`Petitioner is already a party to IPR2015-01823, thus, Petitioner’s joinder motion is
`
`improper: a “person cannot be joined as a party to a proceeding in which it is
`
`already a party.” See Skyhawke, slip op at 3-4. Thus, granting Petitioner’s Motion
`
`requires the Board to exceed the Board’s statutory authority for the purpose of
`
`joinder. Id. Accordingly, the Board should deny Petitioner’s Motion.
`
`14
`
`
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
`
`IV. CONCLUSION
`
`
`Petitioner not entitled to a second bite at the apple to cure the
`
`deficiencies identified by the Board in the first-filed petition. Petitioner offers no
`
`explanation why the arguments and additional references were not presented in
`
`their First Petition. M2M would be prejudiced if joinder were granted, thus
`
`allowing for the time-barred Second Petition to be considered for institution. For
`
`at least these reasons, M2M respectfully requests the Board to deny Petitioner’s
`
`Motion for Joinder.
`
`
`
`
`
`Dated: May 9, 2016
`
`Respectfully Submitted,
`
`
`
`/s/ Jeffrey N. Costakos
`
`Jeffrey N. Costakos
`Registration Number 34,144
`Attorney for Patent Owner
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, WI 53202-5306
`Telephone: 414-297-5782
`Email: jcostakos@foley.com
`
`
`
`15
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00853
`
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the above-captioned Patent Owner’s
`Opposition to Motion for Joinder was served in its entirety on May 9, 2016, upon
`the following parties via e-mail:
`
`FOLEY & LARDNER LLP
`
`
`
`jenhayes@nixonpeabody.com
`rflopez@nixonpeabody.com
`patentSV@nixonpeabody.com
`
`
`
`
`
`Date: May 9, 2016
`
`/s/ Michelle A. Moran
`
`
`
`Michelle A. Moran
`Pro Hac Vice Pending
`Back-up Attorney for Patent Owner
`M2M Solutions LLC
`
`777 East Wisconsin Avenue
`Milwaukee, WI 53202-5306
`Telephone: 414-297-5629
`E-mail: mmoran@foley.com
`
`
`
`16
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