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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`D-Link Systems, Inc.,
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`Petitioner,
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`v.
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`Chrimar Systems, Inc.
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`Patent owner,
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`------------------------
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`Case: Unassigned
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`U.S. Patent No. 8,942,107
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`MOTION FOR JOINDER
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`U.S. Patent No. 8,942,107
`Motion for Joinder
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`I.
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`Statement of the Precise Relief Requested
`Petitioner D-Link Systems, Inc. (“Petitioner”) moves for joinder of its
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`concurrently filed petition (“Petition”) for inter partes review of claims 1, 5, 31,
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`43, 70, 72, 74, 75, 83, 103, 104, 111, 123, and 125 (“the challenged claims”) of
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`U.S. Patent No. 8,942,107 B2 (“the ’107 patent”), based on the identical grounds
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`that form the basis for the pending inter partes review initiated by Juniper
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`Networks, Inc. concerning the same patent, Case No. IPR2016-01391 (the “Juniper
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`IPR”).
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`Petitioner respectfully requests that the Petition be instituted and move that
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`the Petition be joined with the Juniper IPR pursuant to 35 U.S.C. § 315(c) and 37
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`C.F.R. §§ 42.22 and 42.122(b). Petitioner merely requests an opportunity to join
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`with the Juniper IPR as an “understudy” to Juniper, only assuming a more active
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`role in the event Juniper settles with Patent Owner Chrimar Systems, Inc.
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`(“Chrimar”). Petitioner does not seek to alter the grounds upon which the Board
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`has already instituted the Juniper IPR, and joinder will have no impact on the IPR’s
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`existing schedule. This motion is timely as it was filed within one month of the
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`institution of IPR2016-01391. 35 U.S.C. §§ 21(b), 315(b), 315(c); 37 C.F.R.
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`§42.122(b).
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`- 1 -
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`U.S. Patent No. 8,942,107
`Motion for Joinder
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`II. BACKGROUND AND RELATED PROCEEDINGS
`The ’107 patent has been the subject of 51 civil actions filed in the Eastern
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`District of Michigan, Eastern District of Texas, and Northern District of California.
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`Attached as Exhibit 1012 is a list identifying each of these civil actions.
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`In July 2016, Juniper Networks, Inc. (“Juniper”) filed four petitions for inter
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`partes review against the Asserted Patents. See IPR Case Nos. IPR2016-01389
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`(‘012 patent), -01399 (‘760 patent), -01391 (‘107 patent), and -01397 (‘838
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`patent).
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`The Board instituted IPR2016-01391 on December 22, 2016. See Paper 9.
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`The Board instituted IPR2016-01397 and -01399 on January 4, 2017. See Paper 8,
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`Paper 8. IPR2016-01389 is pending as of January 17, 2017. See Paper 1.
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`Several other IPRs have been filed against the Asserted Patents and are
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`instituted or awaiting institution. The instituted IPRs include IPR2016-00569
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`(‘107 patent), filed by the AMX, LLC on February 12, 2016, IPR2016-00574 (‘760
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`patent), filed by AMX, LLC on February 29, 2016, IPR2016-00983 (‘012 patent),
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`filed by Dell, Inc. on April 29, 2016, IPR2016-01151 (‘838 patent), filed by Dell
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`Inc. on June 3, 2016 and IPR2016-01425 (‘012 patent), filed by D-Link Systems,
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`Inc. on July 13, 2016. The IPRs awaiting institution include IPR2016-01757 (‘107
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`patent), -01758 (‘838 patent), and -01759 (‘760 patent), filed by Aerohive
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`Networks, Inc. on September 8, 2016.
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`- 2 -
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`U.S. Patent No. 8,942,107
`Motion for Joinder
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`III. LEGAL STANDARD AND APPLICABLE RULES
`Joinder is governed by 35 U.S.C. § 315(c), which reads as follows:
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`Joinder.— If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
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` motion for joinder should “(1) set forth the reasons why joinder is
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` A
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified.” See Decision on Joinder, IPR2013-00385 (Paper No. 17, July
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`29, 2013); see also Order Authorizing Joinder, IPR2013-00004 (Paper No. 15,
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`April 24, 2013.) Petitioner submits the factors outlined below support granting of
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`the present Motion.
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`IV. PETITIONER MEETS THE REQUIREMENTS FOR MOTION FOR
`JOINDER
`Petitioner submits that (1) joinder is appropriate because it will promote
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`efficient determination of the validity of the ‘107 patent without prejudice to
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`Juniper or Chrimar; (2) Petitioner’s petition raises the same grounds for
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`- 3 -
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`U.S. Patent No. 8,942,107
`Motion for Joinder
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`unpatentability as does Juniper’s petition; (3) joinder would not affect the pending
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`schedule in the Juniper IPR nor would it increase the complexity of that
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`proceeding; and (4) Petitioner is willing to accept an understudy role in the Juniper
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`IPR to minimize burden and schedule impact. Absent joinder, Petitioner could be
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`prejudiced if the Juniper IPR is terminated before the Board issues a final written
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`decision. Accordingly, joinder should be granted.
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`A.
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`Joinder Will Promote the Efficient Determination of the ‘107
`Patent’s Validity and Will Not Prejudice Juniper or Chrimar
`Granting joinder and allowing Petitioner to assume an understudy role will
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`not prejudice Juniper or Chrimar. The Petition does not raise any issues that are not
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`already before the Board in the Juniper IPR. Joinder thus would not affect the
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`timing of the Juniper IPR or content of Chrimar’s responses. The Board has
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`granted motions for joinder in similar circumstances. See, e.g., Institution of Inter
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`Partes Review and Grant of Motion for Joinder, IPR2015-00543 (Paper 12, March
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`6, 2015); Decision on Joinder, IPR2014-00949 (Paper 16, January 28, 2015);
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`Decision on Joinder, IPR2015-00176 (Paper 12, November 25, 2014); Decision on
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`Joinder, IPR2014-00743 (Paper 10, June 18, 2014). Petitioner has notified counsel
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`for Juniper of this motion, but has not yet received Juniper's position.
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`- 4 -
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`
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`U.S. Patent No. 8,942,107
`Motion for Joinder
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`B.
`Petitioner’s Petition Raises the Same Grounds as the Juniper IPR
`The Petition asserts only grounds that the Board has already instituted in the
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`Juniper IPR. There are no new arguments for the Board to consider. Likewise, the
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`Petition relies on the same exhibits and expert declaration as the Juniper IPR.
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`C.
`Joinder Will Not Affect the Schedule of the Juniper IPR
`Allowing Petitioner to join the Juniper IPR will not impact the Board’s
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`ability to complete its review within the statutory period and according to the
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`schedule already set in the Juniper IPR. Section 316(a)(11) requires that IPR
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`proceedings be completed and the Board’s final decision issued within one year of
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`the institution of the IPR. See also 37 C.F.R. § 42.100(c). Petitioner agrees to an
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`understudy role and do not raise any issues that are not already before the Board.
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`The invalidity grounds in the Petition are the same as those the Board already
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`instituted in the Juniper IPR. Given that Petitioner will assume an understudy role,
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`their addition to this IPR proceeding will not introduce any additional arguments,
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`briefing, or need for discovery. See Decision on Joinder, IPR2013-00495 (Paper
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`13, Sept. 16, 2013).
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`Petitioner submits that Chrimar does not need to file a Patent Owner’s
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`Preliminary Response, and request that the Board proceed without one. This is
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`consistent with the Board’s Order in IPR2013-00256 (Paper 8, June 13, 2013),
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`which allowed the Patent Owner to file a preliminary response addressing only
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`- 5 -
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`U.S. Patent No. 8,942,107
`Motion for Joinder
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`those points raised in the new petition that were different from those in the granted
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`petition. Here, because the invalidity grounds in the Petition are identical to those
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`instituted in the Juniper IPR, there are no new arguments for Chrimar to address.
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`Chrimar already addressed the invalidity grounds in the Petition in its Preliminary
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`Response to the Juniper IPR. Alternatively, the Board could add an additional
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`deadline for Chrimar to respond to this Petition. This deadline would not impact
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`other deadlines in the schedule.
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`D.
`Petitioner Agree to Assume a Limited Role
`As long as Juniper remains in the joined IPR, Petitioner agrees to assume a
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`limited “understudy” role. Petitioner would only take on a more active role if
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`Juniper were no longer a party to the IPR. Petitioner presents no new grounds for
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`invalidity and their presence in the proceedings will not introduce any additional
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`arguments, briefing or need for discovery.
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`- 6 -
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`U.S. Patent No. 8,942,107
`Motion for Joinder
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`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of the ‘107 patent be granted and that the proceedings be
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`joined with IPR2016-01391.
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`
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`Respectfully submitted,
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`
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`Date: January 23, 2017
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`/David Hoffman/
`David Hoffman, Reg. No. 54,174
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`Attorney for Petitioner
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`- 7 -
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`U.S. Patent No. 8,942,107
`Motion for Joinder
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`CERTIFICATION UNDER 37 CFR § 42.24(d)
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`
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`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
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`the attached Motion for Joinder is being served via Federal Express on the 23rd
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`day of January, 2017, the same day as the filing of the above-identified document
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`in the United States Patent and Trademark Office/Patent Trial and Appeal Board,
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`upon the Patent Owner by serving the correspondence address of record with the
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`USPTO as follows:
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`G. Gregory Schivley (Reg. No. 27,382)
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 Corporate Dr, Suite 200
`Troy, MI 48098
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`and upon counsel of record for the Patent Owner in the litigation pending before
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`the U.S. District Court for the Eastern District of Texas as follows:
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`Justin S. Cohen
`Richard L. Wynne, Jr.
`One Arts Plaza
`1722 Routh St., Suite 1500
`Dallas, Texas 75201
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`Date: January 23, 2017
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`/David Hoffman/
`David Hoffman, Reg. No. 54,174
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`Attorney for Petitioner
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`- 8 -
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