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.
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`Petitioners
`v.
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`M2M SOLUTIONS LLC
`Patent Owner
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`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
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`Inter Partes Review No. IPR2016-01073
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`PETITIONERS’ REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
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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.
`
`Petitioners
`v.
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`M2M SOLUTIONS LLC
`Patent Owner
`
`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
`
`Inter Partes Review No. IPR2016-01073
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`PETITIONERS’ REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`I.
`Introduction
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`The Board has routinely granted joinder under 35 U.S.C. §315(c) of
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`“copycat” petitions under similar circumstances. Joinder is proper here because it
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`would result in increased efficiencies, would prevent an invalid patent from being
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`asserted in litigation, and because M2M has not demonstrated that it would suffer
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`any harm or prejudice.
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`II. Argument
`Petitioners’ Petition in this case is identical to the Petition filed by Telit as to
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`the grounds on which the Board granted institution. IPR2016-01073, Paper 2, p. 3,
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`Statement of Fact (SOF) 7. It relies on the same prior art references, arguments
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`and evidence as the Telit Petition. Id. Accordingly, the prior art references,
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`evidence and arguments are identical. No additional work is required to review this
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`petition, and joinder is routinely granted when such “copycat” petitions are filed.
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`See, e.g., Cisco, IPR2015-01397, Paper 9, pp. 2-3; Hyundai, IPR2014-01543,
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`Paper No. 11, pp. 5; Dell, IPR2013-00385, Paper No. 17, pp. 8-10; Motorola,
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`IPR2013-00256, Paper 10, pp. 8-10.
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`M2M cites Samsung (IPR2014-01142) as a basis for denying the motion for
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`joinder. However, the joinder issues in this case differ substantially from the
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`joinder issues in IPR2014-00208. Cf. IPR2016-01073, Paper 2 and IPR2014-
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`001142, Paper 11. In Samsung, Samsung’s joinder motion was denied because
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`1
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`Samsung’s Petition was different than the Petition in the proceeding it sought to be
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`joined with, but failed to identify any differences in the two Petitions. Id. at 4-5. In
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`Samsung, the joinder motion was also denied because Samsung’s Petition also
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`relied on a different expert who presented different arguments than those presented
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`in the Petition in the proceeding it sought to be joined with (i.e., new evidence and
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`new arguments would have been introduced into the joint proceeding). Id. at 5-6.
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`Neither of these circumstances exist here. Here, the Petitions and the evidence are
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`identical on the grounds on which the Board instituted review, and include the
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`same analysis, prior art exhibits, and expert testimony. IPR2016-01073, Paper 2,
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`p3., SOF 7. Petitioners also presented the grounds on which Telit had requested
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`rehearing, and agreed to be bound by the Board’s decision on the request for
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`rehearing. Id.
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`In its joinder motion, Samsung also did not set forth how briefing or
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`discovery would be simplified nor did it submit that it would agree to or will work
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`with the petitioner in that case to manage simplification of briefing and discovery.
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`IPR2014-01142, Paper 11, p. 5. By contrast, Petitioners agreed not to conduct
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`additional depositions or other discovery so that all discovery in the joined
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`proceeding will be completed within the ordinary time limits of the original Telit
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`IPR proceeding. IPR2016-01073, Paper 2, p. 11. Petitioners likewise agreed to
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`coordinate with Telit to simplify briefing and discovery, and will be bound by any
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`2
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`orders the Board issues to simplify briefing and discovery (including whether
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`separate filings will be permitted or not). Id., pp. 10-11.
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`The only harm M2M identifies that it would suffer as a result of institution
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`of the proceedings based on the second petition and granting of the joinder motion
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`are the very minimal additional costs M2M might incur to prepare responses to the
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`theoretical separate filings by Petitioners. Petitioners do not anticipate any
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`disagreements with Telit that would result in any such separate filings. The need to
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`respond to such theoretical additional filings is a minimal cost that should not
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`justify denial of joinder. See, e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5.
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`Petitioners further note that the Board may decline to permit such separate filings.
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`Accordingly, any prejudice to Petitioners far outweighs the minimal if any
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`prejudice to M2M.
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`III. Conclusion
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`For the foregoing reasons, Petitioners respectfully request that the Board
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`grant its Motion and join Petitioners’ third ‘717 Petition with IPR2016-00055.
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`Respectfully submitted,
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`Dated: July 20, 2016
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`By:
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`/Jennifer Hayes/
`Reg. No. 50,845
`Nixon Peabody LLP
`P.O. Box 60610
`Palo Alto, CA 94306
`Tel. (650) 320-7763
`Fax (650) 320-7701
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`3
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`U.S. Patent No. 8,648,717
`Reply ISO Motion for Joinder
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Reply in Support
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`of Motion for Joinder to Related Instituted Inter Partes Review was served in its
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`entirety on July 20, 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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`Marc Henschke
`mhenschke@foley.com
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`By: /Jennifer Hayes/
`Counsel for Petitioners
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`4
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