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
`________________________________________________
`
`
`
`
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`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
`
`
`
`
`________________________________________________
`
`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
`________________________________________________
`
`
`
`
`
`
`
`
`
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`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
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`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
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`1.
`
`Aerohive does not Contest that it Filed this IPR Petition More
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`than One Year after it was Served with a Complaint for
`
`Infringement of the ’760 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
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`was not Authorized by the Board. . . . . . . . . . . . . . . . . 11
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`2.
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`Aerohive does not meet the statutory requirement for joinder to
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`the -574 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
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`TABLE OF AUTHORITIES
`
`Cases
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`
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`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
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`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
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`35 U.S.C. § 311 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . .
`
`35 U.S.C. § 313 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . .
`
`2
`
`1
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`35 U.S.C. § 315 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . passim
`
`35 U.S.C. § 316 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . . .
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`1
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`Other Authorities
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`
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`Office Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) . . . . . . . . . 16
`
`
`
`Regulations
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`37 C.F.R. § 42.1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . .
`
`17
`
`37 C.F.R. § 42.20 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2, 11, 12, 14
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`37 C.F.R. § 42.25 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . . .
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`13
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`37 C.F.R. § 42.101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . .
`
`37 C.F.R. § 42.107 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . .
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`37 C.F.R. § 42.120 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . . .
`
`8
`
`1
`
`1
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`37 C.F.R. § 42.122 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8, 9, 10, 14
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit Description
`
`Date Filed
`
`Transcript of Telephone Proceedings, November 1,
`2016, IPR2016-01759, 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
`
`
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`Chrimar
`Exhibit No.
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`2089
`
`2090
`
`2091
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`2092
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`Introduction and Summary of Arguments
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`Patent Owner Chrimar Systems, Inc. (“Chrimar” or “Patent Owner”) files
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`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.
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`This Preliminary Response raises preliminary or threshold issues only, and
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`does not attempt to make a full response to all arguments or issues raised in the
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`Petition by Aerohive Networks, Inc. (“Aerohive” or “Petitioner”). If a trial is
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`instituted in this case, Patent Owner reserves its right to present additional
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`evidence and to raise additional factual and legal arguments in addition to the
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`arguments presented in this Preliminary Response. Patent Owner’s decision at this
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`time to forgo contesting or rebutting any contention or argument made in the
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`Petition is not an indication of Patent Owner’s agreement with the contention or
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`argument, nor should it be deemed an admission by Patent Owner as to the truth or
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`accuracy of such contention or argument. Patent Owner reserves all rights to
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`provide a full response to the Petition in a Patent Owner Response, in accordance
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`with the applicable federal statutes and rules of the Patent Trial and Appeal Board.
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`See 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120.
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`Summary of Argument
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`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. 8,902,760 (the
`
`“’760 Patent”). For this reason, Aerohive’s IPR petition must be denied, and the
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`Board may not institute a trial in this case. See 35 U.S.C. § 315(b) (“An inter partes
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`review may not be instituted if the petition requesting the proceeding is filed more
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`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
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`does not meet the statutory requirements for joinder, and has no standing to
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`request joinder, because Aerohive did not file a proper IPR petition. See 35 U.S.C.
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`§ 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
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`“[s]ubject to the provisions of this chapter,” thus including the timeliness
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`requirement of § 315(b)). Additionally, Aerohive’s motion for joinder did not meet
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`Aerohive’s burden to show that joinder is warranted under the particular facts of
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`this case, as discussed below.
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`Patent Owner concedes that Aerohive’s IPR petition is duplicative of the
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`ground, evidence, and argument presented by petitioners Dell and AMX1 in Case
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`IPR2016-00574 (the “-574 IPR”), which has been instituted for trial. Patent Owner
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`is aware of previous Board decisions permitting institution of copy-cat petitions
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`that would otherwise be time-barred when a request for joinder to an instituted trial
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`is filed with the copy-cat petition. Patent Owner respectfully contends that such an
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`outcome is contrary to the statutory mandate of § 315(b), and that in doing so the
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`Board exceeds a limitation that Congress placed on the Board’s statutory authority,
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`and that is plainly expressed in the statute. Despite the prior panel decisions to the
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`contrary, Patent Owner urges this panel to follow the statute; and Patent Owner
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`presents its argument here to preserve the issue for appeal, if necessary.
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`Even if the Board decides to grant Aerohive’s Motion for Joinder, the Board
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`should impose restrictions and conditions on Aerohive’s participation in the -574
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`IPR that will ensure Patent Owner is not prejudiced by the joinder, minimize
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`1 Petitioner AMX has been terminated from the -574 IPR pursuant to a joint
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`request to terminate that was filed following a settlement. See -574 IPR, Paper 32.
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`disruptions in the schedule for the -574 IPR, and otherwise provide efficiency for
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`the parties and the Board.
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`A.
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`Status of Related Litigation
`
`Background
`
`The ’760 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-
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`618. The case against Aerohive is scheduled for trial on January 3, 2017, along with
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`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
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`verdict in Chrimar’s favor.
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`B.
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`Status of Related IPRs
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`The ’760 Patent is currently at issue in one IPR that has been instituted,
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`the -574 IPR. The ’760 Patent is also the subject of one petition for inter partes
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`review filed by Juniper Networks, Inc., Case No. IPR2016-01399.
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`Arguments and Authorities
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`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
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`trial. Congress set forth the one-year statutory time-bar for IPR petitions as follows:
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`An inter partes review may not be instituted if the petition requesting
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`the proceeding is filed more than 1 year after the date on which the
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`petition, real party in interest, or privy of the petitioner is served with
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`a complaint alleging infringement of the patent. The time limitation
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`set forth in the preceding sentence shall not apply to a request for
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`joinder under subsection (c).
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`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 ’760 Patent.
`
`On July 1, 2015, Chrimar filed a complaint for infringement of the ’760
`
`Patent against Aerohive and Dell. See Ex. 2090. The complaint was timely served
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`on Aerohive on or about July 8, 2015. See Ex. 2091. The case is still pending and
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`set for trial against Dell and Aerohive on January 3, 2017. Aerohive filed this IPR
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`Petition on September 8, 2016—more than one year after Aerohive was served
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`with Chrimar’s complaints for infringement of the ’760 Patent. See Petition, Paper
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`2.
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`Aerohive does not contest that its IPR petition was filed after the one-year
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`statutory deadline. Instead, Aerohive contends that the § 315(b) time-bar does not
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`apply because Aerohive also filed a Motion for Joinder requesting to be joined as a
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`party to the -574 IPR, which has been instituted for trial. See Petition, Paper 3 at 3
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`(“The time limit of 35 U.S.C. § 315(b) . . . does not apply here because Aerohive
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`has moved for joinder . . . .”). See also Order, Paper 7 at 2 (“Aerohive
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`acknowledged that, unless Motions for Joinder are granted, the Petitions are barred
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`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)
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`time-bar inapplicable. This is apparent from the plain language of the statute. The
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`second sentence of § 315(b) does not state that the filing of a request for joinder
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`makes the time-bar itself (from the first sentence) inapplicable to a particular
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`petition. Instead, by its plain language, the statute merely states that the one-year
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`limitations period “shall not apply to a request for joinder . . . .” 35 U.S.C. § 315(b)
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`(emphasis added). In other words, a petitioner who has timely filed an IPR petition
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`may request joinder to another proceeding after the one-year deadline for filing a
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`petition, and such a request for joinder would not be precluded by the § 315(b) one-
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`year deadline. The plain language of the statute, however, simply does not state
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`that a request for joinder suspends the time-bar for the filing of a petition.
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`Patent Owner’s reading of § 315(b) is reinforced by the language of § 315(c),
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`in at least two ways. First, § 315(c) grants the Director the authority and discretion
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`to join parties to an instituted IPR case, but only for “any person who properly files
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`a petition under section 311.” See 35 U.S.C. 315(c) (emphasis added). Section
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`311(a) states that IPR petitions are “[s]ubject to the provisions of this chapter,”
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`and thus incorporates by reference all of the statutory requirements for a proper
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`IPR petition, including the timeliness requirement of § 315(b). In other words, a
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`party who did not timely file its own IPR petition did not “properly file” its
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`petition, and therefore is not eligible for joinder under § 315(c).
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`Second, § 315(c) states that the Director may join a party to an instituted
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`case only after the Director has first determined that the petition filed by the party
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`seeking joinder should itself be instituted for a full IPR trial. See 35 U.S.C. § 315(c)
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`(precluding the Director from deciding the joinder issue until after a preliminary
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`response has been filed to the petition filed by the party seeking joinder, and
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`permitting joinder only if the Director first “determines [that the petition]
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`warrants the institution of an inter partes review under section 314”). Before
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`joinder, the Director would have no authority or discretion to institute a petition
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`that was filed more than one year after the petitioner had been served with a
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`complaint alleging infringement of the patent. See 35 U.S.C. § 315(b). The second
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`sentence of § 315(b) makes the time-bar inapplicable to the request for joinder; but
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`the statutory language does nothing to alter or affect the institution decision which,
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`according to § 315(c), must be made as a prerequisite before joinder can even be
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`considered. In making the institution decision, § 315(b) plainly states that a time-
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`barred petition “may not be instituted . . . .” 35 U.S.C. § 315(b).
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`Patent Owner is aware that the Board’s regulations governing IPR practice
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`may be read as contrary to Patent Owner’s interpretation of the § 315(b) time-bar.
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`See 37 C.F.R. § 42.122(b) (“The time period set forth in § 42.101(b) shall not apply
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`when the petition is accompanied by a request for joinder”).2 Patent Owner
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`respectfully contends that the § 42.122(b) is not a valid regulation because it is
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`2 Section 42.101(b) sets forth a one-year time-bar that is substantively
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`identical to § 315(b). See 37 C.F.R. § 42.101(b).
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`contrary to the statutory mandate of § 315(b), for the reasons previously discussed.
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`Accordingly, Patent Owner respectfully contends that § 42.122(b) is not a valid
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`exercise of the USPTO’s statutory rulemaking authority. See City of Arlington v.
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`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
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`authoritatively prescribed by Congress, so that when they act improperly, no less
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`than when they act beyond their jurisdiction, what they do is ultra vires”). Patent
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`Owner is unaware of any judicial decision that has endorsed or affirmed the time-
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`bar waiver in § 42.122(b) as a valid exercise of the USPTO’s administrative
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`rulemaking authority, or that has found the final sentence of § 42.122(b) to be
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`consistent with the language of § 315(b). Nor is Patent Owner aware of any judicial
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`decision that has expressly affirmed the Board’s waiver of the § 315(b) time bar
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`when an otherwise time-barred petitioner files a motion for joinder with the
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`petition.
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`The USPTO and the Board are required to comply with all applicable
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`statutory mandates, and no discretion is afforded to the USPTO’s interpretation of
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`statutes that are plain and unambiguous. See City of Arlington, 133 S.Ct. at 1870–71
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`(“[T]he question in every case is, simply, whether the statutory text forecloses the
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`agency’s assertion of authority, or not”).
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`Patent Owner respectfully urges the Board to apply the plain language of §
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`315(b) in this case. The plain language of the statute does not does not suspend the
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`statutory time-bar when a request for joinder is filed along with a petition. If the
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`panel feels obligated to ignore § 315(b) because of a contrary regulation (§
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`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
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`including the Chief Judge, Deputy Chief Judge, and/or Vice Chief Judges), or by
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`any other process that will permit the panel to comply with the plain statutory
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`mandate of § 315(b).
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`3 For clarity, Patent Owner is not itself requesting an enlarged panel at this
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`time, but is merely suggesting that the current panel seek an enlarged panel
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`pursuant to Standard Operating Procedure 1 at III(C) (rev. 14, May 8, 2015) if the
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`panel agrees with Patent Owner’s reading of § 315(b) but feels bound to reach a
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`contrary result because of inconsistent PTAB regulations or by contrary decisions
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`by prior panels.
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`Patent Owner’s Response and Opposition to Petitioner’s Motion for
`Joinder
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`1.
`
`The Motion for Joinder should be Denied Because the Motion was
`not Authorized by the Board.
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`Aerohive’s Motion for Joinder should be denied because Aerohive has never
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`
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`B.
`
`requested authorization to file the motion.
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`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
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`authorized by the Board. See 37 C.F.R. § 42.20(a) and (b). The rule states that the
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`authorization “may be provided in an order of general applicability or during the
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`proceeding.” See id. at § 42.20(b).
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`The PTAB’s Trial Practice Guide states that certain motions for which it
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`may be impractical to obtain prior Board authorization may be filed without the
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`Board’s prior authorization. See Trial Practice Guide, 77 Fed. Reg. 157 at 48762
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`(“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
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`authorization . . . .”) But the Trial Practice Guide does not suspend the
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`authorization requirement of § 42.20(b) altogether. Instead, the Trial Practice
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`-11-
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`Guide recognizes a limited exception to obtaining prior Board authorization in
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`cases where it is impractical to do so.
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`The Trial Practice Guide does not mention a motion for joinder as an
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`example of motions that do not require prior authorization; but even assuming that
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`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
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`C.F.R. § 42.20(b) (“A motion will not be entered without Board authorization.”)
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`(emphasis added). Aerohive has never done so. Aerohive could have requested
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`such authorization at any time since it filed the petition, but it did not. Aerohive’s
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`Motion for Joinder should therefore be denied because it lacks the required
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`authorization.4
`
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`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
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`month after Aerohive filed the motion. See Paper 7 at 3 (“Chrimar disagreed with
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`Aerohive as to whether the deadline for filing an opposition to Aerohive’s Motion
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`for Joinder has passed.”) Aerohive is incorrect, however, because Aerohive never
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`sought authorization for its motion, and thus the one-month deadline of 37
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`-12-
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`2.
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`Aerohive does not meet the statutory requirement for joinder to
`the -574 IPR.
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`Following institution of an IPR trial, § 315(c) permits joinder only for “any
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`
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`person who properly files a petition under section 311 . . . .” 35 U.S.C. § 315(b).
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`Aerohive does not meet this statutory requirement because it did not timely file its
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`own IPR petition. Instead, Aerohive took a “wait and see” approach to the IPR
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`process and sat on its own right to file an IPR for more than 14 months after being
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`served with a complaint for patent infringement. Because Aerohive did not
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`“properly file a petition,” it cannot be joined to the -574 IPR case.
`
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`C.F.R. § 42.25(a)(1) was never triggered. In other cases, patent owners have
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`responded to a motion for joinder filed with the petition in the patent owner
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`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
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`along with the petition, and where the patent owner “filed a combined Preliminary
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`Response and Opposition to Google’s Motion for Joinder,” PTAB denied the
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`joinder motion and dismissed the petition as time barred under § 315(b)).
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`-13-
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`3.
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`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
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`
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`relief it is requesting. See 37 CFR § 42.20(c) and § 42.122(b). Aerohive has not met
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`that burden. Contrary to Aerohive’s contention, the requested joinder would
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`prejudice Chrimar. Aerohive states that it “expects to participate in the ’574
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`review in a limited capacity as an understudy . . . .” Motion for Joinder, Paper 3 at 2
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`(emphasis added). But Aerohive commits to very little by way of procedural
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`protections for Chrimar or to ensure efficiency. In particular, Aerohive does not
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`indicate what portions of the evidence and argument from the -574 IPR it intends to
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`adopt as its own. Aerohive, for example, does not commit to adopting the prior
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`deposition testimony of Mr. Seifert or state whether it will agree to be bound by the
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`statements, admissions and representations that have been made by Dell or AMX
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`(or that will be made by Dell going forward).
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`In the motion, Aerohive did not agree to allow Dell to maintain control of
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`future filings in the -574 IPR or agree to allow Dell to control the management and
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`strategy for the -574 IPR. Instead, Aerohive offered to coordinate with Dell
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`regarding filings, strategies and arguments; but it offered no plan for how
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`disagreements would be resolved. In fact, Aerohive reserved its right to make
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`-14-
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`separate filings when it disagrees with Dell on any issue—briefs that would require
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`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).
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`Aerohive was incorrect to assert that no additional depositions or discovery
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`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-
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`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 ’760 Patent against multiple parties in litigation
`
`and makes reference to a “public interest” in making sure the -574 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
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`-15-
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`
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`recognized, there is a strong public interest favoring settlements. See Office Trial
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`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,
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`2016). But Aerohive contends that there is a strong public interest in ensuring that
`
`the –574 IPR is not settled. Aerohive’s assertion is unfounded and runs contrary to
`
`the strong policy favoring settlements. In fact, joining Aerohive to the -574 IPR will
`
`inhibit Dell and Patent Owner from reaching a settlement, as such a settlement
`
`would no longer resolve the pending -574 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 ’760 Patent in district court. Given the options available to the
`
`affected parties, any “public interest” in ensuring that the -574 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).
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`-16-
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`
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`For these reasons, Aerohive has not met its burden to show that it is entitled
`
`to be joined in the -574 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 -574 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 -574 IPR. See 35 U.S.C. § 315(d). Institution for trial in
`
`this IPR and also in the -574 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).
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`If Aerohive is added as a party to the -574 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.
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`-17-
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`
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`the joinder, to minimize disruptions in the schedule for the -574 IPR, and otherwise
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`to promote efficiency for the parties and the Board. Chrimar requests at least the
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`following:
`
`• Aerohive should be required to formally adopt all previous filings,
`
`arguments, evidence, positions, representations and statements made
`
`by Dell or AMX in the -574 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.
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`• Aerohive should be required to submit to the control of Dell with
`
`respect to all future filings in the -574 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.
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`• Aerohive should not be permitted to make any independent filings on
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`any issue without prior authorization of the Board.
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`-18-
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`• 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.
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`
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`
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`-19-
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`Respectfully submitted,
`
`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`Dated: December 14, 2016
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`
`
`
`
` /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-
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
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`
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`Pursuant to 37 C.F.R. § 42.24(d), I certify that this Preliminary Response
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`complies with the type-volume limits of 37 C.F.R. § 42.24(b)(1) because it contains
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`3,883 words, excluding the parts of this Preliminary Response that are exempted by
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`37 C.F.R. § 42.24(a)(1), according to the word processing system used to prepare
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`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-
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`December 14, 2016
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`Case No. IPR2016-001759
`U.S. Patent No. 8,902,760
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`CERTIFICATE OF SERVICE
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`
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`A copy of this PATENT OWNER’S PRELIMINARY RESPONSE
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`UNDER 37 C.F.R. §107(a) and PATENT OWNER’S RESPONSE AND
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`OPPOS
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