Paper No. ____
`Filed: September 8, 2016
`
`Filed on behalf of: Aerohive Networks, Inc.
`By: Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH AND ROSATI
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`AEROHIVE NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2016-01759
`U.S. Patent No. 8,902,760 B2
`_____________________________
`
`
`
`MOTION FOR JOINDER
`
`
`
`
`
`Filed: September 8, 2016
`
`Filed on behalf of: Aerohive Networks, Inc.
`By: Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH AND ROSATI
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`AEROHIVE NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2016-01759
`U.S. Patent No. 8,902,760 B2
`_____________________________
`
`
`
`MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`I.
`
`Statement of the Precise Relief Requested
`
`Aerohive Networks, Inc. (“Aerohive”) moves for joinder of its concurrently
`
`filed petition (“Petition”) for inter partes review of claims 1, 31, 37, 58, 59, 69, 72,
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`73, 106, 112, 134, 142, and 145 (“the challenged claims”) of U.S. Patent
`
`No. 8,902,760 B2 (“the ’760 patent”), purportedly assigned to ChriMar Systems,
`
`Inc. (“Patent Owner”), to an instituted inter partes review initiated by AMX, LLC
`
`and Dell Inc. (“AMX and Dell” or “Existing Petitioners”) AMX, LLC v. ChriMar
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`Systems, Inc., IPR2016-00574 (“the ’574 review”), pursuant to 35 U.S.C. § 315(c)
`
`and 37 C.F.R. § 42.122(b).
`
`This Motion is timely because the Board instituted the ’574 review on
`
`August 10, 2016, less than one month ago. See 37 C.F.R. § 42.122(b). Aerohive
`
`has not previously sought IPR of the challenged claims.
`
`In the Petition, Aerohive requests cancellation of the challenged claims on
`
`the same unpatentability ground, over the same prior art, and in light of the same
`
`arguments and expert testimony as AMX and Dell submitted, and on which the
`
`Board instituted the ’574 review.1 No new claims are challenged; no new issues are
`
`
`1 In their petition, AMX and Dell include another unpatentability ground. The
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`Board declined to institute on that ground. Aerohive omits the non-instituted
`
`ground from its Petition.
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`-1-
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`
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`raised. The Petition is substantially identical to the petition submitted by AMX and
`
`Dell with respect to the instituted ground.
`
`Joinder is also appropriate here because Aerohive expects to participate in
`
`the ’574 review in a limited capacity as an understudy, taking over only if AMX
`
`and Dell settle with Patent Owner. Also, if requested, oral argument is scheduled
`
`for May 3, 2017—months away—making joinder especially appropriate here.
`
`Joinder will have no impact on the trial schedule of the ’574 review because that
`
`proceeding is still in its early stages and Aerohive, in its limited role, is agreeable
`
`to the same schedule. Adding Aerohive as a back-up party does not prejudice the
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`existing parties to the ’574 review and ensures that the challenged claims —
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`asserted against much of the computer networking hardware industry— receive the
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`Board’s expert scrutiny without prejudicing the existing parties to the ’574 review.
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`Aerohive has conferred with counsel for AMX and Dell regarding this
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`joinder request. Counsel indicated that the Existing Petitioners do not oppose
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`joinder.
`
`II. Background
`
`Patent owner has asserted the ’760 patent against most of the computer
`
`networking hardware industry, in courts across the country. Patent owner filed its
`
`complaint against Aerohive on July 1, 2015 in Tyler, Texas. See Case No. 6:15-cv-
`
`00636 (E.D. Tex. filed July 1, 2015). Other companies are fighting off related
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`-2-
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`
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`lawsuits in the Eastern District of Texas, the Northern District of California, and
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`the Eastern District of Michigan, as listed in Exhibit 1012 to Aerohive’s Petition.
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`On February 29, 2016, AMX and Dell petitioned for inter partes review of
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`the ’760 patent’s challenged claims, which was designated as IPR2016-00574. On
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`August 10, 2016 the Board instituted IPR, scheduling oral arguments for May 3,
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`2017. Here, Aerohive’s Petition is a practical copy of AMX and Dell’s petition,
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`including the same prior art, analysis, and expert testimony and differing only to
`
`address formalities, such as, e.g., mandatory notices, counsel, etc., and to omit the
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`non-instituted ground.
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`III. Argument
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`A. Legal Standard
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`The Board may join any person who properly files a petition for inter partes
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`review to an instituted inter partes review as a party. 35 U.S.C. §315(c). A motion
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`for joinder must be filed within one month of institution of any inter partes review
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`for which joinder is requested. 37 C.F.R. § 42.122(b). In deciding whether to grant
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`a motion for joinder, the Board considers several factors including: (1) the reasons
`
`why joinder is appropriate; (2) whether the party to be joined has presented any
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`new grounds of unpatentability; (3) what impact, if any, joinder would have on the
`
`trial schedule for the existing review; and (4) how briefing and discovery may be
`
`simplified. See, e.g., Hyundai Motor Co. v. Am. Vehicular Sciences LLC, IPR2014-
`
`-3-
`
`
`
`01543, Paper 11 at 3 (Oct. 24, 2014); Macronix Int’l Co. v. Spansion, IPR2014-
`
`00898, Paper 15 at 4 (Aug. 13, 2014) (quoting Kyocera Corporation v. Softview
`
`LLC, IPR2013-00004, Paper 15 at 4 (April 24, 2013)).
`
`B. Aerohive’s Motion for Joinder Is Timely
`
`Because the Board instituted the ’574 review less than a month ago on
`
`August 10, 2016, this Motion and the Petition are timely.
`
`C. The Relevant Factors Weigh in Favor of Joinder
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`Each of the four factors the Board considers weighs in favor of joinder here.
`
`Granting joinder neither enlarges the scope of the ’574 review nor affects its
`
`schedule. Denying joinder, though, would prejudice Aerohive and harm the public.
`
`1.
`
`Joinder is Appropriate
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`Here, joinder is appropriate because no new grounds or evidence are
`
`presented. Aerohive’s Petition relies on the same prior art, expert testimony, and
`
`arguments presented in the ’574 petition. Other than minor differences in
`
`formalities such as mandatory notices, and omission of the ground that was not
`
`instituted in the ’574 review, the present Petition is essentially identical to the
`
`petition in the ’574 review.
`
`Joinder is also appropriate because it allows the just, speedy, and
`
`inexpensive resolution of the challenged claims’ validity issues. See 37 C.F.R.
`
`§ 42.1(b). A final written decision will narrow the issues left for the courts in
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`-4-
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`
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`Michigan, Texas, and California to handle. Joining Aerohive as a party ensures that
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`the ’574 review reaches a final written decision on schedule.
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`Denying joinder could harm the public if Patent Owner and Existing
`
`Petitioners settle by allowing the ’760 patent, asserted against a large swath of the
`
`computer networking hardware industry, to escape the Board’s expert review. In
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`this scenario, the Board’s evaluation of AMX and Dell’s petition and Patent
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`Owner’s preliminary response would be wasted. But if Aerohive is joined, it could
`
`replace AMX and Dell and take the ’574 review through oral argument. Joinder
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`allows Aerohive to protect the policy goals of inter partes review.
`
`Moreover, granting joinder will not prejudice Patent Owner or the Existing
`
`Petitioners, while denying joinder will prejudice Aerohive. As mentioned above,
`
`the Petition does not raise any new ground that is not raised in the ’574 review. In
`
`addition, the Board issued an institution decision in the ’574 review less than one
`
`month prior to the filing of this motion. Therefore, joinder should not significantly
`
`affect the timing of the ’574 review. Also, there should be little to no additional
`
`cost to Patent Owner or the Existing Petitioners given the overlap in the petitions.
`
`On the other hand, Aerohive and the public may be potentially prejudiced if
`
`joinder is denied. For example, absent joinder, Patent Owner and the Existing
`
`Petitioners might settle and request termination of the proceedings, leaving facially
`
`intact a patent that the Board has already found is likely unpatentable.
`
`-5-
`
`
`
`2.
`
`No New Grounds Are Presented
`
`The Petition and AMX and Dell’s petition are substantively identical except
`
`for omission of the ground that was not instituted in the ’574 review. Aerohive
`
`relies on the same prior art, analysis, and expert testimony as AMX and Dell
`
`submitted. Aerohive challenges no new claims and raises no new issues. The
`
`Board should thus join Aerohive to the ’574 review. See, e.g., Hyundai, IPR2014-
`
`01543, Paper 11 at 2-4; Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`
`IPR2013-00495, Paper 13 at 5-9 (Sep. 16, 2013); Dell Inc. v. Network-1 Solutions,
`
`Inc., IPR2013-00385, Paper 17, at 6-10 (Jul. 29, 2013); Motorola Mobility LLC v.
`
`Softview LLC, IPR2013-00256, Paper 10 at 4-10 (June 20, 2013).
`
`3.
`
`Joinder Will Not Negatively Affect the ’574 Review’s
`Schedule
`
`The timing and content of Aerohive’s petition and motion for joinder
`
`minimize any impact on trial schedule in the ’574 review. The ’574 review was
`
`only instituted on August 10, 2016, and oral argument is not scheduled until May
`
`3, 2017. In general, Aerohive expects to be an understudy to AMX and Dell,
`
`stepping into a lead role in the ’574 review only if both AMX and Dell settle. For
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`example, if the proceedings are joined Aerohive will not present additional
`
`technical experts. Accordingly, Aerohive does not believe any extension of the
`
`schedule will be required by virtue of joinder of Aerohive as a party to the
`
`proceeding. Even if the Board were to determine that joinder would require a
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`-6-
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`
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`modest extension of the schedule, such an extension is permitted by law and is not
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`a reason for denying joinder. 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c).
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`4.
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`Discovery and Briefing Can Be Simplified
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`The Board may adopt procedures to simplify briefing and discovery during
`
`trial. See e.g., Hyundai, IPR2014-01543, Paper 11 at 5; Dell, IPR2013-00385,
`
`Paper 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10. As long as AMX
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`and Dell remain, the Board may order petitioners to consolidate filings. Likewise,
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`Aerohive will not submit any separate filings unless it disagrees with AMX or
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`Dell, and if the parties disagree, Aerohive will request that the Board allow a short
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`separate filing directed only to points of disagreement with AMX and Dell with the
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`understanding that it will not be permitted any separate arguments in furtherance of
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`those advanced in the Existing Petitioners’ consolidated filings. See, e.g., Hyundai,
`
`IPR2014-01543, Paper 11 at 5. The Board may also allow the Patent Owner a
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`corresponding number of pages to respond to separate filings. See Dell Inc.,
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`IPR2013-00385, Paper 17 at 8-9. These procedures prevent “complication or
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`delay” due to joinder.
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`Further, no additional depositions will be needed and depositions will be
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`completed within ordinary time limits. See Hyundai, IPR2014-01543, Paper 11 at
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`5. In related district court litigation, Aerohive has retained expert witness Richard
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`Siefert, the same expert who submitted supporting testimony on behalf of AMX
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`-7-
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`
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`and Dell in the ’574 review and whose identical testimony is relied upon in
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`Aerohive’s Petition. Aerohive will be able to provide him for Patent Owner’s
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`cross-examination if AMX and Dell drop out of the ’574 review.
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`To the extent that Aerohive does participate in the proceeding, Aerohive will
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`coordinate with AMX and Dell to consolidate filings, manage questioning at
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`depositions, manage presentations at the hearing, ensure that briefing and
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`discovery occur within the time normally allotted, and avoid redundancies.
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`Aerohive is willing to take a “backseat” role to AMX and Dell, in which it would
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`not file any separate papers without consultation with AMX and Dell and prior
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`authorization from the Board. These procedures should simplify briefing and
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`discovery.
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`IV. Conclusion
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`Aerohive requests that this Motion be granted and an inter partes review of
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`the challenged claims be instituted based on the ground already instituted in the
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`’574 review, and that this proceeding be joined with the ’574 review.
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`
`
`Dated: September 8, 2016
`
`Respectfully submitted,
`
`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
`
`
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`
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`-8-
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing Motion for Joinder by
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`overnight courier (Federal Express or UPS), on this September 8, 2016, on the
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`Patent Owner at the correspondence address of the Patent Owner as follows:
`
`HARNESS, DICKEY & PIERCE, P.L.C.
`P.O. Box 828
`Bloomfield Hills, MI 48303
`
`G. Gregory Schivley
`HARNESS, DICKEY AND PIERCE, P.L.C.
`5445 Corporate Dr, Suite 200
`Troy, MI 48098
`
`Richard W. Hoffman
`REISING ETHINGTON PC
`755 West Big Beaver Road, Suite 1850
`Troy, MI 48084
`
`Justin S. Cohen
`THOMPSON & KNIGHT LLP
`1722 Routh Street, Suite 1500
`Dallas, TX 75201
`
`
`Date: September 8, 2016
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`
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`
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`Respectfully submitted,
`
`
`
`
`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
`
`
`
`-9-
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