UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. ________
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`TELIT WIRELESS SOLUTIONS INC. AND
`TELIT COMMUNICATIONS PLC.,
`Petitioner,
`v.
`
`M2M SOLUTIONS LLC
`Patent Owner
`_______________
`
`Case IPR2016-01081
`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
`
`4820-2263-6338.1
`
`
`
`

`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`OBJECTIONS TO STATEMENT OF MATERIAL FACTS ......................... 2 
`
`BACKGROUND ............................................................................................. 2 
`
`III.  ARGUMENT ................................................................................................... 3 
`
`A. 
`
`Petitioner is not entitled to a “second bite at the apple” and fails
`to meet its burden that joinder is appropriate ........................................ 3 
`
`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 .......... 8 
`
`B. 
`
`C. 
`
`D. 
`
`Petitioner cites to decisions granting joinder that are not
`applicable to the circumstances of this case .......................................... 9 
`
`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 
`
`IV.  CONCLUSION .............................................................................................. 15 
`
`4820-2263-6338.1
`
`i
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`

`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ABB Inc. v. Roy-G-Biv Corp.,
`IPR2013- 00286 .................................................................................................. 12
`
`Apotech, Inc. v. Synopsys, Inc.,
`IPR2015-00760 ................................................................................................. 8, 9
`
`Ariosa Diagnostics v. ISIS Innovation Limited,
`IPR2012-00250 ................................................................................................... 11
`
`Butamax Adv. Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581 ..................................................................................................... 6
`
`Dell Inc. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00385 ............................................................................................. 10, 13
`
`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-01620 ............................................................................................. 1, 4, 9
`
`Medtronic, Inc. et al. v. Endotach LLC,
`IPR2014-00695 ..................................................................................................... 5
`
`Micro Motion, Inc. v. Invensys Systems, Inc.,
`IPR2014-01409 ..................................................................................................... 5
`
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2013-00109 ............................................................................................. 10, 11
`
`Samsung Electronics Co., Ltd., et al. v. Affinity Labs of Texas, LLC,
`IPR2015-00820 ..................................................................................................... 4
`
`Samsung Electronics Co., Ltd., et al. v. Affinity Labs of Texas, LLC,
`IPR2015-00821 ..................................................................................................... 5
`
`Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc.,
`IPR2014-00557 ................................................................................................... 12
`
`
`
`4820-2263-6338.1
`
`ii
`
`

`
`Skyhawke Tech., LLC v. L&H Concepts, LLC,
`IPR2014-01485 ............................................................................................. 14, 15
`
`Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of
`Jerusalem, IPR2013-00326 ................................................................................ 10
`
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00907 ..................................................................................................... 5
`
`T-Mobile US, Inc., et al. v. TracBeam, LLC,
`IPR2016-00728 ................................................................................................. 1, 6
`
`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508 ............................................................................................. 11, 14
`
`Zhongshan Broad Ocean Motor Co., Ltd. et al. v. Nidec Motors Corp.,
`IPR2015-00762 ................................................................................................... 11
`
`Statutes
`
`35 U.S.C. § 315(b) ............................................................................................. 1, 4, 5
`
`35 U.S.C. § 315(c) ..................................................................................... 1, 4, 14, 15
`
`35 U.S.C. § 325(d) ............................................................................................. 1, 5, 6
`
`Other Authorities
`
`37 C.F.R. § 42.20(c) ................................................................................................... 4
`
`
`
`4820-2263-6338.1
`
`iii
`
`

`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`
`Patent Owner, M2M Solutions LLC (“M2M”), respectfully requests
`
`that the Board deny Telit Wireless Solutions Inc.’s and Telit Communications
`
`PLC’s (collectively, “Petitioner”) Motion for Joinder to Related Instituted
`
`IPR2016-00055 Under 37 C.F.R. § 42.122(B) (“Motion”) filed on May 23, 2016.
`
`(Paper 4.) Petitioner’s Motion seeks to join IPR2016-01081 (“Second Petition”)
`
`filed May 23, 2016, to IPR2016-00055 (“First Petition”), instituted by the Board
`
`on April 22, 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 five claims from the ’717 patent
`
`that the Board denied instituting trial on in the First Petition. However, the Board
`
`has repeatedly used its discretion under 35 U.S.C. § 315(c) to deny joinder when a
`
`petitioner uses a prior institution as a guide to attempt 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). Further, the Board has
`
`consistently used its discretion under 35 U.S.C. § 325(d) to deny a “[p]etition
`
`because ‘the same or substantially the same prior art or arguments previously were
`
`presented to the Office.’” See, e.g., T-Mobile US, Inc., et al. v. TracBeam, LLC,
`
`IPR2016-00728, slip op. at 14 (PTAB May 25, 2016) (Paper 11).
`
`4820-2263-6338.1
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`1
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`

`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`
`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 25-28 and 30 of the ’717 patent. 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, joinder will substantially prejudice M2M. The
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`Board should deny the Motion.
`
`I.
`
`OBJECTIONS TO STATEMENT OF MATERIAL FACTS
`
`1. M2M does not object to Petitioner’s Material Fact Nos. 1-6.
`
`II. BACKGROUND
`
`M2M filed its complaint against Petitioner for infringement of the ’717
`
`patent in the District Court of Delaware on October 24, 2014. Petitioner filed
`
`IPR2016-00055 on October 21, 2015, challenging claims 1-30 based on the
`
`following grounds:
`
`Ground
`1
`2
`3
`4
`5
`6
`7
`
`Claims
`1-3, 5-18, 22, 23, 29 and 30
`24-28
`25-27
`29, 30
`4
`19, 20
`21
`
`References
`Van Bergen and Bettstetter
`Van Bergen
`Van Bergen and AAPA
`Van Bergen, Bettstetter and AAPA
`Van Bergen, Bettstetter and Sonera
`Van Bergen, Bettstetter and Kuusela
`Van Bergen, Bettstetter and Eldredge
`
`4820-2263-6338.1
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`2
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`

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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
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`(IPR2016-00055, Paper 1, (First Petition) at 4).1
`
`The Board instituted trial on claims 1-24 and 29 and denied trial for claims
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`25-28 and 30.
`
`On May 23, 2016, nearly19 months after being served with the complaint
`
`and nearly seven months after the one-year time bar, Petitioner filed its Second
`
`Petition again challenging the same claims that the Board denied instituting trial on
`
`in the First Petition. In the Second Petition, Petitioner asserts the exact same two
`
`references against claim 30 as it did in the First Petition, and adds one reference
`
`(used in the First Petition to challenge claims 1-3, 5-18, 22, 23, 29 and 30) to the
`
`prior asserted reference to challenge claims 25-28.
`
`Ground
`1
`
`Claims
`25-28, 30
`
`References
`Van Bergen and Bettstetter
`
`
`(IPR2016-01081, Paper 1, (Second Petition) at 1.)
`
`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 a “second bite at the apple” to attempt to remedy the deficiencies in the First
`
`
`1 Petitioner also presented Grounds 8-14 under an alternative claim construction
`
`which the Board did not adopt. IPR2016-00055, Paper 9 (Decision) at 47.
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`4820-2263-6338.1
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`3
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`

`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`Petition 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
`
`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 attempt to remedy deficiencies in the first-filed petition
`
`– particularly where, as here, the petitioner does not offer any explanation why the
`
`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”); Micro Motion, Inc. v. Invensys Systems, Inc., IPR2014-
`
`4820-2263-6338.1
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`4
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`

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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`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).
`
`The Board has even denied joinder under these circumstances when 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 month
`
`after institution in a first case, at the expense of scheduling constraints for
`
`everyone, as well as additional costs (and potential prejudice) to Patent Owner,
`
`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
`
`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
`
`12-13 (PTAB Oct. 14, 2014) (Paper 8). Particularly, where the “Petitioner presents
`
`the same prior art in a second petition along with arguments to correct errors in a
`
`first petition” (T-Mobile US, Inc., IPR2016-00728, slip op. at 10), the Board has
`5
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`4820-2263-6338.1
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`

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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`exercised its discretion under Section 325(d), to deny the Petition because “‘the
`
`same or substantially the same prior art or argument previously were presented to
`
`the Office.’” Id. at 14.
`
`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 25-28 and 30, which it acknowledges in the
`
`Second Petition, “[t]he Board found arguments for the anticipation of claims 25-28
`
`based on Van Bergen insufficient.” (Second Petition at 41.)
`
`The reason the Board denied institution of an inter partes review of claims
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`25-27 the First Petition was due to: “Petitioner provid[ing] only cursory references
`
`to other claims with no substantive analysis.” (Decision at 19.) Further,
`
`Petitioner does not explain how its discussion of
`‘instructions’ to program the stored number’ with respect
`to claim 29 applies to instructions to process data (claim
`25), request data (claim 26) , or program the interface
`(claim 27) The language of the claims is different, and
`Petitioner has not sufficiently identified and explained
`the bases for its assert ground as to claims 25-27.
`
`(Id. at 20.)
`
`Similarly, the reason the Board denied institution of an inter partes review
`
`of claim 28 in the First Petition because:
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`4820-2263-6338.1
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`6
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`

`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`
`Petitioner’s contentions with respect to claims 2 and 10
`identify two different structures for the respective data
`processing of the claims. Petitioner’s cursory reference
`to claims 2 and 10 does not explain which structure in
`Van Bergen Petitioner contends is the ‘processing
`module’ that performs the particular data processing
`required in claims 28.
`(Decision at 21.)
`
`For claim 30, the First Petition offered a one line contention “See claims 2,
`
`10 and 29 above.” The Board found this deficient for the same reasons it did for
`
`claim 28 – a complete lack of explanation by Petitioner of which structure in Van
`
`Bergen performs the particular data processing required in claim 30. (Id. at 43.)
`
`The Second Petition purportedly addresses these deficiencies. This second
`
`bite at the apple by Petitioner for these claims requires six full pages of
`
`explanation. (Second Petition, pp. 24-29, 34.)
`
`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. Petitioner does not even
`
`change the ground for claim 30, but uses the exact same two references to
`
`challenge claim 30. Strikingly, Petitioner admits that Ground 1 in the Second
`
`Petition is the same as Ground B in the First Petition, “the single ‘new’ ground of
`
`unpatentability is the same as ground B instituted in IPR2016-00055, but for
`
`4820-2263-6338.1
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`7
`
`

`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
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`different claims (except claim 30)” (Motion at 9), but offers no explanation why it
`
`did not include claims 25-28 in ground B in the First Petition. Thus, informed by
`
`the Board’s decision for the First Petition, Petitioner added these claims to the
`
`previously asserted ground to attempt 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
`
`The Board has stated that it is concerned about encouraging the filing of
`
`partially inadequate petitions. See Apotech, Inc. v. Synopsys, Inc., IPR2015-00760,
`
`slip op at 8-9 (PTAB July 21, 2015) (Paper 14). The Board stated that “permitting
`
`second chances without constraint undermines judicial efficiency by expending the
`
`Board’s limited resources on issues that were not presented adequately the first
`
`time around.” Id. Particularly where “the [second] petition simply presents
`
`arguments that reasonably could have been made in [the first petition], but were
`
`not.” Id. Accordingly, the Board should deny Petitioner’s attempt to use a Second
`
`Petition to cure the inadequate arguments presented in the First Petition.
`
`iii.
`
`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.
`
`(Motion, 10-12.) In fact Petitioner’s argument for efficiency supports the opposite
`
`conclusion: joinder is not appropriate. Petitioner has already had its opportunity to
`8
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`4820-2263-6338.1
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`

`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`challenge claims 25-28 and 30, which is why the Board is familiar with the issues,
`
`and the only reason Petitioner revisited using the same prior art references is
`
`because the Board identified deficiencies in the First Petition.
`
`Petitioner’s argument fails to consider the public policy considerations that
`
`“[t]he Board is concerned about encouraging, unnecessarily, the filing of petitions
`
`that are partially inadequate.” LG Electronics, IPR2015-01620, slip op. at 8. Where
`
`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.
`
`Finally Petitioner’s statement (Motion at 8) that M2M would suffer no
`
`prejudice is completely unsupported and wrong. Filing the Motion and Second
`
`Petition seven months after the First Petition results in substantial prejudice. M2M
`
`has already filed a preliminary response to the First Petition, which had
`
`inadequately addressed claims 25-28 and 30. Now M2M will have to address
`
`those claims again in its preliminary response to the Second Petition under the new
`
`rules allowing patent owners to submit evidentiary support in their preliminary
`
`responses.
`
`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.
`
`4820-2263-6338.1
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`9
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`

`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`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.
`
`Here, Petitioner is the same party and the Second Petition is not offering the same
`
`grounds on the same claims that were instituted in the First Petition.
`
`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
`
`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
`
`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.
`
`M2M has not asserted any additional claims, and as discussed above, the claims in
`
`the Second Petition were already challenged in the First Petition.
`
`In Target Corp. v. Destination Maternity Corp., IPR2014-00508 (PTAB
`
`Feb. 12, 2015) (Paper 28), the second petition’s grounds relied on a reference that
`10
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`4820-2263-6338.1
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`

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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`“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
`
`disclosed any new reference to Petitioner; rather, Petitioner has simply recycled its
`
`prior used 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 challenged in the first-filed petition. Ariosa Diagnostics v. ISIS
`
`Innovation Limited, IPR2012-00250, Paper 4 at 3.
`
`In Zhongshan Broad Ocean Motor Co., Ltd. et al. v. Nidec Motors Corp.,
`
`IPR2015-00762, the Board allowed joinder of a second petition that contained the
`
`same ground that was asserted in the first petition, but denied institution, not on the
`
`merits, but due to the failure by the Petitioner to provide an attesting affidavit with
`
`the English translation of a foreign language reference. Here, the Petitioner failed
`
`to make the arguments in the First Petition now offered in the Second Petition.
`
`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
`
`new arguments in the Second Petition that the Board and M2M will need to
`
`address for the challenged claims. The Board has also granted joinder when the
`
`patent owner did not oppose joinder and waived its preliminary response reducing
`11
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`4820-2263-6338.1
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`

`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`scheduling difficulties. ABB Inc. v. Roy-G-Biv Corp., IPR2013- 00286 (PTAB
`
`Aug. 9, 2013) (Paper 14). Here, 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 oral hearing date for First Petition is
`
`now the same as for related IPR2015-01823, which creates more complications to
`
`any schedule changes due to joinder of the Second Petition.
`
`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
`
`discovery may be simplified. Dell, IPR2013-00385, slip op. at 4.
`
`To address potential impact on the trial for the First Petition, all Petitioner
`
`offers is a vague offer to “make reasonable accommodations to the Patent Owner
`
`to ensure any work is completed in a timely and sensible manner.” (Second
`
`Petition at 9.) Further Petitioner makes the unsupported conclusion that “there will
`
`be no disruption of any trial activity as a result of the joinder.” (Id. at 10.) Yet, the
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`4820-2263-6338.1
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`12
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`

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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
`
`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 late November, after Dates 1-5 have passed in the Scheduling
`
`Order in the first trial – would fit with the schedule for the existing trial.
`
`(IPR2016-00055, Paper 10.) In a typical trial schedule, M2M’s response to the
`
`Second Petition would not be due until January, after the date set for the oral
`
`argument in for the first trial, December 5, 2016. 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. The addition of a new ground and new
`
`arguments for claims 25-28 and 30 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 may need to take a second deposition of Petitioner’s expert, and
`
`M2M may 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
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`Petitioner has failed to meet its burden of proof, the Board should deny the Motion
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`4820-2263-6338.1
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
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`D. The Board should deny Petitioner’s Motion because the statute
`does not authorize joinder of the same party to an instituted IPR.
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`While joinder of the Second Petition is not appropriate for the reasons
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`discussed above, joinder of Petitioner to its own inter partes review is also
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`impermissible under a proper interpretation of 35 U.S.C. § 315(c). M2M
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`recognizes that different Board panels have come to contrary positions on the issue
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`of same party joinder. See, e.g., Target Corp., IPR2014–00508 (Paper 28);
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`Skyhawke Tech., LLC v. L&H Concepts, LLC, IPR2014-01485, slip op. at 3-4
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`(Mar. 20, 2015) (Paper 13). However, M2M asserts that the statute does not allow
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`joinder of a petitioner that is already a party to the instituted review. See Skyhawke,
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`slip op. at 3. In particular § 315(c) provides: “If the Director institutes an inter
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`partes review, the Director, in his or her discretion, may join as a party to that inter
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`partes review any person who properly files a petition under section 311.”
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`Petitioner is already a party to IPR2015-01823, thus, Petitioner’s joinder motion is
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`improper: a “person cannot be joined as a party to a proceeding in which it is
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`already a party.” See Skyhawke, slip op at 3-4. Thus, granting Petitioner’s Motion
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`requires the Board to exceed the Board’s statutory authority for the purpose of
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`joinder. Id. Accordingly, the Board should deny Petitioner’s Motion.
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
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`IV. CONCLUSION
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`Petitioner not entitled to a second bite at the apple to cure the
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`deficiencies identified by the Board in the first-filed petition. Petitioner offers no
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`explanation why the arguments and additional references were not presented in
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`their First Petition, and M2M would be prejudiced if joinder were granted. For at
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`least these reasons, M2M respectfully requests the Board to deny Petitioner’s
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`Motion for Joinder.
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`
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`Dated: June 23, 2016
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`Respectfully Submitted,
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`
`
`/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
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`4820-2263-6338.1
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`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-01081
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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 23, 2016, upon
`the following parties via e-mail:
`
`FOLEY & LARDNER LLP
`
`cpollack@pearlcohen.com
`dloewenstein@pearlcohen.com
`gyonay@ pearlcohen.com
`meadan@ pearlcohen.com
`
`
`
`
`
`Date: June 23, 2016
`
`/s/ Michelle A. Moran
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`
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`4820-2263-6338.1
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`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
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`
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