`571.272.7822
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`Paper No. 28
`Filed: March 15, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUCKUS WIRELESS, INC., BROCADE COMMUNICATION
`SYSTEMS, INC. and NETGEAR, INC.,
`Petitioners,
`
`
`
`
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`v.
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`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`Case IPR2017-00790
`Patent 8,155,012 B2
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and ROBERT J.
`WEINSCHENK, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
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`
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder to IPR2016-01389
`37 C.F.R. §§ 42.108, 42.122(b)
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`
`
`
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`IPR2017-00790
`Patent 8,155,012
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`I.
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`INTRODUCTION
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`Petitioners, Ruckus Wireless, Inc., Brocade Communication Systems, Inc.,
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`and Netgear, Inc. (“Ruckus et al.”) filed a Petition (“Pet.”) on January 27, 2017
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`(Paper 1) requesting inter partes review of claims 31, 35, 36, 40, 43, 52, 55, 56, 59,
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`60, and 65 of U.S. Patent No. No. 8,115,012 (“the ’012 patent,” Ex. 1001). Pet. 1.
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`Along with the Petition, Ruckus et al. filed a Motion for Joinder (Paper 3) with
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`Case IPR2016-01389, Juniper Networks, Inc. v. ChriMar Systems, Inc., a pending
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`inter partes review involving the ’012 patent. Paper 3, 1. Chrimar Systems, Inc. is
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`Patent Owner in both cases.
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`By a joint e-mail communication (by Ruckus et al. and Patent Owner in this
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`proceeding and the parties in IPR2016-01389) with the Board on February 24,
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`2017, Patent Owner waived its right to file a Preliminary Response in the instant
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`case, IPR2017-00790. Ex. 3001. Patent Owner also does not oppose Ruckus et
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`al.’s Motion for Joinder, provided that Ruckus et al. join via “an understudy role”
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`in IPR2016-01389. See Paper 10 (Response to Motion to Joinder), 1. For the
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`reasons described below, we institute an inter partes review of all the challenged
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`claims and grant Petitioner’s Motion for Joinder.
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`II. ANALYSIS
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`An inter partes review may be joined with another inter partes review, subject
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`to the provisions of 35 U.S.C. § 315(c), which governs joinder of inter partes review
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`proceedings:
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`(c) JOINDER. – If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under 313
`or the expiration of the time for filing such a response, determines
`warrants the institution of an inter partes review under section 314.
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`2
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`IPR2017-00790
`Patent 8,155,012
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`As the moving party, Ruckus et al. bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should
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`(1) set forth the reasons joinder is appropriate; (2) identify any new grounds of
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`unpatentability asserted in the petition; and (3) explain what impact (if any) joinder
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`would have on the trial schedule for the existing review. Kyocera Corp. v.
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`Softview LLC, Case IPR2013-00004, slip. op. at 4 (PTAB April 24, 2013) (Paper
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`15).
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`Ruckus et al. filed its Motion for Joinder on January 27, 2017. Paper 3. The
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`Board instituted inter partes review in IPR2016-01389 on January 25, 2017.
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`IPR2016-01389, Paper 12. Accordingly, the filing date of the Motion for Joinder
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`satisfies the joinder filing requirement, as set forth in 37 C.F.R. § 42.122. See id.
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`(“Any request for joinder must be filed . . . no later than one month after the
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`institution date of any inter partes review for which joinder is requested”). The
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`Petition asserts the same grounds as those on which the Board instituted review in
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`IPR2015-01389. Compare Pet. 26–59, with IPR2016-01389, slip. op. at 5 (PTAB
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`January 25, 2017) (Paper 12) (“’1389 DI”); see also Paper 3, 5 (“The Petition
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`asserts only grounds that the Board has already instituted in [IPR2016-01389].”)
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`The Board instituted a trial in the IPR2016-01389 matter on the following
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`grounds:
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`Reference(s)
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`Basis Claims challenged
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`Hunter1 and Bulan2
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`§ 103 31, 35, 36, 40, 43, 52, 55, 56, 59, 60
`and 65
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`1 WO 96/23377, Richard K. Hunter et al. (Aug. 1, 1996).
`2 US 5,089,927, Sergio Bulan et al., (Feb. 18, 1992).
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`3
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`IPR2017-00790
`Patent 8,155,012
`Bloch,3 Huizinga,4 and
`IEEE 802.35
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`’1389 DI 5.
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`§ 103 31, 35, 36, 40, 43, 52, 55, 56, 59, 60
`and 65
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`As noted above, Ruckus et al., in the e-mail noted above, agreed to take an
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`understudy role to petitioner Juniper Networks, Inc. (“Juniper”) and agreed to
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`adhere to the existing trial schedule in IPR2016-01389. Ex. 3001; see also Paper
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`3, 4–7 (similar assurances). Ruckus et al. also demonstrates sufficiently that
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`joinder will promote efficiency. See Paper 3, 2–5.
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`In view of the following: 1) the challenges in the instant Petition are
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`identical to the grounds instituted in IPR2016-01389; 2) joinder will not impact the
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`existing trial schedule in IPR2016-01389; 3) joinder will promote efficiency; and
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`4) all the parties agree that joinder is appropriate, we institute an inter partes
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`review in this proceeding on the same grounds as those on which the Board
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`instituted inter partes review in IPR2016-01389 and join Ruckus et al. to IPR2016-
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`01389.
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`Accordingly, Ruckus et al. shall adhere to the existing schedule of IPR2016-
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`01389. Any future filings by Ruckus et al. in IPR2016-01389 shall be consolidated
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`with the filings of Juniper. If, however, Ruckus et al. has a point of disagreement
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`related to a consolidated filing, Ruckus et al. may request authorization from the
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`Board to file an addendum of no more than five pages. If the Board authorizes
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`Ruckus et al. to file such an addendum, Patent Owner may request authorization
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`from the Board to file a response of no more than five pages to the addendum. The
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`page limits and word counts, as set forth in 37 C.F.R. § 42.24, otherwise will apply
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`to all consolidated filings.
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`3
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` US 4,173,714, Alan Bloch et al. (Nov. 6, 1979).
`4 US 4,046,972, Donald D. Huizinga et al. (Sept. 6, 1977).
`5 IEEE Standards 802.3-1993 and 802.3-1995 (Parts 1 and 2).
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`4
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`IPR2017-00790
`Patent 8,155,012
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`Ruckus et al. is bound by any discovery agreements, including any
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`deposition arrangements, between Patent Owner and Juniper in IPR2016-01389,
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`and Ruckus et al. shall not seek any discovery beyond that sought by Juniper.
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`Patent Owner shall not be required to provide any additional discovery or
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`deposition time as a result of the joinder. Juniper in the joined proceeding shall
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`designate attorney(s) to conduct the collective cross-examination of any witness
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`produced by Patent Owner and the collective redirect examination of any other
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`witness within the timeframes set forth in 37 C.F.R. § 42.53(c) or as otherwise
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`agreed by Patent Owner and Juniper. No individual party will receive any
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`additional cross-examination or redirect examination time. Moreover, if an oral
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`hearing is requested and scheduled, Juniper in the joined proceeding shall
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`designate attorney(s) to present a consolidated argument at the oral hearing.
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`The Board expects Ruckus et al., Juniper, and Patent Owner to meet and
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`confer regarding any disputes between them and to contact the Board only if such
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`matters cannot be resolved.
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`III. ORDER
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`For the reasons given, it is
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`ORDERED that Ruckus et al.’s Motion for Joinder is granted;
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`FURTHER ORDERED that IPR2016-00790 is instituted and Ruckus et al.
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`is joined with IPR2016-01389;
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`FURTHER ORDERED that the grounds on which IPR2016-01389 were
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`instituted remain unchanged and no other grounds are included in the joined
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`proceeding;
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`FURTHER ORDERED that the Stipulated Schedule (Paper 21) and Order
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`(Paper 22) in IPR2016-01389 shall govern the trial schedule of the joined
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`proceeding;
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`FURTHER ORDERED that, throughout the joined proceeding, Juniper shall
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`5
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`IPR2017-00790
`Patent 8,155,012
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`file all papers as a single, consolidated filing;
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`FURTHER ORDERED that Ruckus et al. is bound by any discovery
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`agreements between Patent Owner and Juniper in IPR2016-01389 and that Ruckus
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`et al. shall not seek any discovery beyond that sought by Juniper;
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`FURTHER ORDERED that Juniper in the joined proceeding shall designate
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`attorney(s) to conduct collective cross-examination, redirect examination, and any
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`other discovery within the timeframes set forth by the rules, including 37 C.F.R.
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`§ 42.53(c), or as the parties otherwise agree upon;
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`FURTHER ORDERED that Juniper in the joined proceeding shall designate
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`attorney(s) to present argument at the oral hearing, if requested and scheduled, in a
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`consolidated argument;
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`FURTHER ORDERED that IPR2017-00790 is terminated under
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`37 C.F.R. § 42.72 and all further filings in the joined proceedings will be in
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`IPR2016-01389;
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`FURTHER ORDERED that a copy of this Decision will be entered into the
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`record of IPR2016-01389; and
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`FURTHER ORDERED that the case caption in IPR2016-01389 shall be
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`changed to reflect joinder of the instant proceeding in accordance with the attached
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`6
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`example.
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`7
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`IPR2017-00790
`Patent 8,155,012
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`For PETITIONER:
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`Joseph Powers
`japowers@duanemorris.com
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`Christopher Tyson
`cjtyson@duanemorris.com
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`
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`For PATENT OWNER:
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`Frank Angileri
`fangileri@brookskushman.com
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`Thomas Lewry
`tlewry@brookskushman.com
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`Christopher Smith
`csmith@brookskushman.com
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`Richard Hoffmann
`hoffmann@reising.com
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`Marc Lorelli
`mlorelli@brookskushman.com
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`IPR2017-00790
`Patent 8,155,012
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`_____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC.,
`RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION
`SYSTEMS, INC., and NETGEAR, INC,
`Petitioners,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-013896
`Patent 8,155,012 B2
`____________
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`6 Ruckus Wireless, Inc., Brocade Communication Systems, Inc., and Netgear, Inc.
`(“Ruckus et al.”) filed a petition in (now terminated) IPR2017-00790, and Ruckus
`et al. has been joined to the instant proceeding.
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`8
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