`571.272.7822
`
`
`
`
`Paper No. 25
`Filed: March 15, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUCKUS WIRELESS, INC., BROCADE COMMUNICATION
`SYSTEMS, INC. and NETGEAR, INC.,
`Petitioners,
`
`
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`Case IPR2017-00718
`Patent 8,942,107 B2
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and ROBERT J.
`WEINSCHENK, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder to IPR2016-01391
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00718
`Patent 8,942,107
`
`I.
`
`INTRODUCTION
`
`
`
`
`
`
`
`Petitioners, Ruckus Wireless, Inc., Brocade Communication Systems, Inc.,
`
`and Netgear, Inc. (“Ruckus et al.”) filed a Petition (“Pet.”) on January 18, 2017
`
`(Paper 1) requesting inter partes review of claims 1, 5, 31, 43, 70, 72, 74, 75, 83,
`
`103, 104, 111, 123, and 125 of U.S. Patent No. 8,942,107 (“the ’170 patent,” Ex.
`
`1001). Pet. 1. Along with the Petition, Petitioner filed a Motion for Joinder (Paper
`
`3) with Case IPR2016-01391, Juniper Networks, Inc. v. ChriMar Systems, Inc., a
`
`pending inter partes review involving the ’170 patent. Paper 3, 1. Chrimar
`
`Systems, Inc. is Patent Owner in both cases.
`
`By a joint e-mail communication (by Ruckus et al. and Patent Owner in this
`
`proceeding and the parties in IPR2016-01391) with the Board on February 24,
`
`2017, Patent Owner waived its right to file a Preliminary Response in the instant
`
`case, IPR2017-00718. Ex. 3001. Patent Owner also does not oppose Petitioner’s
`
`Motion for Joinder, provided that Ruckus et al. join via an “understudy role” in
`
`IPR2016-01391. See Paper 9 (Response to Motion to Joinder), 1. For the reasons
`
`described below, we institute an inter partes review of all the challenged claims
`
`and grant Petitioner’s Motion for Joinder.
`
`II. ANALYSIS
`
`An inter partes review may be joined with another inter partes review, subject
`
`to the provisions of 35 U.S.C. § 315(c), which governs joinder of inter partes review
`
`proceedings:
`
`(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.
`
`
`2
`
`
`
`
`IPR2017-00718
`Patent 8,942,107
`
`
`
`
`
`As the moving party, Ruckus et al. bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should
`
`(1) set forth the reasons joinder is appropriate; (2) identify any new grounds of
`
`unpatentability asserted in the petition; and (3) explain what impact (if any) joinder
`
`would have on the trial schedule for the existing review. Kyocera Corp. v.
`
`Softview LLC, Case IPR2013-00004, slip. op. at 3–4 (PTAB April 24, 2013) (Paper
`
`15).
`
`Ruckus et al. filed its Motion for Joinder on January 18, 2017. Paper 3. The
`
`Board instituted inter partes review in IPR2016-01391 on December 22, 2016.
`
`IPR2016-01391, Paper 9. Accordingly, the filing date of the Motion for Joinder
`
`satisfies the joinder filing requirement, as set forth in 37 C.F.R. § 42.122. See id.
`
`(“Any request for joinder must be filed . . . no later than one month after the
`
`institution date of any inter partes review for which joinder is requested”). The
`
`Petition asserts the same grounds as those on which the Board instituted review in
`
`IPR2016-01391. Compare Pet. 6–66, with IPR2016-01391, slip. op. at 6 (PTAB
`
`December 22, 2016) (Paper 9) (“’1391 DI”); see also Paper 3, 5 (“The Petition
`
`asserts only grounds that the Board has already instituted in [IPR2016-01391].”)
`
`The Board instituted a trial in the IPR2016-01391 matter on the following
`
`grounds:
`
`Reference(s)
`
`Basis Claims challenged
`
`Hunter1 and Bulan2
`
`§ 103 1, 5, 31, 43, 70, 72, 74, 75, 83, 103,
`104, 111, 123, and 125
`
`
`
`
`
`1 WO 96/23377, Richard K. Hunter et al. (Aug. 1, 1996).
`2 US 5,089,927, Sergio Bulan et al., (Feb. 18, 1992).
`
`3
`
`
`
`
`IPR2017-00718
`Patent 8,942,107
`
`
`
`
`
`Reference(s)
`
`Basis Claims challenged
`
`Bloch,3 Huizinga,4 and
`IEEE 802.35
`
`§ 103
`
`1, 5, 31, 43, 70, 72, 74, 75, 83, 103,
`104, 111, 123, and 125
`
`’1391 DI, 6, 40–41.
`
`As noted above, Ruckus et al., in the e-mail noted above, agreed to take an
`
`understudy role to petitioner in the ’1391 IPR, Juniper Networks, Inc. (“Juniper”),
`
`and agreed to adhere to the existing trial schedule in IPR2016-01391. Ex. 3001;
`
`see also Paper 3, 4–7 (similar assurances). Ruckus et al. also demonstrates
`
`sufficiently that joinder will promote efficiency. See Paper 3, 2–5.
`
`In view of the following: 1) the challenges in the instant Petition are
`
`identical to the grounds instituted in IPR2016-01391; 2) joinder will not impact the
`
`existing trial schedule in IPR2016-01391; 3) joinder will promote efficiency; and
`
`4) all the parties agree that joinder is appropriate, we institute an inter partes
`
`review in this proceeding on the same grounds as those on which the Board
`
`instituted inter partes review in IPR2016-01391 and join this proceeding to
`
`IPR2016-01391.
`
`Accordingly, Ruckus et al. shall adhere to the existing schedule of IPR2016-
`
`01391. Any future filings by Ruckus et al. in IPR2016-01391 shall be consolidated
`
`with the filings of Juniper. If, however, Ruckus et al. has a point of disagreement
`
`related to a consolidated filing, Ruckus et al. may request authorization from the
`
`Board to file an addendum of no more than five pages. If the Board authorizes
`
`Ruckus et al. to file such an addendum, Patent Owner may request authorization
`
`from the Board to file a response of no more than five pages to the addendum. The
`
`3
`
`
` 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).
`
`4
`
`
`
`
`IPR2017-00718
`Patent 8,942,107
`
`
`
`
`
`page limits and word counts as set forth in 37 C.F.R. § 42.24 otherwise will apply
`
`to all consolidated filings.
`
`Ruckus et al. is bound by any discovery agreements, including deposition
`
`arrangements, between Patent Owner and Juniper in IPR2016-01391, and Ruckus
`
`et al. shall not seek any discovery beyond that sought by Juniper. Patent Owner
`
`shall not be required to provide any additional discovery or deposition time as a
`
`result of the joinder. Juniper shall designate attorneys to conduct the cross-
`
`examination of any witness produced by Patent Owner and the redirect
`
`examination of any other witness, within the timeframes set forth in 37 C.F.R.
`
`§ 42.53(c) or as otherwise agreed by Patent Owner and Juniper. No individual
`
`party will receive any additional cross-examination or redirect examination time.
`
`Moreover, if an oral hearing is requested and scheduled, Juniper shall designate
`
`attorney(s) to present a consolidated argument at the oral hearing.
`
`The Board expects Ruckus et al., Juniper, and Patent Owner to meet and
`
`confer regarding any disputes between them and to contact the Board only if such
`
`matters cannot be resolved.
`
`III. ORDER
`
`For the reasons given, it is
`
`
`
`
`
`ORDERED that Petitioner’s Motion for Joinder is granted;
`
`FURTHER ORDERED that IPR2017-00718 is instituted and Ruckus et al.
`
`are joined with IPR2016-01391;
`
`FURTHER ORDERED that the grounds on which IPR2016-01391 were
`
`instituted remain unchanged and no other grounds are included in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Stipulated Schedule (Paper 17) and Order
`
`(Paper 18) in IPR2016-01391 shall govern the schedule of the joined proceeding;
`
`FURTHER ORDERED that, throughout the joined proceeding, Juniper shall
`
`5
`
`
`
`
`IPR2017-00718
`Patent 8,942,107
`
`
`
`
`
`file all papers as a single, consolidated filing;
`
`FURTHER ORDERED that Ruckus et al. is bound by any discovery
`
`agreements between Patent Owner and Juniper in IPR2016-01391 and that Ruckus
`
`et al. shall not seek any discovery beyond that sought by Juniper;
`
`FURTHER ORDERED that Juniper in the joined proceeding shall designate
`
`attorney(s) to conduct the cross-examination, redirect, and any other discovery;
`
`within the timeframes set forth by the rules in the joined proceeding, including 37
`
`C.F.R. § 42.53(c), or as the parties otherwise agree upon;
`
`FURTHER ORDERED that Juniper in the joined proceeding shall designate
`
`attorney(s) to present argument at the oral hearing in the joined proceeding, if
`
`requested and scheduled, in a consolidated argument;
`
`FURTHER ORDERED that IPR2017-00718 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceedings will be in
`
`IPR2016-01391;
`
`FURTHER ORDERED that a copy of this Decision will be entered into the
`
`record of IPR2016-01391; and
`
`FURTHER ORDERED that the case caption in IPR2016-01391 shall be
`
`changed to reflect joinder of this proceeding in accordance with the attached
`
`example.
`
`
`
`
`
`
`
`6
`
`
`
`
`IPR2017-00718
`Patent 8,942,107
`
`For PETITIONER:
`
`Joseph Powers
`Christopher Tyson
`Duane Morris LLP
`japowers@duanemorris.com
`cjtyson@duanemorris.com
`
`Nima Hefazi
`IRELL & MANELLA, LLP
`nhefazi@irell.com
`
`
`
`For PATENT OWNER:
`
`Frank Angileri
`Thomas Lewry
`Christopher Smith
`Marc Lorelli
`BROOKS KUSHMAN P.C
`fangileri@brookskushman.com
`tlewry@brookskushman.com
`csmith@brookskushman.com
`mlorelli@brookskushman.com
`
`Richard Hoffmann
`REISING ETHINGTON P.C.
`hoffmann@reising.com
`
`
`
`
`
`
`
`7
`
`
`
`
`IPR2017-00718
`Patent 8,942,107
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`_____________
`
`
`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 IPR2016-013916
`Patent 8,942,107 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`
`6 Ruckus Wireless, Inc., Brocade Communication Systems, Inc., and Netgear, Inc.
`filed a petition in (now terminated) IPR2017-00718, who have been joined to the
`instant proceeding.
`
`8
`
`
`