`
`________________________________________________
`
`Before the Patent Trial and Appeal Board
`________________________________________________
`
`
`
`Aerohive Networks, Inc.,
`Petitioner
`
`v.
`
`Chrimar Systems, Inc.
`Patent Owner
`
`
`
`________________________________________________
`
`Case No. IPR2016-01757
`U.S. Patent No. 8,942,107
`________________________________________________
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107(A) AND
`
`PATENT OWNER’S RESPONSE AND OPPOSITION TO
`AEROHIVE’S MOTION FOR JOINDER
`
`
`
`
`Table of Contents
`
`1
`Introduction and Summary of Arguments . . . . . . . . . . . . . . . . . . . . . . .
` 2
`Summary of Argument . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ..
`4
`Background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . . . .
`A.
`Status of Related Litigation . . . . . . . . . . . . . . . . . . . . . . . 4
`
`B.
`
`Status of Related IPRs . . . . . . . . . . . . . . . . . . . . . . . . . . 4
`
`Arguments and Authorities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
`A.
`Aerohive’s Petition should be Denied because it was not Timely Filed.
`
`Institution is Barred by 35 U.S.C. § 315(b). . . . . . . . . . . . . . . 5
`
`1.
`
`Aerohive does not Contest that it Filed this IPR Petition More
`
`than One Year after it was Served with a Complaint for
`
`Infringement of the ’107 Patent. . . . . . . . . . . . . . . . . . 5
`
`2.
`
`Aerohive’s Motion for Joinder does not Exempt its Petition
`
`from the Time-Bar of § 315(b).. . . . . . . . . . . . . . . . . . 6
`
`B.
`
`Patent Owner’s Response and Opposition to Petitioner’s Motion for
`
`Joinder . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . .
`
`11
`
`1.
`
`The Motion for Joinder should be Denied Because the Motion
`
`was not Authorized by the Board. . . . . . . . . . . . . . . . . 11
`
`-i-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`2.
`
`Aerohive does not meet the statutory requirement for joinder to
`
`the -569 IPR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
`
`3.
`
`The Motion for Joinder should be Denied Because Aerohive did
`
`not Meet its Burden to Show it is Entitled to Joinder. . . . . . 14
`
`C.
`
`If the Motion for Joinder is Granted, this Case should be Terminated
`
`and other Procedural Protections should be Imposed. . . . . . . . . 17
`
`19
`Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . . . .
`Certificate of Service. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . 22
`
`
`
`
`
`
`-ii-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`
`
`AMX, LLC v. Chrimar Systems, Inc.,
`
`IPR2016-00573, Paper 25 (PTAB Nov. 9, 2016) . . . . . . . . . . . . . . . . . . 16
`
`City of Arlington v. FCC,
`
`133 S.Ct. 1863 (2013) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ..
`
` 9
`
`Google, Inc. v. PersonalWeb Techs., LLC,
`
`IPR2014-00977, Paper 10 (PTAB Oct. 30, 2014) . . . . . . . . . . . . . . . . . 13
`
`Hyundai Motor Co. v. American Vehicular Sciences LLC,
`
`IPR2014-01543, Paper 11 (PTAB Oct. 24, 2014) . . . . . . . . . . . . . . . . . 19
`
`Sony Corp. of America v. Network-1 Security Solutions, Inc.,
`
`IPR2013-00495, Paper 13 (PTAB Sept. 16, 2013) . . . . . . . . . . . . . . . . . 19
`
`Statutes
`
`35 U.S.C. § 311 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . .
`
`35 U.S.C. § 313 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . .
`
`2
`
`1
`
`35 U.S.C. § 315 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . passim
`
`35 U.S.C. § 316 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . .
`
`1
`
`
`
`-iii-
`
`
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`Other Authorities
`
`
`
`Office Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) . . . . . . . . . 16
`
`
`
`Regulations
`
`37 C.F.R. § 42.1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . .
`
`17
`
`37 C.F.R. § 42.20 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2, 11, 12, 14
`
`37 C.F.R. § 42.25 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . .
`
`13
`
`37 C.F.R. § 42.101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . .
`
`37 C.F.R. § 42.107 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . .
`
`37 C.F.R. § 42.120 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . .
`
`8
`
`1
`
`1
`
`37 C.F.R. § 42.122 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8, 9, 10, 14
`
`
`
`
`
`-iv-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit Description
`
`Date Filed
`
`Transcript of Telephone Proceedings, November 1,
`2016, IPR2016-01757, IPR2016-01758, IPR2016-
`01759
`Complaint in Chrimar Systems Inc. et al., v. Dell, Inc.
`and Aerohive Networks, Inc., Case No. 6:15-cv-0639
`(E.D. Tex.)
`Proof of service of summons on Aerohive Networks
`Inc. in Chrimar Systems Inc., et al. v. Dell, Inc. and
`Aerohive Networks, Inc., Case No. 6:15-cv-0639 (E.D.
`Tex.)
`Email from R. Smith to J. Cohen dated July 8, 2016
`
`
`11/30/2016
`
`12/14/2016
`
`12/14/2016
`
`12/14/2016
`
`
`
`Chrimar
`Exhibit No.
`
`2089
`
`2090
`
`2091
`
`2092
`
`
`
`-v-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`Introduction and Summary of Arguments
`
`Patent Owner Chrimar Systems, Inc. (“Chrimar” or “Patent Owner”) files
`
`this combined Patent Owner’s Preliminary Response pursuant to 35 U.S.C. § 313
`
`and 37 C.F.R. § 42.107(a) and Patent Owner’s Response and Opposition to
`
`Aerohive’s Motion for Joinder.
`
`This Preliminary Response raises preliminary or threshold issues only, and
`
`does not attempt to make a full response to all arguments or issues raised in the
`
`Petition by Aerohive Networks, Inc. (“Aerohive” or “Petitioner”). If a trial is
`
`instituted in this case, Patent Owner reserves its right to present additional
`
`evidence and to raise additional factual and legal arguments in addition to the
`
`arguments presented in this Preliminary Response. Patent Owner’s decision at this
`
`time to forgo contesting or rebutting any contention or argument made in the
`
`Petition is not an indication of Patent Owner’s agreement with the contention or
`
`argument, nor should it be deemed an admission by Patent Owner as to the truth or
`
`accuracy of such contention or argument. Patent Owner reserves all rights to
`
`provide a full response to the Petition in a Patent Owner Response, in accordance
`
`with the applicable federal statutes and rules of the Patent Trial and Appeal Board.
`
`See 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120.
`
`-1-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`Summary of Argument
`
`Aerohive does not dispute that it filed this petition more than one year after
`
`it was served with a complaint for infringement of U.S. Patent No. 8,942,107 (the
`
`“’107 Patent”). For this reason, Aerohive’s IPR petition must be denied, and the
`
`Board may not institute a trial in this case. See 35 U.S.C. § 315(b) (“An inter partes
`
`review may not be instituted if the petition requesting the proceeding is filed more
`
`than 1 year after the date on which the petitioner . . . is served with a complaint
`
`alleging infringement of the patent”).
`
`Aerohive’s motion for joinder also should be denied. Aerohive’s motion has
`
`not been authorized by the Board, as required by 37 C.F.R. § 42.20(b). Aerohive
`
`does not meet the statutory requirements for joinder, and has no standing to
`
`request joinder, because Aerohive did not file a proper IPR petition. See 35 U.S.C.
`
`§ 315(c) (authorizing joinder only for “any person who properly files a petition
`
`under section 311 . . .”) and 35 U.S.C. § 311(a) (stating that all petitions are
`
`“[s]ubject to the provisions of this chapter,” thus including the timeliness
`
`requirement of § 315(b)). Additionally, Aerohive’s motion for joinder did not meet
`
`Aerohive’s burden to show that joinder is warranted under the particular facts of
`
`this case, as discussed below.
`
`-2-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`Patent Owner concedes that Aerohive’s IPR petition is duplicative of the
`
`ground, evidence, and argument presented by petitioners Dell and AMX1 in Case
`
`IPR2016-00569 (the “-569 IPR”), which has been instituted for trial. Patent Owner
`
`is aware of previous Board decisions permitting institution of copy-cat petitions
`
`that would otherwise be time-barred when a request for joinder to an instituted trial
`
`is filed with the copy-cat petition. Patent Owner respectfully contends that such an
`
`outcome is contrary to the statutory mandate of § 315(b), and that in doing so the
`
`Board exceeds a limitation that Congress placed on the Board’s statutory authority,
`
`and that is plainly expressed in the statute. Despite the prior panel decisions to the
`
`contrary, Patent Owner urges this panel to follow the statute; and Patent Owner
`
`presents its argument here to preserve the issue for appeal, if necessary.
`
`Even if the Board decides to grant Aerohive’s Motion for Joinder, the Board
`
`should impose restrictions and conditions on Aerohive’s participation in the -569
`
`IPR that will ensure Patent Owner is not prejudiced by the joinder, minimize
`
`
`1 Petitioner AMX has been terminated from the -569 IPR pursuant to a joint
`
`request to terminate that was filed following a settlement. See -569 IPR, Paper 27.
`
`-3-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`disruptions in the schedule for the -569 IPR, and otherwise provide efficiency for
`
`the parties and the Board.
`
`A.
`
`Status of Related Litigation
`
`Background
`
`The ’107 Patent is currently one of four related patents asserted in litigation
`
`pending in the Eastern District of Texas against several defendants, including
`
`Aerohive: Chrimar Systems, Inc., et al. v. ADTRAN, Inc. et al., Case No. 6:15-cv-
`
`618. The case against Aerohive is scheduled for trial on January 3, 2017, along with
`
`Aerohive’s co-defendant Dell, Inc. A jury trial was held against Alcatel-Lucent
`
`Enterprise, USA, Inc. (“ALE”) the week of October 3, 2016, resulting in a jury
`
`verdict in Chrimar’s favor.
`
`B.
`
`Status of Related IPRs
`
`The ’107 Patent is currently at issue in one IPR that has been instituted,
`
`the -569 IPR. The ’107 Patent is also the subject of one petition for inter partes
`
`review filed by Juniper Networks, Inc., Case No. IPR2016-01391.
`
`
`
`-4-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`Arguments and Authorities
`
`A. Aerohive’s Petition should be Denied because it was not Timely Filed.
`Institution is Barred by 35 U.S.C. § 315(b).
`
`Aerohive’s IPR Petition was not timely filed, and it may not be instituted for
`
`trial. Congress set forth the one-year statutory time-bar for IPR petitions as follows:
`
`An inter partes review may not be instituted if the petition requesting
`
`the proceeding is filed more than 1 year after the date on which the
`
`petition, real party in interest, or privy of the petitioner is served with
`
`a complaint alleging infringement of the patent. The time limitation
`
`set forth in the preceding sentence shall not apply to a request for
`
`joinder under subsection (c).
`
`35 U.S.C. § 315(b).
`
`1.
`
`Aerohive does not Contest that it Filed this IPR Petition More
`than One Year after it was Served with a Complaint for
`Infringement of the ’107 Patent.
`
`On July 1, 2015, Chrimar filed a complaint for infringement of the ’107
`
`Patent against Aerohive and Dell. See Ex. 2090. The complaint was timely served
`
`on Aerohive on or about July 8, 2015. See Ex. 2091. The case is still pending and
`
`set for trial against Dell and Aerohive on January 3, 2017. Aerohive filed this IPR
`
`Petition on September 8, 2016—more than one year after Aerohive was served
`
`-5-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`with Chrimar’s complaints for infringement of the ’107 Patent. See Petition, Paper
`
`2.
`
`Aerohive does not contest that its IPR petition was filed after the one-year
`
`statutory deadline. Instead, Aerohive contends that the § 315(b) time-bar does not
`
`apply because Aerohive also filed a Motion for Joinder requesting to be joined as a
`
`party to the -569 IPR, which has been instituted for trial. See Petition, Paper 3 at 3
`
`(“The time limit of 35 U.S.C. § 315(b) . . . does not apply here because Aerohive
`
`has moved for joinder . . . .”). See also Order, Paper 7 at 2 (“Aerohive
`
`acknowledged that, unless Motions for Joinder are granted, the Petitions are barred
`
`under 35 U.S.C. § 315(b)”).
`
`2.
`
`Aerohive’s Motion for Joinder does not Exempt its Petition from
`the Time-Bar of § 315(b).
`
`Petitioner is incorrect to assert that its Motion for Joinder makes the § 315(b)
`
`time-bar inapplicable. This is apparent from the plain language of the statute. The
`
`second sentence of § 315(b) does not state that the filing of a request for joinder
`
`makes the time-bar itself (from the first sentence) inapplicable to a particular
`
`petition. Instead, by its plain language, the statute merely states that the one-year
`
`limitations period “shall not apply to a request for joinder . . . .” 35 U.S.C. § 315(b)
`
`(emphasis added). In other words, a petitioner who has timely filed an IPR petition
`
`-6-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`may request joinder to another proceeding after the one-year deadline for filing a
`
`petition, and such a request for joinder would not be precluded by the § 315(b) one-
`
`year deadline. The plain language of the statute, however, simply does not state
`
`that a request for joinder suspends the time-bar for the filing of a petition.
`
`Patent Owner’s reading of § 315(b) is reinforced by the language of § 315(c),
`
`in at least two ways. First, § 315(c) grants the Director the authority and discretion
`
`to join parties to an instituted IPR case, but only for “any person who properly files
`
`a petition under section 311.” See 35 U.S.C. 315(c) (emphasis added). Section
`
`311(a) states that IPR petitions are “[s]ubject to the provisions of this chapter,”
`
`and thus incorporates by reference all of the statutory requirements for a proper
`
`IPR petition, including the timeliness requirement of § 315(b). In other words, a
`
`party who did not timely file its own IPR petition did not “properly file” its
`
`petition, and therefore is not eligible for joinder under § 315(c).
`
`Second, § 315(c) states that the Director may join a party to an instituted
`
`case only after the Director has first determined that the petition filed by the party
`
`seeking joinder should itself be instituted for a full IPR trial. See 35 U.S.C. § 315(c)
`
`(precluding the Director from deciding the joinder issue until after a preliminary
`
`response has been filed to the petition filed by the party seeking joinder, and
`
`-7-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`permitting joinder only if the Director first “determines [that the petition]
`
`warrants the institution of an inter partes review under section 314”). Before
`
`joinder, the Director would have no authority or discretion to institute a petition
`
`that was filed more than one year after the petitioner had been served with a
`
`complaint alleging infringement of the patent. See 35 U.S.C. § 315(b). The second
`
`sentence of § 315(b) makes the time-bar inapplicable to the request for joinder; but
`
`the statutory language does nothing to alter or affect the institution decision which,
`
`according to § 315(c), must be made as a prerequisite before joinder can even be
`
`considered. In making the institution decision, § 315(b) plainly states that a time-
`
`barred petition “may not be instituted . . . .” 35 U.S.C. § 315(b).
`
`Patent Owner is aware that the Board’s regulations governing IPR practice
`
`may be read as contrary to Patent Owner’s interpretation of the § 315(b) time-bar.
`
`See 37 C.F.R. § 42.122(b) (“The time period set forth in § 42.101(b) shall not apply
`
`when the petition is accompanied by a request for joinder”).2 Patent Owner
`
`respectfully contends that the § 42.122(b) is not a valid regulation because it is
`
`
`2 Section 42.101(b) sets forth a one-year time-bar that is substantively
`
`identical to § 315(b). See 37 C.F.R. § 42.101(b).
`
`-8-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`contrary to the statutory mandate of § 315(b), for the reasons previously discussed.
`
`Accordingly, Patent Owner respectfully contends that § 42.122(b) is not a valid
`
`exercise of the USPTO’s statutory rulemaking authority. See City of Arlington v.
`
`FCC, 133 S.Ct. 1863, 1869 (2013) (“[F]or agencies charged with administering
`
`congressional statutes . . . [b]oth their power to act and how they are to act is
`
`authoritatively prescribed by Congress, so that when they act improperly, no less
`
`than when they act beyond their jurisdiction, what they do is ultra vires”). Patent
`
`Owner is unaware of any judicial decision that has endorsed or affirmed the time-
`
`bar waiver in § 42.122(b) as a valid exercise of the USPTO’s administrative
`
`rulemaking authority, or that has found the final sentence of § 42.122(b) to be
`
`consistent with the language of § 315(b). Nor is Patent Owner aware of any judicial
`
`decision that has expressly affirmed the Board’s waiver of the § 315(b) time bar
`
`when an otherwise time-barred petitioner files a motion for joinder with the
`
`petition.
`
`The USPTO and the Board are required to comply with all applicable
`
`statutory mandates, and no discretion is afforded to the USPTO’s interpretation of
`
`statutes that are plain and unambiguous. See City of Arlington, 133 S.Ct. at 1870–71
`
`-9-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`(“[T]he question in every case is, simply, whether the statutory text forecloses the
`
`agency’s assertion of authority, or not”).
`
`Patent Owner respectfully urges the Board to apply the plain language of §
`
`315(b) in this case. The plain language of the statute does not does not suspend the
`
`statutory time-bar when a request for joinder is filed along with a petition. If the
`
`panel feels obligated to ignore § 315(b) because of a contrary regulation (§
`
`42.122(b), final sentence) or because of prior panel decisions, Patent Owner urges
`
`the panel to seek to have this issue decided by an enlarged panel of judges3 (ideally
`
`including the Chief Judge, Deputy Chief Judge, and/or Vice Chief Judges), or by
`
`any other process that will permit the panel to comply with the plain statutory
`
`mandate of § 315(b).
`
`
`3 For clarity, Patent Owner is not itself requesting an enlarged panel at this
`
`time, but is merely suggesting that the current panel seek an enlarged panel
`
`pursuant to Standard Operating Procedure 1 at III(C) (rev. 14, May 8, 2015) if the
`
`panel agrees with Patent Owner’s reading of § 315(b) but feels bound to reach a
`
`contrary result because of inconsistent PTAB regulations or by contrary decisions
`
`by prior panels.
`
`-10-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`Patent Owner’s Response and Opposition to Petitioner’s Motion for
`Joinder
`
`1.
`
`The Motion for Joinder should be Denied Because the Motion was
`not Authorized by the Board.
`
`Aerohive’s Motion for Joinder should be denied because Aerohive has never
`
`
`
`B.
`
`requested authorization to file the motion.
`
`Under the applicable PTAB regulations, all requests for relief (other than a
`
`request for institution of trial) must be made by motion, and all motions must be
`
`authorized by the Board. See 37 C.F.R. § 42.20(a) and (b). The rule states that the
`
`authorization “may be provided in an order of general applicability or during the
`
`proceeding.” See id. at § 42.20(b).
`
`The PTAB’s Trial Practice Guide states that certain motions for which it
`
`may be impractical to obtain prior Board authorization may be filed without the
`
`Board’s prior authorization. See Trial Practice Guide, 77 Fed. Reg. 157 at 48762
`
`(“Generally, a motion will not be entered without prior Board authorization. . . .
`
`Exceptions include motions where it is impractical for a party to seek prior Board
`
`authorization . . . .”) But the Trial Practice Guide does not suspend the
`
`authorization requirement of § 42.20(b) altogether. Instead, the Trial Practice
`
`-11-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`Guide recognizes a limited exception to obtaining prior Board authorization in
`
`cases where it is impractical to do so.
`
`The Trial Practice Guide does not mention a motion for joinder as an
`
`example of motions that do not require prior authorization; but even assuming that
`
`a motion for joinder filed with the petition falls within this exception, Aerohive was
`
`still required to seek the Board’s authorization after the motion was filed. See 37
`
`C.F.R. § 42.20(b) (“A motion will not be entered without Board authorization.”)
`
`(emphasis added). Aerohive has never done so. Aerohive could have requested
`
`such authorization at any time since it filed the petition, but it did not. Aerohive’s
`
`Motion for Joinder should therefore be denied because it lacks the required
`
`authorization.4
`
`
`4 Aerohive previously asserted that Patent Owner had waived any response
`
`or opposition to the Motion for Joinder because a response was not filed within one
`
`month after Aerohive filed the motion. See Paper 7 at 3 (“Chrimar disagreed with
`
`Aerohive as to whether the deadline for filing an opposition to Aerohive’s Motion
`
`for Joinder has passed.”) Aerohive is incorrect, however, because Aerohive never
`
`sought authorization for its motion, and thus the one-month deadline of 37
`
`
`
`-12-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`2.
`
`Aerohive does not meet the statutory requirement for joinder to
`the -569 IPR.
`
`Following institution of an IPR trial, § 315(c) permits joinder only for “any
`
`
`
`person who properly files a petition under section 311 . . . .” 35 U.S.C. § 315(b).
`
`Aerohive does not meet this statutory requirement because it did not timely file its
`
`own IPR petition. Instead, Aerohive took a “wait and see” approach to the IPR
`
`process and sat on its own right to file an IPR for more than 14 months after being
`
`served with a complaint for patent infringement. Because Aerohive did not
`
`“properly file a petition,” it cannot be joined to the -569 IPR case.
`
`
`C.F.R. § 42.25(a)(1) was never triggered. In other cases, patent owners have
`
`responded to a motion for joinder filed with the petition in the patent owner
`
`preliminary response. See, e.g. Google, Inc. v. PersonalWeb Techs., LLC, IPR2014-
`
`00977, Paper 10 at 2 (PTAB Oct. 30, 2014) (where petitioner filed a joinder motion
`
`along with the petition, and where the patent owner “filed a combined Preliminary
`
`Response and Opposition to Google’s Motion for Joinder,” PTAB denied the
`
`joinder motion and dismissed the petition as time barred under § 315(b)).
`
`-13-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`3.
`
`The Motion for Joinder should be Denied Because Aerohive did
`not Meet its Burden to Show it is Entitled to Joinder.
`
`As the moving party, Aerohive bears the burden to show it is entitled to the
`
`
`
`relief it is requesting. See 37 CFR § 42.20(c) and § 42.122(b). Aerohive has not met
`
`that burden. Contrary to Aerohive’s contention, the requested joinder would
`
`prejudice Chrimar. Aerohive states that it “expects to participate in the ’569
`
`review in a limited capacity as an understudy . . . .” Motion for Joinder, Paper 3 at 2
`
`(emphasis added). But Aerohive commits to very little by way of procedural
`
`protections for Chrimar or to ensure efficiency. In particular, Aerohive does not
`
`indicate what portions of the evidence and argument from the -569 IPR it intends to
`
`adopt as its own. Aerohive, for example, does not commit to adopting the prior
`
`deposition testimony of Mr. Seifert or state whether it will agree to be bound by the
`
`statements, admissions and representations that have been made by Dell or AMX
`
`(or that will be made by Dell going forward).
`
`In the motion, Aerohive did not agree to allow Dell to maintain control of
`
`future filings in the -569 IPR or agree to allow Dell to control the management and
`
`strategy for the -569 IPR. Instead, Aerohive offered to coordinate with Dell
`
`regarding filings, strategies and arguments; but it offered no plan for how
`
`disagreements would be resolved. In fact, Aerohive reserved its right to make
`
`-14-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`separate filings when it disagrees with Dell on any issue—briefs that would require
`
`separate and additional responses by Patent Owner. See Paper 3 at p. 7 (“Aerohive
`
`will not submit separate filings unless it disagrees with AMX and Dell . . . .”)
`
`(emphasis added).
`
`Aerohive was incorrect to assert that no additional depositions or discovery
`
`would be required if joinder is granted. See Paper 3 at 8. At a minimum, Chrimar
`
`would be entitled to an additional deposition of Mr. Seifert to explore issues related
`
`to his relationship with and work specifically for Aerohive. Chrimar may also
`
`present Aerohive-specific evidence and arguments concerning potential real-
`
`parties-in-interest issues for Aerohive. This would complicate the pending
`
`proceeding and make it less efficient.
`
`In addition, Aerohive did not adequately articulate the reasons joinder is
`
`appropriate given the particular facts of this case. Aerohive’s motion refers to the
`
`fact that Chrimar has asserted the ’107 Patent against multiple parties in litigation
`
`and makes reference to a “public interest” in making sure the -569 IPR reaches a
`
`conclusion even if Dell and Chrimar were to reach a settlement. See Paper 3 at 5.
`
`Aerohive cites no authority in favor of this alleged public interest, and Aerohive is
`
`wrong to claim that such a public interest exists at all. As the Board has repeatedly
`
`-15-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`recognized, there is a strong public interest favoring settlements. See Office Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“[t]here are strong
`
`public policy reasons to favor settlement between the parties to a proceeding”);
`
`AMX, LLC v. Chrimar Systems, Inc., IPR2016-00573, Paper 25 at 3 (PTAB Nov. 9,
`
`2016). But Aerohive contends that there is a strong public interest in ensuring that
`
`the –569 IPR is not settled. Aerohive’s assertion is unfounded and runs contrary to
`
`the strong policy favoring settlements. In fact, joining Aerohive to the -569 IPR will
`
`inhibit Dell and Patent Owner from reaching a settlement, as such a settlement
`
`would no longer resolve the pending -569 IPR.
`
`Moreover, Aerohive’s motion fails to point out that any affected party had
`
`the right to file a timely IPR petition itself, and each party also may contest the
`
`validity of the ’107 Patent in district court. Given the options available to the
`
`affected parties, any “public interest” in ensuring that the -569 IPR in particular
`
`reaches conclusion is quite weak; any public interest in this context would surely be
`
`outweighed by the strong public policy encouraging parties to reach settlements.
`
`See, e.g., id. at 2 (noting that Aerohive could have avoided any prejudice by simply
`
`filing its own timely petition).
`
`-16-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`For these reasons, Aerohive has not met its burden to show that it is entitled
`
`to be joined in the -569 IPR, and the request should be denied. This is especially
`
`true since Aerohive has no excuse for waiting 14 months to file. Aerohive filed a
`
`petition for ex parte reexamination of one of Chrimar’s patents5 and by July 8,
`
`2016—the one year deadline—was in a position to file more. Ex. 2092.
`
`C.
`
`If the Motion for Joinder is Granted, this Case should be Terminated
`and other Procedural Protections should be Imposed.
`
`Even if the Board grants Aerohive’s Motion for Joinder and adds Aerohive
`
`as a party to the -569 IPR, this case must be terminated. The Board may not
`
`institute this case for a trial because the petition was not timely filed. See 35 U.S.C.
`
`§ 315(b). Moreover, the director has discretion to terminate this case after
`
`Aerohive is joined to the -569 IPR. See 35 U.S.C. § 315(d). Institution for trial in
`
`this IPR and also in the -569 IPR would be inefficient for the parties and wasteful of
`
`the Board’s resources, and thus would not “secure the just, speedy, and
`
`inexpensive resolution” of the proceeding as required by 37 C.F.R. § 42.1(b).
`
`If Aerohive is added as a party to the -569 IPR, Chrimar requests that the
`
`Board impose procedural safeguards to ensure Patent Owner is not prejudiced by
`
`
`5 Application Serial No. 90/013,740 filed on April 27, 2016.
`
`-17-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`the joinder, to minimize disruptions in the schedule for the -569 IPR, and otherwise
`
`to promote efficiency for the parties and the Board. Chrimar requests at least the
`
`following:
`
`• Aerohive should be required to formally adopt all previous filings,
`
`arguments, evidence, positions, representations and statements made
`
`by Dell or AMX in the -569 IPR.
`
`• Aerohive should be required to adopt the previous deposition
`
`testimony of Mr. Seifert, and should be required to produce Mr.
`
`Seifert for additional cross-examination on issues that are unique to
`
`Aerohive.
`
`• Aerohive should be required to submit to the control of Dell with
`
`respect to all future filings in the -569 IPR, and Dell should continue to
`
`control all decisions related to the management and strategy for the
`
`case for so long as Dell is a party to the proceeding.
`
`• Aerohive should not be permitted to make any independent filings on
`
`any issue without prior authorization of the Board.
`
`-18-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`
`• Aerohive should not be permitted to make its own separate arguments
`
`at the oral argument if Dell is a party at the time without prior
`
`authorization of the Board.
`
`See, e.g. Hyundai Motor Co. v. American Vehicular Sciences LLC, IPR2014-01543,
`
`Paper 11 at 4-6 (PTAB Oct. 24, 2014); Sony Corp. of America v. Network-1 Security
`
`Solutions, Inc., IPR2013-00495, Paper 13 at 10–11 (PTAB Sept. 16, 2013).
`
`Conclusion
`
`For the foregoing reasons, the Board should deny Aerohive’s IPR petition
`
`and also deny Aerohive’s Motion for Joinder.
`
`
`
`
`
`-19-
`
`
`
`
`
`Respectfully submitted,
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`
`Dated: December 14, 2016
`
`
`
`
`
` /s/ Justin S. Cohen
`Justin S. Cohen
` Reg. No. 59,964
` Justin.Cohen@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
`214.969.1700
`214.969.1751 (Fax)
`
`Richard W. Hoffmann
` Reg. No. 33,711
` Hoffmann@Reising.com
`REISING ETHINGTON PC
`755 West Big Beaver Road, Suite 1850
`Troy, Michigan 48084
`248.689.3500
`248.689.4071 (Fax)
`
`Counsel for Patent Owner
`Chrimar Systems, Inc.
`
`
`
`
`
`-20-
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), I certify that this Preliminary Response
`
`complies with the type-volume limits of 37 C.F.R. § 42.24(b)(1) because it contains
`
`3,883 words, excluding the parts of this Preliminary Response that are exempted by
`
`37 C.F.R. § 42.24(a)(1), according to the word processing system used to prepare
`
`this Preliminary Response.
`
`
`
` /s/ Justin S. Cohen
`Justin S. Cohen
` Reg. No. 59,964
` Justin.Cohen@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
`214.969.1700
`214.969.1751 (Fax)
`
`-21-
`
`
`
`
`
`
`
`
`December 14, 2016
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-001757
`U.S. Patent No. 8,942,107
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`A copy of this PATENT OWNER’S PRELIMINARY RESPONSE
`
`UNDER 37 C.F.R. §107(a) and PATENT OWNER’S RESPONSE AND
`
`OPPOS