UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`TELIT WIRELESS SOLUTIONS INC. AND
`
`TELIT COMMUNICATIONS PLC,
`
`Petitioners,
`
`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
`
`________________
`
`PETITIONERS’ REPLY IN SUPPORT OF THEIR
`MOTION FOR JOINDER TO INSTITUTED IPR 2016-00055
`UNDER 37 C.F.R. § 42.122(B)
`
`
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`TELIT WIRELESS SOLUTIONS INC. AND
`
`TELIT COMMUNICATIONS PLC,
`
`Petitioners,
`
`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
`
`________________
`
`PETITIONERS’ REPLY IN SUPPORT OF THEIR
`MOTION FOR JOINDER TO INSTITUTED IPR 2016-00055
`UNDER 37 C.F.R. § 42.122(B)
`
`
`
`Table of Contents
`
`Page
`
`I.
`
`II.
`
`PATENT OWNER WILL SUFFER NO PREJUDICE .................................... 3
`
`JOINDER WILL NOT IMPACT THE EXISTING SCHEDULE .................... 5
`
`III. PO’S CITED BOARD DECISIONS ARE INAPPOSITE ................................ 5
`
`IV. CONCLUSION .................................................................................................. 5
`
`i
`
`
`
`
`Table of Authorities
`
`Page
`
`Cases
`Atoptech, Inc. v. Synopsis, Inc.,
`IPR2015-00760, Paper 14 (PTAB Jul. 21, 2015) ................................................... 5
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper 8 (PTAB Oct. 14, 2014) .................................................... 5
`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-01620, Paper 10 (PTAB Feb. 2, 2016) .................................................... 5
`Medtronic, Inc. et al. v. Endotach LLC,
`IPR2014-00695, Paper 18 (PTAB Sep. 25, 2014).................................................. 5
`Samsung Electronics Co., Ltd., et al. v. Affinity Labs of Texas, LLC,
`IPR2015-00820, Paper 12 (PTAB May 15, 2015) ................................................. 5
`Samsung Electronics Co., Ltd., et al. v. Affinity Labs of Texas, LLC,
`IPR2015-00821, Paper 10 (PTAB May 15, 2015) ................................................. 5
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00907, Paper 10 (PTAB Dec. 1, 2014) ................................................... 5
`
`
`
`
`
`
`ii
`
`
`
`
`LIST OF EXHIBITS
`
`Ex. No.
`
`Description
`
`1201 U.S. Patent 8,648,717, “the ‘717 Patent”, issued Feb. 11, 2014, from
`U.S. App. 13/934,763 filed Jul. 3, 2013
`
`1202
`
`1203
`
`1204
`
`1205
`
`Expert Declaration of Kimmo Savolainen in support of Petition for IPR
`of the ‘717 Patent (Curriculum Vitae attached)
`
`Patent Owner’s Preliminary Infringement Contention Claim Chart
`against Petitioners in the ‘717 Patent litigation. (Exhibit improperly
`marked confidential, see appended Discovery Dispute Hearing
`transcript at 72:9-73:9, designating infringement contentions as non-
`confidential information.)
`
`File History for U.S. App. 13/328,095 issued as U.S. Patent 8,633,802
`(“the ‘802 Patent”) (excerpts)
`
`File History for U.S. App. 13/934,763 issued as the ‘717 Patent
`(excerpts)
`
`1206 U.S. Patent 8,094,010 (“the ‘010 Patent”), issued Jan. 10, 2012, from
`U.S. App. 12/538,603 filed Aug. 10, 2009
`
`1207 Decision to Institute Inter Partes Review, issued April 22, 2016, in
`IPR2016-00055 (Paper 9)
`
`1208
`
`International Publication No. WO 00/17021 to Van Bergen published
`Mar. 30, 2000 (“Van Bergen”)
`
`iii
`
`
`
`
`Ex. No.
`
`Description
`
`1209 Bettstetter C., “General packet Radio Service GPRS: Architecture,
`Protocols, and Air Interface”, IEEE Communications Survey, 1999
`
`1210 Ames et al., “The Evolution of Third-Generation Cellular Standards,”
`Intel Technology Journal, Q2, 2000
`
`1211 District Court Claim Construction Order in the litigation of the ‘197 and
`‘010 Patents, Nov. 19, 2013, and Clarification, Jan. 24, 2014
`
`1212
`
`Joint Claim Construction Statement in ‘717 Patent Litigation
`
`1213 Redl et al. “GSM and Personal Communications Handbook,” 1998
`
`1214 Bhalla, “Generations of Mobile Wireless Technology: A Survey”
`International Journal of Computer Applications, August 2010
`
`1215
`
`1216
`
`1217
`
`1218
`
`Transcript of the Deposition of Dr. Eveline Wesby-Van Swaay dated
`Jan. 21, 2014
`
`Transcript of Deposition of Dr. Eveline Wesby-Van Swaay dated Aug.
`14, 2012
`
`Transcript of the Deposition of Dr. Alon Konchitsky, “Konchitsky Tr.”
`May 27, 2015
`
`Summary Judgment Memorandum Opinion (“Opinion”) issued in the
`litigation of the ‘010 Patent on January 6, 2016
`
`iv
`
`
`
`
`Ex. No.
`
`Description
`
`1219 District Court Memorandum Opinion on Claim Construction in the
`litigation of the ‘197 and ‘010 Patents, Nov. 12, 2013
`
`1220
`
`Ex parte Takahashi, No. 2004-2192, 2004 WL 2733658 (BPAI 2004)
`
`1221 Nokia 20 GSM Connectivity Terminal, 2001
`
`1222 M2M Magazine, “Pioneers of Change,” 2009
`
`1223
`
`1224
`
`Telital Automotive Manual, “SR11 Nettuno GSM Based GPS Location
`System,” Sept. 1999
`
`Salkintzis A.K., “A Survey of Mobile Data Networks”, University of
`British Columbia, 1999
`
`1225
`
`1G, 2G, 3G, 4G - The Evolution of Wireless Generations,” 2008
`
`1226 Microsoft Computer Dictionary Fourth Edition, 1999 (excerpt)
`
`1227
`
`Joint Claim Construction Brief in ‘010 Patent Litigation
`
`1228
`
`Transcript of the Deposition of Dr. Ray Nettleton, “Nettleton Tr.” May
`6, 2015
`
`1229 U.S. Patent 8,633,802, issued Jan. 21, 2014, from U.S. app. 13/328,095
`filed Dec.16, 2011
`
`1230
`
`Telital, “Company Profile,” March 2000
`
`v
`
`
`
`
`Ex. No.
`
`Description
`
`1231 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
`
`1232
`
`1233
`
`1234
`
`Ex parte Vesto, No. 2013-009212, 2016 Pat. App. LEXIS 2105 (PTAB,
`Nov. 7, 2014)
`
`Ex parte Scortecci, No. 2014-001781, 2016 Pat. App. LEXIS 1052
`(PTAB, Mar. 17, 2016)
`
`Ex parte Cruz-Hernandez, No. 2014-000203, 2016 Pat. App. LEXIS
`1627 (PTAB, Feb. 1, 2016)
`
`1235
`
`Transcript of the Deposition of Kimmo Savolainen dated Jun. 10, 2015
`
`1236
`
`Transcript of the Deposition of Kimmo Savolainen dated Jul. 7, 2016
`
`1237
`
`Joint Stipulation and Order of Dismissal in ‘010 Patent Litigation, Mar.
`10, 2016
`
`1238
`
`Patent Owner’s Preliminary Response in IPR2016-00055, Feb. 1, 2016
`
`1239
`
`1240
`
`Expert Report of Kimmo Savolainen for ‘010 Patent Litigation, May 5,
`2014
`
`Email correspondence between Jeffrey Costakos and David
`Loewenstein dated Jun. 10, 2016-Jun. 20, 2016
`
`vi
`
`
`
`
`Ex. No.
`
`1241
`
`Description
`
`Email from Michelle Moran to the Patent Trial and Appeal Board,
`Caleb Pollack, Guy Yonay, Milo Eadan, David Loewenstein, Kyle
`Auteri, and Jeffrey Costakos dated Jul. 21, 2016
`
`1242 Defendants' Initial Invalidity Contentions, Jul. 2, 2015
`
`1243 Notice of Stipulation to Amend the Scheduling Order, IPR2016-00055,
`Paper 21, Jun. 16, 2016
`
`
`
`vii
`
`
`
`
`
`
`Petitioners submit this Reply in support of their motion to join IPRs
`
`IPR2016-01081 (“New Petition”) and IPR2016-00055 (“Instituted IPR”). Patent
`
`Owner’s (“PO”) Opposition (Paper 8, “Opp. Br.”) is an agglomeration of incorrect
`
`and internally inconsistent factual statements and unsupported legal arguments. For
`
`example, PO argues that the New Petition is “simply recycled” prior argument
`
`(Opp. Br. 11), and a repetition of previous arguments (Opp. Br. 3-4, 7-8); then, it
`
`argues it will suffer “substantial[] prejudice” (Opp. Br. 2, 9) because of a joined
`
`proceeding’s “complexity and burden” (Opp. Br. 13). Both cannot be correct. What
`
`is indisputably true is:
`
`
`
`There is no one-year time bar associated with joinder motions (see
`
`Opening Br. 4-5). PO’s contrary argument (Opp. Br. 1) is false.
`
`
`
`There is no rule prohibiting joining IPRs that include the same parties
`
`(see Paper 1, Opening Br. 5). Again, PO’s contrary argument (Opp. Br. 14) has no
`
`legal basis – and simply is wrong.
`
`
`
`The references in the New Petition (Cell-Eye/Van Bergen and
`
`Bettstetter) are identical to the references that are being considered in the Instituted
`
`IPR, were the same as those relied on in two district court proceedings, and that PO
`
`has known about for years (Ex. 1239 at 48-53, 56; Ex. 1242 at 32, 36). PO has
`
`already made extensive arguments to the Board, directed to that prior art and the
`
`claims at issue (Ex. 1238 at 51-67). Nothing is new: little additional work needs to
`
`
`
`
`
`
`
`be done by either the PO or the Board, especially if PO’s argument that the proof is
`
`“simply recycled” is correct.
`
`
`
`All claims in the New Petition are dependent on claims already
`
`undergoing review. The Board and PO are both familiar with the invalidity proof
`
`for those independent claims and will address them in the upcoming trial.
`
`
`
`The claims at issue are trivially different from the claims already
`
`undergoing review, as PO has admitted: “This claim [i.e., claim 26] is nearly
`
`identical to claims 5 and 12 [other dependent claims that are undergoing review]
`
`…” (Ex. 1238 at 61; emphasis added). PO says essentially the same thing for
`
`claims 25, 27 and 28 (see Ex. 1238 at 61-62).
`
`
`
`Although claims 25-27 in the New Petition are dependent, they are
`
`broader than those already undergoing review (see charts in Opening Br. 34-
`
`39). Thus, if the claims undergoing review are invalid, these broader claims must
`
`be too. PO has not disputed this conclusion.
`
`
`
`Petitioners’ expert who submitted declarations showing the claims are
`
`invalid is the same in both Petitions, and PO thoroughly deposed him twice based
`
`on the prior art Van Bergen/CELL-EYE reference, once in the district court
`
`proceeding and again in the Instituted IPR (see below). No additional work is
`
`necessary.
`
`
`
`2
`
`
`
`
`I.
`
`PATENT OWNER WILL SUFFER NO PREJUDICE
`
`As Petitioners explained in the opening brief and above, there is every
`
`good reason to join these Petitions into one efficient, comprehensive procedure.
`
`Petitioners have more than fulfilled their obligation to show good cause for
`
`joinder; PO, however, has wholly failed to give any coherent reason why these
`
`highly similar IPRs should not be joined. For example, PO has not identified one
`
`iota of prejudice. The assertion that it will be prejudiced because it will not waive
`
`its right to a preliminary response (Opp. Br. 12) is its own strategic decision and is
`
`not evidence of prejudice. No party can manufacture its own prejudice. Further,
`
`PO’s argument that under the new IPR rules it will be allowed to provide evidence
`
`in its preliminary response (Opp. Br. 9) does not show prejudice. This is PO’s
`
`procedural advantage, the opposite of prejudice, and is not a sufficient
`
`justification to deny Petitioners the opportunity to have these issues decided on the
`
`merits.
`
`Regardless, any PO submission presumably would be a repetition of the
`
`arguments PO already made, both here (see Ex. 1238 at 24-63), and in the district
`
`court, and cannot rise to the level of “prejudice.”
`
`Similarly, PO’s complaint that it will be prejudiced because it “may need to
`
`take a second deposition of Petitioners’ expert …” (Opp. Br. 13) is belied by the
`
`facts. First, PO was not sure if it wanted to depose the expert at all (Ex. 1240).
`
`3
`
`
`
`
`Ultimately, his deposition lasted only three hours, from 9:27AM until 12:21PM
`
`(including breaks; Ex. 1236 at 1, 21). Indeed, a good part of the three hours was
`
`spent on the Van Bergen/CELL-EYE reference which is the primary reference in
`
`the New Petition (see Ex. 1236 at 33, 23, index “Van” and “Cell-Eye”). Petitioners
`
`offered to allow PO’s counsel to examine the witness in the afternoon concerning
`
`the New Petition, which he refused to do (Ex. 1236 at 20).
`
`A second deposition could have been easily avoided – and cannot be the
`
`basis of PO’s prejudice claim.
`
`Moreover, Petitioners’ expert has already been deposed in the district court
`
`litigation for hours on the same subject matter (see Ex. 1235 at 2, Ex. 7 (the
`
`“CELL-EYE” reference), and see the index for “CELL-EYE,” referring to
`
`transcript at 40 (Ex. 1235 at 11) starting at 10:04AM to 93 (Ex. 1235 at 25), the
`
`lunch break was at page 110 (Ex. 1235 at 29) at 12:55PM, meaning the expert was
`
`examined for almost three hours on the CELL-EYE reference at issue here --
`
`altogether almost six hours).
`
`Additionally, PO’s assertion that Petitioners are a party to IPR2015-01823
`
`(Opp. Br. 14) is simply false, as a check of the docket shows.
`
`Finally, there has been no prejudicial delay. The joinder motion was filed
`
`within one month of the Decision in the Instituted IPR.
`
`
`
`4
`
`
`
`
`II.
`
`JOINDER WILL NOT IMPACT THE EXISTING SCHEDULE
`
`The trial is currently scheduled for December. The parties can easily prepare
`
`for trial including the handful of new claims in the intervening four months,
`
`especially if the issues are “simply recycled,” and PO has known about them for
`
`years. If PO wants additional time, as it has already asked for (see Ex. 1243),
`
`Petitioners are certainly willing to accommodate a reasonable request, again.
`
`On July 21, 2016, PO’s counsel indicated it was withdrawing (Ex. 1241).
`
`New counsel is likely to seek to extend dates to learn the subject matter.
`
`Consequently, there would be no prejudicial delay from joinder.
`
`III. PO’S CITED BOARD DECISIONS ARE INAPPOSITE
`In Medtronic, Paper 18 at 8; Standard Innovation, Paper 10 at 7; LG, Paper
`
`10 at 9; and two Samsung decisions, IPR2015-00820, Paper 12 at 2; IPR2015-
`
`00821, Paper 10 at 2 (Opp. Br. 4-5), the Board denied institution and joinder
`
`because the second petition presented additional prior art references. Similarly, in
`
`Atoptech, Paper 14 at 7-8, the Petitioners attempted to change the Board’s claim
`
`construction in a second IPR. In Butamax, Paper 8 at 8-11, one of the new claims
`
`was already undergoing review in the Instituted IPR and the Petitioners attempted
`
`to introduce four new obviousness grounds in the new IPR. Those are not our facts.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioners’ motion to join the Instituted IPR and
`
`the New Petition should be granted.
`
`5
`
`
`
`
`
`
`
`
` Respectfully submitted,
`Pearl Cohen Zedek Latzer Baratz LLP
`
`By: / David Loewenstein/
`David Loewenstein
`Reg. No. 35,591
`Lead Counsel for Petitioners
`
`
`
`
`
`DATED: July 25, 2016
`
`
`Pearl Cohen Zedek Latzer Baratz LLP
`ATTN: David Loewenstein
`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
`
`
`
`
`
`
`
`
`
`
`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 PETITIONERS’ REPLY IN SUPPORT OF ITS
`
`MOTION FOR JOINDER TO INSTITUTED IPR2016-00055 UNDER 37
`
`C.F.R. § 42.122(B), and Exhibits 1235-1243, are being served by electronic mail
`
`on the 25th day of July, 2016, the same day as the filing of the above-identified
`
`documents in the United States Patent and Trademark Office with the Patent Trial
`
`and Appeal Board, upon the patent counsel of record for this proceeding:
`
`jcostakos@foley.com
`
`mmoran@foley.com
`
`
`
`DATED: July 25, 2016
`
`
`Respectfully submitted,
`Pearl Cohen Zedek Latzer Baratz LLP
`
`By: /David Loewenstein/
`David Loewenstein
`Reg. No. 35,591
`Lead Counsel for Petitioners
`
`Pearl Cohen Zedek Latzer Baratz LLP
`ATTN: David Loewenstein
`1500 Broadway 12th floor
`New York, NY 10036
`Phone: (646) 878-0800
`Fax: (646) 878-0801
`
`
`
`
`
`
`
`
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