UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. ________
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`SIERRA WIRELESS AMERICA, INC.,
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`SIERRA WIRELESS, INC. and RPX CORP.,
`
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`_______________
`
`Case IPR2016-01073
`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
`
`4850-2709-9187.1
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`
`
`
`
`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 IPR2016-01073
`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
`
`4850-2709-9187.1
`
`
`
`
`
`TABLE OF CONTENTS
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`I.
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`II.
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`OBJECTIONS TO STATEMENT OF MATERIAL FACTS ......................... 2
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`BACKGROUND ............................................................................................. 2
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`III. ARGUMENT ................................................................................................... 2
`
`A.
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`Petitioner also fails to meet its burden of proof regarding
`impact on trial schedule and simplifications for briefing and
`discovery ............................................................................................... 2
`
`IV. CONCLUSION ................................................................................................ 5
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`4850-2709-9187.1
`
`i
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Samsung Electronics Co., Ltd., et al. v. Arendi S.A.R.L.,
`IPR2014-01142, (PTAB Oct. 2, 2014) ............................................................. 3, 4
`
`Statutes
`
`35 U.S.C. § 315(b) ................................................................................................. 3, 4
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`Other Authorities
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`37 C.F.R. § 42.20(c)
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`37 C.F.R. § 42.122(b) ................................................................................................ 5
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`
`
`4850-2709-9187.1
`
`ii
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01073
`
`
`Patent Owner, M2M Solutions LLC (“M2M”), respectfully requests that the
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`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 May 19, 2016. (Paper 2.) Petitioner’s Motion
`
`seeks to join IPR2016-01073 (“SW Petition”) filed May 19, 2016, to IPR2015-
`
`00055 (“Telit Petition”), filed by Petitioner Telit Wireless Solutions Inc. and Telit
`
`Communications PLC (collectively, “Telit”), instituted by the Board on April 22,
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`2016. Petitioner seeks joinder because its SW Petition is time barred under 35
`
`U.S.C. § 315(b), as it was filed more than one year after Petitioner was served with
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`a complaint alleging infringement of U.S. Patent No. 8,648,717.
`
`Where a petition is time barred and petitioner has failed to meet its burden
`
`why joinder is appropriate, the Board has denied motions for joinder. Samsung
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`Electronics Co., Ltd., et al. v. Arendi S.A.R.L., IPR2014-01142, slip op. at 7,
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`(PTAB Oct. 2, 2014) (Paper 11). Consistent with Board precedent, the Board
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`should deny Petitioner’s Motion. Contrary to Petitioner’s unsupported conclusory
`
`statement, joinder will substantially prejudice M2M. The Board should deny the
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`Motion. At most, the Board should permit joinder only on the condition that
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`Petitioner not file any briefs or other papers in this action or participate in
`
`depositions or the final hearing.
`
`
`
`4850-2709-9187.1
`
`
`
`1
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01073
`
`I.
`
`OBJECTIONS TO STATEMENT OF MATERIAL FACTS
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`1. M2M does not object to Petitioner’s Material Fact Nos. 1-8.
`
`II. BACKGROUND
`M2M filed its complaint against Petitioner for infringement of the ’717
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`patent in the District Court of Delaware on August 26, 2014. On April 22, 2016,
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`the Board instituted trial on claims 1-24 and 29 and denied trial for claims 25-28
`
`and 30 in IPR2016-00055, the Telit Petition. On May 19, 2016, nearly 21 months
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`after being served with the complaint (nearly nine months after the one-year time
`
`bar), Petitioner filed its SW Petition challenging the same claims that the Board
`
`instituted trial on in the Telit Petition.
`
`III. ARGUMENT
`
`A.
`
`Petitioner fails to meet its burden of proof regarding impact on
`trial schedule and simplifications for briefing and discovery
`
`The Board has denied motions for joinder where the petition has failed to
`
`discuss any specific impact on the schedule in the instituted petition, failed to set
`
`forth how briefing and discovery may be simplified, nor offered evidence that the
`
`petitioner in the instituted petition has agreed to coordinate with the second
`
`petitioner. See Samsung, IPR2014-01142, slip op. at 5 (Paper 11). Here, Petitioner
`
`likewise fails to meet its burden, and the Board should deny Petitioner’s motion for
`
`joinder and deny institution of its petition as barred by statute. 35 U.S.C. § 315(b).
`
`4850-2709-9187.1
`
`2
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01073
`
`
`As the moving party, Petitioner has the burden of proof establishing
`
`entitlement to the request for joinder. 37 C.F.R. §§ 42.20(c), 42.122(b). While
`
`Petitioner correctly cites the requisite contents of a motion for joinder (Motion at
`
`5), Petitioner fails to meet these requirements. Specifically, Petitioner fails to
`
`“explain[] what impact (if any) joinder would have on the trial schedule for the
`
`existing review.” (Id.) Nor does Petitioner completely “address specifically how
`
`briefing and discovery may be simplified.” (Id.) First, Petitioner merely states
`
`“joinder should not affect the timing of the Telit IPR or the content of Patent
`
`Owner’s response.” (Motion at 8.) However, Petitioner does not explain why its
`
`motion for joinder will not affect the timing of the Telit IPR.
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`Further, Petitioner wrongly minimizes the impact of its motion and petition
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`on M2M stating “[a]lso there should not be an additional cost to Patent Owner or
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`Telit given the overlap in the petitions.” (Id.) This statement is wrong.1 Even
`
`with the overlap in the SW Petition and the Telit Petition, M2M will still incur
`
`costs to prepare responses to Petitioner’s separate filings in the SW Petition.
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`Petitioner has suggested that it should be entitled to file “separate filings, if any, of
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`a reasonable number of pages (e.g., seven pages) directed only to points of
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`1 Note that M2M has already incurred additional costs to oppose the motion and to
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`prepare and file a preliminary response to this petition.
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`4850-2709-9187.1
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`3
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01073
`
`disagreement with Telit.” (Motion at 11.) M2M will be prejudiced by any
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`additional briefing by Petitioner as this will necessitate M2M to prepare responses
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`to Petitioner and incur related costs.
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`Petitioner also falls short of addressing how discovery and briefing will be
`
`simplified. As stated above, Petitioner requests an additional “reasonable number
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`of pages” where it does not agree with Telit. This is unlikely to simplify the
`
`briefing. On the contrary, M2M would be required to respond to the conflicting
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`positions of Telit and Petitioner. Moreover, nowhere in its Motion does Petitioner
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`indicate whether it has consulted Telit regarding coordinating their petitions, even
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`though Petitioner states that it will “coordinate with Telit to consolidate filings,
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`manage questioning at depositions, manage presentations at the hearing, ensure
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`that briefing and discovery occur within the time normally allotted, and avoid
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`redundancies.” (Id.) Nor has Petitioner contacted the Board, M2M and Telit to
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`discuss the joinder request, contrary to the Board’s suggestion that a party
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`interested in joinder do so prior to filing. See “Frequently Asked Questions H5,”
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`Finally, Petitioner’s argument that it is the party at risk for prejudice is
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`without support. Petitioner’s claims that “[a]bsent joinder, if Patent Owner and
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`Telit settle, Petitioners may be forced to start over in district court with the same or
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`similar arguments on which Telit has already shown it reasonably likely to prevail”
`4
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`4850-2709-9187.1
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`
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01073
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`(id. at 7) and that “absent joinder, Patent Owner may attempt to use aspects of the
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`Telit IPR against Sierra Wireless in district court, even though Sierra Wireless was
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`not able to participate in the Telit IPR to protect its interests” (id. at 8) are not part
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`of the analysis for a motion for joinder. Petitioner could have raised the arguments
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`offered in the Telit Petition within the one-year time frame provided by the statute,
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`but did not, and now claims entitlement to cure its deficiency by joinder to the
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`Telit Petition, which is not an appropriate argument for joinder. Even if these
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`arguments had some merit, however, they do not outweigh the prejudice to M2M
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`in having to prepare separate responses to Petitioner’s filings.
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`IV. CONCLUSION
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`M2M would be prejudiced if joinder were granted. M2M respectfully
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`requests the Board to deny Petitioner’s Motion for Joinder. If the Board is inclined
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`to grant joinder, M2M requests that Petitioner not be permitted to file separate
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`pleadings or to participate in depositions or the final hearing.
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`Dated: June 20, 2016
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`
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`
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`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
`
`
`
`4850-2709-9187.1
`
`5
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`
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01073
`
`
`
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`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 June 20, 2016, upon
`the following parties via e-mail:
`
`FOLEY & LARDNER LLP
`
`
`
`jenhayes@nixonpeabody.com
`rflopez@nixonpeabody.com
`patentSV@nixonpeabody.com
`
`
`
`
`
`Date: June 20, 2016
`
`/s/ Michelle A. Moran
`
`
`
`4850-2709-9187.1
`
`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
`
`
`
`6
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