UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`PROTECTION ONE, INC.,
`Petitioner
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`v.
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`MD SECURITY SOLUTIONS, LLC,
`Patent Owner
`______________________
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`
`
`Case IPR2016-01235
`Patent 7,864,983
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`______________________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b) OR, IN THE
`ALTERNATIVE, FOR COORDINATION OF SCHEDULE, AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`______________________
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`
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`PROTECTION ONE, INC.,
`Petitioner
`
`v.
`
`MD SECURITY SOLUTIONS, LLC,
`Patent Owner
`______________________
`
`
`
`Case IPR2016-01235
`Patent 7,864,983
`
`______________________
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b) OR, IN THE
`ALTERNATIVE, FOR COORDINATION OF SCHEDULE, AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`RELIEF REQUESTED
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,983
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`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b), Protection One,
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`Inc. (“Petitioner”) hereby moves for joinder of any proceeding resulting from its
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`new Petition for Inter Partes Review (“IPR”) of United States Patent No. 7,864,983
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`(“the ’983 patent”) — filed concurrently with this Motion—with the recently
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`instituted IPR for the ’983 patent, IPR2016-00285, naming RPX Corporation as
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`petitioner. In the alternative, if the Board does not grant joinder, Petitioner
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`requests that the Board coordinate the schedules of each proceeding such that, at
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`minimum, the oral arguments (if requested) occur at the same time, facilitating
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`entry of concurrent Final Written Decisions.
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`In conjunction with this request for joinder or coordination, Petitioner
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`respectfully requests that the Board specify a shortened response period in which
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`Patent Owner MD Security Solutions, LLC (“Patent Owner”) may file a
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`Preliminary Response to this new Petition. The new Petition includes only the
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`grounds instituted in IPR2016-00285 and is substantively identical on those
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`grounds.1 Given the identity of issues presented by this new Petition and those
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`1 The petitions, of course, are not wholly identical. The present Petition has been
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`updated to account for the formalities of a different Petitioner and real parties in
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`1
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`raised by RPX Corporation in the prior co-pending proceeding, the proposal for a
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,983
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`shortened response period does not impose an undue burden on Patent Owner.
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`Moreover, in establishing a shortened deadline, the Board will provide itself with
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`more time before the institution decision is due to consider any additional
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`information furnished by Patent Owner in its Preliminary Responses to the new
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`Petition, if any are raised.
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`Even if the Board declines to establish the proposed shortened response
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`deadline for the Preliminary Response, Petitioner nevertheless maintains its motion
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`for joinder.
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`II.
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`1.
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`STATEMENT OF MATERIAL FACTS
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`On December 4, 2015, RPX Corporation filed a Petition for Inter
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`Partes Review of US Patent No. 7,864,983, challenging claims 1-20 under §103(a).
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`On March 14, 2016, Patent Owner filed its Preliminary Responses in IPR2016-
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`00285. On June 6, 2016, the Board issued an institution decision and scheduling
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`order in IPR2016-00285.
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`2.
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`On July 5, 2016, Petitioner filed this Petition for Inter Partes Review
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`(“IPR”) of US Patent No. 7,864,983, challenging claims 1-20 under §103(a).
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`interest, the related matters have been updated, grounds not instituted in RPX
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`Corporation’s IPR have been omitted, and there are nominal clerical changes.
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`2
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`3.
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`This new Petition for IPR challenges the same claims of the ’983
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,983
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`patent using the same grounds as RPX Corporation’s previous Petition for IPR of
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`the ’983 patent (i.e., IPR2016-00285). Moreover, as noted above, this new Petition
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`is substantively identical as to those grounds, and presents no new issues.
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`III. DISCUSSION
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`The requested joinder will serve to secure the just, speedy, and inexpensive
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`resolution of these proceedings. Under 35 U.S.C. § 325(c):
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`If more than 1 petition for a post-grant [or covered business method]
`review under this chapter is properly filed against the same patent and
`the Director determines that more than 1 of these petitions warrants
`the institution of a post-grant review under section 324, the Director
`may consolidate such reviews into a single post-grant [or covered
`business method] review.
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`In addition, 37 C.F.R. § 42.222(b) provides that “[j]oinder may be requested
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`by a patent owner or petitioner. Any request for joinder must be filed, as a motion
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`under § 42.22, no later than one month after the institution date of any post-grant
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`[or covered business method] review for which joinder is requested.”
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`This Motion is timely under § 42.222(b) because RPX Corporation’s
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`Petition for IPR was instituted on June 6, 2016. Moreover, at the time of this
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`filing, IPR2016-00285 is pending.
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`3
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`The Board has further provided that a motion for joinder should: (1) set forth
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,983
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`the reasons why joinder is appropriate; (2) identify any new grounds of
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`unpatentability asserted in the petition; (3) explain what impact (if any) joinder
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`would have on the trial schedule of the existing proceeding; and (4) address
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`specifically how briefing and discovery may be simplified. See, e.g., Kyocera
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`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013). Analysis of
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`these factors here warrants the Board’s use of its discretion to grant the requested
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`joinder.
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`A.
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`Joinder is Appropriate Because Both Proceedings Involve the Same
`Prior Art, the Same Claims, and the Same Grounds of Unpatentability
`– No New Grounds Are Presented
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`The challenged claims and grounds of Petitioner’s petition are substantively
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`identical to claims and grounds presented in the petition filed by RPX Corporation
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`(IPR2016-00285). Moreover, Petitioner has limited its grounds to only those
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`grounds instituted on June 6, 2016. The same prior art, and even the same expert
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`declaration and expert, are used in both proceedings. Petitioner proposes no new
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`grounds of unpatentability. This strongly supports application of joinder.
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`Moreover, if joined, Petitioner agrees to take an “understudy” role as
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`petitioners in other similarly joined proceedings have taken. See IPR2015-01353,
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`Decision, paper 11 at 6 (October 5, 2015), granting institution and joinder where
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`4
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`petitioner requested an “understudy role”. See also, IPR2014-00550, paper 38 at 5
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,983
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`(April 10, 2015).
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`Joinder to or, alternatively, coordination of schedule with proceedings
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`resulting from RPX Corporation’s previous Petition simply provides a mechanism
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`for the efficient adjudication of both proceedings, particularly in light of the above-
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`noted commonalities.
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`Accordingly, for at least the reasons outlined in this motion, any proceeding
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`resulting from Petitioner’s new IPR petition should appropriately be joined to or,
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`alternatively, coordinated with any proceeding(s) resulting from RPX
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`Corporation’s previous petition for IPR of the ’983 patent (i.e., IPR2016-00285).
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`B.
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`Given Its Early Stage, Joinder Should Not Have Any Impact on the
`Trial Schedule of the Existing Proceeding
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`RPX Corporation’s previous IPR petition of the ’983 patent was just
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`instituted on June 6, 2016. Petitioner hereby expressly consents to the existing trial
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`schedule in IPR2016-00285.
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`Further, since the grounds and prior art are identical to those instituted in
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`IPR2016-00285, there are no new issues for Patent Owner to address. Thus, by
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`shortening the period of Patent Owner’s Preliminary Response in this proceeding,
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`the Board can readily set and administer a common schedule deemed reasonable
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`for adjudicating the issues in both proceedings. In other words, the proposed
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`5
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`joinder, or coordination of proceedings, will not have any dilatory impact on the
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,983
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`schedule of the instituted proceeding. Rather, joining, or coordinating, Petitioner’s
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`new petition of the ’983 patent to the instituted proceeding will promote
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`efficiencies.
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`Moreover, as noted previously, Patent Owner will already be required to
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`address the same grounds of unpatentability in both IPR petitions. In the RPX
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`Corporation’s IPR petition, Patent Owner’s Response to the Petition (Due Date 1)
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`is August 29, 2016. See IPR2016-00285, Paper 10, p. 5. Accordingly, Patent
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`Owner will experience little, if any, prejudice as a result of the accelerated due date
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`of its Preliminary Response to Petitioner’s new Petition, because Patent Owner
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`will have been considering and preparing a response to the same grounds with
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`regard to the challenged claims for over two months.
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`C.
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`Joinder Will Simplify Briefing and Discovery Because and a Single
`Oral Hearing Will Improve Efficient Adjudication of Complimentary
`Issues
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`Joining or alternatively coordinating the schedules of the two IPR petitions
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`will simplify discovery. Both IPR petitions share a common expert (Dr. Tal
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`Lavian). Accordingly, joining Petitioner’s new IPR petition of the ‘983 patent to
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`RPX Corporation’s IPR petition or, alternatively, coordinating the schedules of the
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`two reviews will allow for common discovery with regard to Dr. Lavian (e.g., a
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`common date for depositions).
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`6
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`Also as noted above, if joined, Petitioner agrees to take an “understudy” role
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,983
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`as petitioners in other, similarly joined proceedings have taken. In other words, so
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`long as RPX Corporation maintains its IPR, all filings by Petitioner in the joined
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`proceeding will be consolidated with the filings of RPX Corporation, unless a
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`filing solely concerns issues that do not involve RPX Corporation; Petitioner will
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`not introduce any argument or discovery not already introduced by RPX
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`Corporation; Petitioner agrees to be bound by any agreement between Patent
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`Owner and RPX Corporation concerning discovery and/or depositions; and
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`Petitioner shall not receive any direct, cross or redirect time beyond that permitted
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`for RPX Corporation. Thus, if joined, there will be only one set of briefing on the
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`issues, rather than briefing from both RPX Corporation and Petitioner which would
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`result if not joined. Petitioner will assume the primary role only if RPX
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`Corporation ceases to participate.
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`Moreover, Petitioner has conferred with RPX Corporation’s counsel who
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`indicate that RPX Corporation will not oppose this motion for joinder or
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`Petitioner’s role as an understudy.
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant joinder of the trial resulting from institution of the new Petition filed
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`concurrently with this Motion, with any trial(s) resulting from institution of RPX
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`7
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`Corporation’s previously filed Petition for Inter Partes Review of the ‘983 patent
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,983
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`(ie, IPR2016-00285), or, in the alternative, that the Board coordinate the schedules
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`in these proceedings to allow a common oral argument and synchronized Final
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`Written Decisions. In addition, Petitioner respectfully requests a shortened period
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`of August 29, 2016 for a Patent Owner Preliminary Response.
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`Respectfully submitted,
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` /Joshua A. Griswold/
`Joshua A. Griswold, Reg. No. 46,310
`Fish & Richardson P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`T: 214-292-4034
`F: 877-769-7945
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`Attorney for Petitioner
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`Dated: July 5, 2016
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,983
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on July 5, 2016, a complete and entire copy of this Petitioner’s
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`Motion for Joinder was provided via Federal Express, to the Patent Owner by
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`serving the correspondence address of record as follows:
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`BRIAN ROFFE, ESQ
`9206 Avers Avenue, Unit 2
`Evanston IL 60203-1502
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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