UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`TELIT WIRELESS SOLUTIONS INC. &
`
`TELIT COMMUNICATIONS PLC,
`
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`
`Patent Owner.
`
`________________
`
`Inter Partes Review No. 2016-01081
`
`U.S. Patent No. 8,648,717
`
`Issued: Feb. 11, 2014
`
`Title: Programmable Communicator
`
`________________
`
`PETITIONER’S MOTION FOR JOINDER TO
`INSTITUTED IPR 2016-00055 UNDER 37 C.F.R. § 42.122(B)
`
`
`
`

`
`
`
`Table of Contents
`
`Page
`
`
`I. PRECISE RELIEF REQUESTED…………………………..…………………...1
`
`
`
`II. STATEMENT OF MATERIAL FACTS .......................................................... 3
`
`III. LEGAL STANDARDS AND RULES .............................................................. 4
`
`IV. REASONS SUPPORTING JOINDER .............................................................. 5
`
`1. Joinder is Appropriate Here........................................................................ 6
`
`2. New Grounds of Unpatentability Asserted in the Petition ......................... 9
`
`3. Joinder Would Not Materially Impact the Existing Trial Schedule ........... 9
`
`4. Briefing and Discovery Will Not Be Affected by Joinder ....................... 10
`
`5. The Patent Owner Will Suffer No Prejudice from Joinder ...................... 10
`
`6. Additional Factors Support Joinder .......................................................... 10
`
`V. CONCLUSION ................................................................................................ 13
`
`i
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`
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`

`
`
`
`Table of Authorities
`
`Cases
`ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286, Paper 14 ..................................... 5, 6
`Ariosa Diagnostics v. ISIS Innovation Limited, IPR2012-00022, Paper 104 .. passim
`Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17 .................... 5
`Lear, Inc. v. Adkins, 395 U.S. 653 (1969) ............................................................... 11
`Medtronic, Inc. v. Mirowski Family Ventures, LLC, 143 S.Ct. 843 (2014) ............ 11
`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15 ................... 5, 6, 7, 9
`Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc., IPR2014-
`00557, Paper 10 ............................................................................................ passim
`Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-
`00326, Paper 15 ......................................................................................... 5, 10, 12
`Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper 28 . 5, 6, 8, 12
`Zhongshan Broad Ocean Motors v. Nidec Motors Corp., IPR2015-00762, Paper 16
`...........................................................................................................................4, 12
`
`Statutes
`35 U.S.C. § 315(b) ..................................................................................................... 4
`35 U.S.C. § 315(c) ................................................................................................. 1, 4
`35 U.S.C. § 316(b) ................................................................................................... 12
`35 U.S.C. §103(a) .................................................................................................. 1, 9
`
`Rules
`37 C.F.R. § 42.1(b) ....................................................................................... 1, 11, 12
`37 C.F.R. § 42.122(b) ............................................................................................ 1, 4
`
`Other Authorities
`Brief for Intervenor – Director of the USPTO in Yissum Research Dev. Corp. v.
`Sony Corp., Appeal No. 2015-1342, Request for Rehearing (United States Court
`of Appeals for the Federal Circuit), June 25, 2015 ................................................ 4
`Trial Practice Guide, 77 Fed. Reg. 48756 (proposed Aug. 14, 2012) ..................... 11
`
`
`
`ii
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`
`

`
` List of Materials Considered
`
`Description
`
`Brief for Intervenor – Director of the USPTO in Yissum Research
`Dev. Corp. v. Sony Corp., Appeal No. 2015-1342, Request for
`Rehearing (United States Court of Appeals for the Federal Circuit),
`June 25, 2015
`
`Ex. No.
`
`1231
`
`
`
`
`
`This Exhibit number refers to the exhibit listed in the Petition for Inter Partes
`
`Review this Motion accompanies.
`
`iii
`
`
`

`
`I.
`
`PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Telit Wireless
`
`Solutions, Inc. and Telit Communications PLC (“Petitioner”) moves to join its
`
`Petition for Inter Partes Review (“Accompanying Petition”) of U.S. Patent No.
`
`8,648,717 (“the ‘717 Patent”), filed contemporaneously herewith, with Petitioner’s
`
`Inter Partes Review Case No. IPR2016-00055, instituted on April 22, 2016 (“the
`
`Instituted IPR”).
`
`The Accompanying Petition should be instituted, and the two IPRs should be
`
`joined, because there will be no prejudice to Patent Owner, and the benefit of
`
`joinder significantly outweighs any potential detriment. 37 C.F.R. § 42.1(b).
`
`The Accompanying Petition proposes a single ground of rejection for five
`
`dependent claims based on the same prior art combination as ground B instituted
`
`for twenty claims 1-3, 5-18, 22, 23, and 29 in IPR2016-00055, Paper 9 p. 48:
`
`Ground
`
`Claim(s)
`
`Reference(s)
`
`Statute (Pre-AIA)
`
`1
`
`25-28 and 30
`
`Van Bergen and Bettstetter
`
`35 U.S.C. §103(a)
`
`
`The Accompanying Petition adds no new prior art. The same expert is being used
`
`for both Petitions so there will be no delays or added cost for additional
`
`depositions or discovery. The claims in the Accompanying Petition are nearly
`
`identical to instituted claims in the Instituted IPR. See Comparison of Claims in the
`
`Accompanying Petition at 34-39 (markings indicating differences between claims).
`
`
`
`1
`
`

`
`In particular, claim 25 in the Accompanying Petition is actually broader than claim
`
`1 instituted in the Instituted IPR. See Accompanying Petition at 35-37. It is a
`
`matter of irrefutable fact that a broader claim must be invalid based on at least the
`
`same prior art that invalidates a narrower claim. Claim 25 is thus necessarily
`
`invalid for the exact same reason that instituted claim 1 is invalid. This conclusion
`
`requires no extra deliberation by the Board and poses no extra burden to Patent
`
`Owner.
`
` Similarly, claim 26 is broader than claim 12 and is therefore invalid for the
`
`same reason that instituted claim 12 is invalid. See Accompanying Petition at 37-
`
`38. Claim 27 is also broader than claim 1 and is therefore invalid for the same
`
`reason as claim 1. See Accompanying Petition at 38-39. The remaining claims 28
`
`and 30 add a trivial limitation to instituted claim 10 – that the processing module
`
`detects “a change in status” of a local device (e.g., an alarm). See Accompanying
`
`Petition at 39. The Accompanying Petition easily addresses this minor difference.
`
`See Accompanying Petition at 29.
`
`Instituting the IPR and joining it to the pre-existing Instituted IPR will avoid
`
`duplicative proceedings in the Court and USPTO on the invalidity of essentially
`
`identical claims, establish uniform invalidity rulings in the courts and patent office,
`
`and would resolve a lengthy four-year long litigation in a speedy and less
`
`expensive manner.
`
`
`
`2
`
`
`

`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`
`On January 12, 2012, Patent Owner, M2M Solutions LLC (“M2M”)
`
`filed a Complaint in the United States District Court for the District of Delaware
`
`against Petitioner alleging infringement of two ancestor patents of the ‘717 Patents
`
`– U.S. Patent No. 7,583,197 (“the ‘197 Patent”) and U.S. Patent No. 8,094,010
`
`(“the ‘010 Patent”) – in M2M Solutions Inc. v. Motorola Solutions, Inc., et al.,
`
`Case No. 1:2012-cv-00033-RGA (D. Del). The ‘197 Patent was held invalid and,
`
`shortly before trial was scheduled, Patent Owner dismissed all claims against
`
`Petitioner.
`
`2.
`
`Patent Owner filed a Complaint in a second litigation against
`
`Petitioner based on
`
`the ‘717 Patent
`
`in M2M Solutions LLC v. Telit
`
`Communications PLC et al., Case No. 1:2014-cv-1103-RGA (D. Del.) (“the ‘717
`
`Patent Litigation”). The Complaint was served on Petitioner on October 24, 2014.
`
`3.
`
`On October 21, 2015, Petitioner filed a petition seeking inter partes
`
`review of claims 1-30 of the ‘717 Patent (“the Instituted IPR” or IPR2016-00055).
`
`On that date Petitioner also filed a second petition, IPR2016-00054 that was not
`
`instituted. The ‘717 Patent Litigation is currently stayed pending the outcome of
`
`the inter partes reviews.
`
`4.
`
`On April 22, 2016, the Board instituted IPR of claims 1-24 and 29 of
`
`the ‘717 Patent in IPR2016-00055, and denied institution of dependent claims 25-
`
`3
`
`
`

`
`28 and 30. IPR2016-00055, Paper 9 p. 48. The Board decided not to institute
`
`review based on the second petition, IPR2016-00054, Paper 9.
`
`5.
`
`On May 5, 2016, Petitioner filed a request for rehearing of the Board’s
`
`decision on the non-instituted claims 25, 27, 28 and 30 in IPR2016-00055.
`
`6.
`
`This Motion is being filed concurrently with the Accompanying
`
`Petition. On the same day, Petitioner is filing a request for rehearing of the Board’s
`
`decision in IPR2016-00054.
`
`III. LEGAL STANDARDS AND RULES
`
`The Board has discretion to join a properly filed IPR petition to a previously
`
`instituted IPR. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); Zhongshan Broad
`
`Ocean Motors v. Nidec Motors Corp., IPR2015-00762, Paper 16 at 5 (expanded
`
`Board).
`
`There is no question that this Motion for Joinder is timely. Per Zhongshan,
`
`Paper 16 at 4 , (quoting Brief for Intervenor – Director of the USPTO in Yissum
`
`Research Dev. Corp. v. Sony Corp., Appeal No. 2015-1342, Request for Rehearing
`
`(United States Court of Appeals for the Federal Circuit), June 25, 2015, Ex. 1231
`
`at 18) (emphasis in original):
`
`
`the Board has consistently held [that] it … has the
`discretion to join IPR proceedings, even if § 315(b) would
`otherwise bar the later-filed petition, and even if the
`petitions are filed by the same party.
`
`4
`
`
`

`
`Accord, Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17 at 5
`
`(“the one year bar ‘shall not apply to a request for joinder under subsection (c)’”);
`
`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15 at 4; Target Corp. v.
`
`Destination Maternity Corp., IPR2014-00508, Paper 28 at 15; Samsung
`
`Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc., IPR2014-00557, Paper
`
`10 at 15; see also Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of
`
`Jerusalem, IPR2013-00326, Paper 15 at 3-4.
`
`
`Similarly, there is no question that a Petitioner can join a new IPR with a
`
`pre-existing IPR between the same parties, concerning the same patent. ABB Inc.
`
`v. Roy-G-Biv Corp., IPR2013-00286, Paper 14 at 2; Ariosa Diagnostics v. ISIS
`
`Innovation Limited, IPR2012-00022, Paper 104 at 4; Microsoft, Paper 15 at 2;
`
`Samsung, Paper 10 at 2, 3 and 14 (“The AIA permits joinder of parties in like
`
`review proceedings”); Sony, Paper 15 at 2-3; see also, Target, Paper 28 at 2 and
`
`15-17.
`
`IV. REASONS SUPPORTING JOINDER
`Factors the Board looks to in determining joinder motions are: (1) the
`
`reasons why joinder is appropriate; (2) any new grounds of unpatentability asserted
`
`in the petition; (3) what impact (if any) joinder would have on the trial schedule for
`
`the existing review; and (4) how briefing and discovery may be simplified. Dell,
`
`Paper 17 at 4.
`
`5
`
`
`

`
`Joinder is Appropriate Here
`
`1.
`When analyzing if joinder is appropriate, the Board has considered:
`
` Whether the Petitions involve the same parties and the same patent,
`
`which would not overly complicate a joined proceeding. Here, the ‘717
`
`Patent and the parties are common to both Petitions. ABB, Paper 14 at 3.
`
` Whether the prior art in the new Petition was raised in the previous
`
`Petition. ABB, Paper 14 at 3-4 (allowing joinder where two new prior art
`
`references were cited, both of which were exhibits in the pre-existing IPR);
`
`Microsoft, Paper 15 at 2; Target, Paper 28 at 3 (allowing one new piece of
`
`prior art); Ariosa, Paper 104 at 5 (permitting joinder in part because “[t]here
`
`is an overlap in the cited prior art”).
`
`As explained, the Accompanying Petition adds no new prior art, so the prior
`
`art that would be considered in the joined IPR is already being considered in the
`
`Instituted IPR.
`
`
`
`The number of claims at issue in the new Petition.
`
`In Samsung, the Board allowed joinder for six new claims, which added the
`
`concept of HDMI and a single new reference. The prior art reference’s relevance
`
`with respect to HDMI was being addressed in related co-pending IPRs. Therefore,
`
`there was a “minimal additional amount of work required.” Samsung, Paper 10 at
`
`18.
`
`6
`
`
`

`
`In Sony, the Board allowed joinder of three new claims that were “related
`
`closely and involve the same prior art.” Paper 15 at 7. See also Microsoft, Paper 15
`
`at 4.
`
`Because only five claims are at issue in the Accompanying Petition,
`
`compared to the 25 claims in the instituted IPR, and their subject matter is either
`
`identical to, or only trivially different than, the subject matter of the instituted
`
`claims, there would be little if any additional work required for Patent Owner or
`
`the Board in a joined IPR.
`
`
`
`The similarity of the claims in the new Petition compared to the
`
`claims in the pre-existing Petition, Samsung, Paper 10 at 18, and whether
`
`they are dependent claims.
`
`In Ariosa, the Board allowed joinder holding, Paper 104 at 5:
`
`In exercising that discretion, and mindful of the ultimate
`objective of these proceedings, we noted that the only
`additional prior art cited in the ’250 [new] petition addresses
`the limitations of the dependent claims, and that there is
`significant overlap in the prior art cited in the two proceedings.
`
`As explained, the subject matter of the five dependent claims in the
`
`Accompanying Petition is virtually identical to the claims that are already
`
`undergoing review. Claims 25 and 27 are broader than that of instituted claim 1,
`
`and claim 26 is broader than claim 12 (See Accompanying Petition at 35-39), so
`
`7
`
`
`

`
`their invalidity analysis requires no additional consideration at all. The two other
`
`claims 28 and 30 have only minor differences from the instituted claims, and there
`
`would be a relatively small amount of additional work for the Board and the Patent
`
`Owner if the IPRs are joined. See also Samsung, Paper 10 at 17-18 (new claims
`
`related to HDMI would cause only minimal additional work).
`
`In Target, the Board held that Petitioner could join IPRs in which the
`
`validity of dependent claims was at issue in the newer IPR. Target, Paper 28 at 16.
`
`The Board recognized: “if independent claim 1 were determined unpatentable in
`
`[the existing IPR], that determination may possibly cast doubt on the Patent
`
`Owner’s entitlement to dependent claims 20 and 21.” Id. So too here. All
`
`independent claims of the ‘717 Patent, 1, 24 and 29, were instituted in the
`
`Instituted IPR. If these independent claims undergoing review were held invalid
`
`because the prior art included each claim element, that would have considerable
`
`impact on the invalidity of dependent claims 25-28 and 30, particularly for claims
`
`25 and 27 which are broader than claim 1.
`
` Whether a new expert Declaration is written by the same person as the
`
`old one, in which case a single deposition will cover both petitions.
`
`Kimmo Savolainen wrote the expert Declarations in both the Accompanying
`
`Petition and the existing Petition. No new depositions would be required (one
`
`deposition for both IPRs), and thus depositions would not contribute to delay,
`
`8
`
`
`

`
`inconvenience or additional costs associated with joinder. Aroisa, Paper 104 at 5.
`
`
`
`The number of grounds in a new petition. Samsung, Paper 10 at 2, 3
`
`and 14 (allowing joinder based on one additional ground).
`
`The fewer new grounds in the new petition, the more efficient joinder would
`
`be. Here, there is only one new ground, based on the same prior art combination in
`
`ground B instituted in IPR2016-00055, Paper 9 at 48. (Van Bergen and Bettstetter
`
`under 35 U.S.C. §103(a).) During IPR2016-00055, both Patent Owner and the
`
`Board have become familiar with the claims, the prior art references, and the
`
`motivation for combination proposed in the new ground.
`
`New Grounds of Unpatentability Asserted in the Petition
`
`2.
`As discussed above, the single “new” ground of unpatentability is the same
`
`as ground B instituted in IPR2016-00055, but for different claims (except claim
`
`30). The prior art is the same, the reasons for combining the references is the same,
`
`and the subject matter of the claims is either identical or only trivially different.
`
`3.
`
`Joinder Would Not Materially Impact
`the Existing Trial Schedule
`
`Petitioner is willing to make reasonable accommodations to the Patent
`
`Owner to ensure that any work is completed in a timely and sensible manner. In
`
`any event, minor readjustments to the schedule are not sufficiently prejudicial to
`
`deny joinder. Microsoft, Paper 15 at 4; Samsung, Paper 10 at 18.
`
`Moreover, because of the overlapping subject matter, there will be no delay.
`
`9
`
`
`

`
`In Sony, the Board held:
`
`the claims in the two proceedings are similar and present
`similar issues, and joinder will have no significant impact on
`the trial schedule. Sony, Paper 15 at 4.
`
`4.
`
`Briefing and Discovery Will Not Be Affected by Joinder
`
`
`
`The prior art in the Accompanying Petition and the Instituted IPR is the
`
`same. The arguments are identical (for claims 25-27) or very similar (for claims
`
`28 and 30), and Petitioner is using the same expert for both. There will be no
`
`disruption of any trial activity as a result of the joinder.
`
`5.
`
`The Patent Owner Will Suffer No
`Prejudice from Joinder
`
`The claims for which joinder is sought are virtually identical to the claims
`
`undergoing review. The prior art and the expert are the same. Joinder will cause
`
`no prejudicial delay. Moreover, as the Board held in Samsung, Paper 10 at 18, “the
`
`minimal additional amount of work required on the part of Patent Owner to address
`
`[newly added] claims 58 and 63 of the ’398 Patent is strongly outweighed by the
`
`public interest in having consistency of outcome concerning similar sets of claimed
`
`subject matter and prior art.” The same concerns apply here. Consistency in result
`
`between the closely related instituted and non-instituted claims is far more
`
`important than any minor, additional work for Patent Owner.
`
`6.
`
`Additional Factors Support Joinder
`
`There has been long, ongoing litigation between the parties concerning the
`
`10
`
`
`

`
`family of patents all claiming the same priority date as the ‘717 Patent and all
`
`having the same specification. Patent Owner, forced to drop claims in its original
`
`lawsuit, has filed a new lawsuit based on the ‘717 Patent. In an effort to achieve
`
`“timely, fair, and efficient” prosecution of the claims of the ‘717 Patent, Office
`
`Trial Practice Guide, 77 Fed. Reg. 48756 (proposed Aug. 14, 2012), and to reduce
`
`costs and the disruption to Petitioner’s business inherent in litigation, 37 C.F.R. §
`
`42.1(b)), Petitioner requests the Board allow this joinder, keeping in mind the
`
`strong policy considerations the Supreme Court articulated in Medtronic, Inc. v.
`
`Mirowski Family Ventures, LLC, 143 S.Ct. 843, 851-52 (2014) and Lear, Inc. v.
`
`Adkins, 395 U.S. 653, 656, 670 (1969): to remove invalid patents from the system.
`
`Joinder provides a vehicle to evaluate efficiently all claims of the asserted
`
`patent in a single cost effective and rapid proceeding. If joinder is not permitted,
`
`the validity of some claims will be reviewed in the USPTO, while the invalidity of
`
`other claims will be reviewed in Court, based on the same prior art, potentially
`
`resulting in inconsistent rulings. The difficulty is compounded if any claims were
`
`to survive IPR and be asserted in Court in tandem with non-instituted claims. In
`
`that circumstance, the jury would be faced with the confusing task of applying
`
`prior art to one claim but not to others, for which estoppel would apply, but which
`
`had virtually identical claim language.
`
`In addition to the possibility of inconsistent results, there would obviously
`
`11
`
`
`

`
`be avoidable redundancies, including expert reports and depositions, all of which
`
`are inconsistent with the underlying purpose of the IPR procedure. As the Board
`
`recently held in Zhongshan, Paper 16 at 6-7, 8:
`
`When exercising its discretion, the Board is mindful that
`patent trial regulations, including the rules for joinder, must
`be construed to secure the just, speedy, and inexpensive
`resolution of every proceeding. See 35 U.S.C. § 316(b); 37
`C.F.R. § 42.1(b).
`
`*
`*
`*
`The public interest in securing the just, speedy, and
`inexpensive resolution of every proceeding would be served
`in this case more fully by considering the merits of the
`asserted ground of unpatentability …
`
`
`See also Sony, Paper 15 at 7, allowing joinder and recognizing that resolving
`
`invalidity issues with respect to claims at issue in a District Court litigation will be
`
`faster and less expensive in an IPR.
`
`Finally, the argument that joinder is a prejudicial “second bite at the apple”
`
`has been routinely made by Patent Owners, and rejected. See Ariosa, Paper 104 at
`
`6; see also Target, Paper 28 at 16. Virtually all joinder motions to combine a new
`
`Petition with a pre-existing IPR are to some degree a “second bite.” Nevertheless,
`
`when the facts demonstrate that joinder is appropriate, as they do here, the Board
`
`has repeatedly allowed them.
`
`12
`
`
`

`
`
`V. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`grant the present Motion and join the Accompanying Petition with IPR2016-
`
`00055.
`
`
`
`
`
`
`
` Respectfully submitted,
`Pearl Cohen Zedek Latzer Baratz LLP
`
`By: / Caleb Pollack/
`Caleb Pollack
`Reg. No. 37,912
`Lead Counsel for Petitioner
`
`DATED: May 23, 2016
`
`
`Pearl Cohen Zedek Latzer Baratz LLP
`ATTN: Caleb Pollack
`1500 Broadway 12th floor
`New York, NY 10036
`Phone: (646) 878-0800
`Fax: (646) 878-0801
`Email: CPollack@pearlcohen.com
`GYonay@pearlcohen.com
`DLoewenstein@pearlcohen.com
`MEadan@pearlcohen.com
`
`
`
`
`
`
`
`
`13
`
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. Sections 42.6 and 42.105, that a
`
`complete copy of the attached PETITIONER’S MOTION FOR JOINDER TO
`
`INSTITUTED IPR2016-00055 UNDER 37 C.F.R. § 42.122(B), including all
`
`exhibits (Ex. No. 1231) and related documents, are being served by FedEx on the
`
`23rd day of May, 2016, the same day as the filing of the above-identified document
`
`in the United States Patent and Trademark Office with the Patent Trial and Appeal
`
`Board, upon the patent counsel of record for U.S. Patent No. 8,648,717:
`
`Jonathan Lovely
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`Boston MA 02110-1618
`
`
`DATED: May 23, 2016
`
`
`Respectfully submitted,
`Pearl Cohen Zedek Latzer Baratz LLP
`
`By: /Caleb Pollack /
`Caleb Pollack
`Reg. No. 37,912
`Lead Counsel for Petitioner
`
`14
`
`
`Pearl Cohen Zedek Latzer Baratz LLP
`ATTN: Caleb Pollack
`1500 Broadway 12th floor
`New York, NY 10036
`Phone: (646) 878-0800
`Fax: (646) 878-0801