IPR2017-01235
`U.S. Patent 8,850,507 B2
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`Paper 9
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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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`AT&T SERVICES, INC.,
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`Petitioner,
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`v.
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`CONVERGENT MEDIA SOLUTIONS, LLC,
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`Patent Owner.
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`________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,850,507 B2
`Case IPR No.: IPR2017-01235
`________________
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`
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR JOINDER
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`U.S. Patent 8,850,507 B2
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`Paper 9
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`AT&T SERVICES, INC.,
`
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`
`Patent Owner.
`
`________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,850,507 B2
`Case IPR No.: IPR2017-01235
`________________
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR JOINDER
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`I.
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`II.
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`TABLE OF CONTENTS
`Introduction ..................................................................................................... 1
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`Status of Related Litigations and Proceedings .............................................. 2
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`III. Arguments and Authorities ........................................................................... 4
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`A. AT&T cannot contest that they filed this IPR Petition more than one year
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`after it was served with a complaint for infringement of the ’507 patent. ............ 4
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`B. Petitioner’s Motion for Joinder does not exempt its Petition from the time-
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`bar of §315(b). .................................................................................................... 5
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`C. Other Practical Considerations Weighing Against Institution and Joinder .... 8
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`TABLE OF AUTHORITIES
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`Cases
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`City of Arlington v. FCC, 133 S.Ct. 1863, 1869 (2013) ........................................... 8
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`Statutes and Regulations
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`35 U.S.C. §311(a) ................................................................................................... 1
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`35 U.S.C. §315(b) .......................................................................................... passim
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`35 U.S.C. §315(c) ........................................................................................... 1, 5, 6
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`37 C.F.R. §42.101(b) .............................................................................................. 7
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`37 C.F.R. §42.122(b) .......................................................................................... 7, 8
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`- ii -
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit No.
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`Description
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`2001
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`2002
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`Patent Owner CMS’s First Amended Complaint against Petitioner
`AT&T Services, Inc., Case No. 3:15-cv-02156-M, ECF No. 21
`(Nov. 10, 2015).
`Petitioner AT&T Services, Inc.’s Answer to Patent Owner CMS’s
`First Amended Complaint. Case No. 3:15-cv-02156-M, ECF No.
`26 (Nov. 30, 2015).
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`- iii -
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`I.
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`Introduction
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`Patent Owner Convergent Media Solutions, LLC (“CMS” or “Patent Owner”)
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`files this opposition to Petitioner AT&T Services, Inc.’s (“AT&T” or “Petitioner”)
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`Motion for Joinder, Paper 3 (“Motion”).
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`Petitioner’s Motion for Joinder should be denied. Petitioner cannot dispute
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`that it filed its petition more than one year after it was served with a complaint for
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`infringement of U.S. Patent 8,850,507 (the “’507 patent”). For this reason alone,
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`Petitioner’s IPR petition, Paper 1, is defective and the Board should not institute a
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`trial in this case. See 35 U.S.C. §315(b) (“An inter partes review may not be
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`instituted if the petition requesting the proceeding is filed more than 1 year after the
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`date on which the petitioner … is served with a complaint alleging infringement of
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`the patent.”). Because Petitioner filed a defective petition, joinder would be
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`improper. See 35 U.S.C. §315(c) (authoring joinder only for “any person who
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`properly files a petitioner under section 311 …”) and 35 U.S.C. §311(a) (stating that
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`all petitions are “[s]ubject to the provisions of this chapter,” thus including the
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`timeliness requirement of §315(b)). Any prejudice to Petitioner in denying the
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`Motion for Joinder is a product of Petitioner’s decision to file its Petition after it was
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`time-barred.
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`Patent Owner understands that Petitioner’s IPR petition is duplicative of the
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`grounds, evidence, and arguments presented by petitioners Netflix, Inc. and Roku,
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`Inc. in IPR2016-01761 (the “-01761 IPR”), which has been instituted for trial.
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`Patent Owner is aware of previous Board decisions permitting institution of copy-
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`cat petitions that would otherwise be time-barred when a request for joinder to an
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`instituted trial is filed with the copy-cat petition. Patent Owner respectfully contends
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`that such an outcome is contrary to the statutory mandate of §315(b), and that in
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`doing so the Board exceeds a limitation that Congress placed on the Board’s
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`statutory authority and that is plainly expressed in the statute. Despite the prior panel
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`decisions to the contrary, Patent Owner urges this panel to follow the plain language
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`of the statute; and Patent Owner presents its arguments here to preserve the issue for
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`appeal, if necessary.
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`Additionally, the parties to the proceeding that Petitioner seeks to join have
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`settled their dispute and filed a motion to terminate that proceeding. Patent Owner
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`and Netflix and Roku respectfully believe that the proceeding that AT&T seeks to
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`join should be terminated. On this additional basis, the Motion for Joinder should
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`be denied.
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`II.
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`Status of Related Litigations and Proceedings
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`As of this filing, the ’507 patent is currently subject to one additional IPR
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`proceeding between Patent Owner and Petitioners Netflix, Inc. and Roku, Inc.,
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`the -01761 IPR. This is the same IPR to which Petitioner AT&T currently seeks
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`joinder. On April 24, 2017, Patent Owner and Petitioners Netflix, Inc. and Roku,
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`Inc. jointly sought authorization from the Board to terminate the -01761 IPR based
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`on settlement agreements between Patent Owner and Netflix and Roku, respectively.
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`On May 1, 2017, Patent Owner and Petitioners Netflix and Roku jointly filed a
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`motion to terminate the -01761 IPR.
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`Additionally, pursuant to the settlement agreements between Patent Owner
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`and Netflix, Inc. and Roku, Inc., those parties also stipulated to and did dismiss the
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`underlying litigation proceedings between them:
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`Convergent Media Solutions, LLC v. Netflix, Inc., Case No. 3:15-cv-2160
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`(N.D. Tex.) (Order of Dismissal entered on April 24, 2017, ECF No. 26) and
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`Convergent Media Solutions, LLC v. Roku, Inc., Case No. 3:15-cv-2163 (N.D.
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`Tex.) (Order of Dismissal entered on April 24, 2017, ECF No. 26).
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`The ’507 patent is currently subject of the following, pending district court
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`litigation:
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`Convergent Media Solutions, LLC v. AT&T Services, Inc., Case No. 3:15-cv-
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`02156 (N.D. Tex.).
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`III. Arguments and Authorities
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`AT&T’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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`in §315(b):
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`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).
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`A. AT&T cannot contest that they filed this IPR Petition more than one
`year after it was served with a complaint for infringement of the ’507
`patent.
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`On November 10, 2015, Patent Owner filed its First Amended Complaint
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`alleging infringement of the ’507 patent against Petitioner. See, Exhibit 2001, Case
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`No. 3:15-cv-02156-M, ECF No. 21. On November 30, 2015, Petitioner filed its
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`Answer to Patent Owner’s First Amended Complaint. See, Exhibit 2002, Case No.
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`3:15-cv-02156-M, ECF No. 26. Petitioner’s Petition was filed on April 3, 2017, well
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`after the one-year deadline.
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`Petitioner does not contest that it failed file its Petition within the one-year
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`deadline. Instead, Petitioner contends that the §315(b) time-bar does not apply
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`because Petitioner also filed a Motion for Joinder requesting to be joined a party to
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`the -01761 IPR. See Motion, Paper 3, p. 4 (“The one-year time bar, however, does
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`not apply to a petition filed with a motion for joinder.”); see also p. 6.
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`Following institution of an IPR trial, §315(c) permits joinder only for “any
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`person who properly files a petition under section 311….” 35 U.S.C. §315(b).
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`Petitioner does not meet this statutory requirement because it did not timely file the
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`present Petition. Instead, AT&T took a “wait and see” approach to the IPR process,
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`and sat on its own right to file an IPR petition for more than one year after being
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`served with a complaint for patent infringement of the ’507 patent. Because
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`Petitioner did not “properly file a petition,” it cannot be instituted or joined to
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`the -01761 IPR proceeding.
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`B. Petitioner’s Motion for Joinder does not exempt its Petition from the
`time-bar of §315(b).
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`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
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`the
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`time-bar
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`itself
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`(from
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`the
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`first sentence)
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`inapplicable
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`to a
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`particular petition. Instead, by its plain language, the statute merely states that the
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`one-year limitations period “shall not apply to a request for joinder . . . .” 35 U.S.C.
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`§315(b) (emphasis added). In other words, a petitioner who has timely filed an IPR
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`petition may request joinder to another proceeding after the one-year deadline for
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`filing a petition, and such a request for joinder would not be precluded by the
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`§315(b) one-year deadline. The plain language of the statute, however, simply does
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`not state 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 IPR
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`petition, including the timeliness requirement of §315(b). In other words, a party
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`who did not timely file its own IPR petition did not “properly file” its petition, and
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`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 case
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`only after the Director has first determined that the petition filed by the party seeking
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`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] warrants
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`the institution of an inter partes review under section 314”). Prior to joinder, the
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`Director would have no authority or discretion to institute a petition that was filed
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`more than one year after the petitioner had been served with a complaint alleging
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`infringement of the patent. See 35 U.S.C. §315(b). The second sentence of §315(b)
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`makes the time-bar inapplicable to the request for joinder; but the statutory language
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`does nothing to alter or affect the institution decision which, according to §315(c),
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`must be made as a prerequisite before joinder can even be considered. In making the
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`institution decision, §315(b) very plainly states that a time-barred petition “may not
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`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”).1 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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`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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`1 Section 42.101(b) sets forth a one-year time-bar that is substantively identical to
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`§315(b). See 37 C.F.R. §42.101(b).
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`FCC, 133 S.Ct. 1863, 1869 (2013) (“[F]or agencies charged with administering
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`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 when
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`an otherwise time-barred petitioner files a motion for joinder with the petition.
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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. As such,
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`AT&T’s Petition is time-barred and cannot be properly instituted.
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`C. Other Practical Considerations Weighing Against Institution and
`Joinder
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`As set forth above, the parties to the -01761 IPR have resolved their
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`differences and moved to terminate the proceeding. That proceeding is still in its
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`early stages—no discovery has taken place and Patent Owner has yet to file its Patent
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`Owner Response. Patent Owner respectfully requests that the Board promptly
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`dismiss the -01761 IPR pursuant to the parties’ request. Once dismissed, AT&T’s
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`Motion for Joinder would be moot because the IPR that Petitioner seeks to join
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`would be terminated. To the extent Petitioner contends that it would be prejudiced
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`by such an outcome, the prejudice is of their own doing. Petitioner AT&T is a
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`sophisticated party who was unquestionably aware of the one-year deadline for filing
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`its own IPR petition. Instead of filing within the deadline, AT&T took a wait-and-
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`see approach and should be time-barred per §315(b).
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`For the foregoing reasons, the Board should deny AT&T’s IPR Petition and
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`Motion for Joinder.
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`Respectfully Submitted,
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`/s/ Matthew C. Juren
`Matthew C. Juren
`Registration No. 68,233
`Attorney for Patent Owner
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-9111
`Facsimile: (817) 377-3485
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`Dated: May 3, 2017
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
`Pursuant to 37 C.F.R. §42.24(d), I certify that this Patent Owner’s Opposition
`to Petitioner’s Motion for Joinder complies with the type-volume limits of
`37 C.F.R. §42.24(b)(3) because it contains 1,912 words, excluding the parts of this
`Opposition that are exempted by 37 C.F.R. §42.24(a)(1), according to the word
`processing system used to prepare this Opposition.
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`/s/ Matthew C. Juren
`Matthew C. Juren
`Registration No. 68,233
`Attorney for Patent Owner
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-9111
`Facsimile: (817) 377-3485
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 3rd day of May, 2017, a copy of Patent Owner’s
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`Opposition to Petitioner’s Motion for Joinder has been served in its entirety via email
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`on the following:
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`Kurt Pankratz
`Brian Johnston
`2001 Ross Avenue, Suite 700
`Dallas, Texas 75201
`Tele: (214) 953-6500
`Fax: (214) 953-6503
`kurt.pankratz@bakerbotts.com
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`Case IPR2017-01235
`U.S. Patent No. 8,850,507 B2
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`brian.johnston@bakerbotts.com
`DLInternalATTConvergent@BakerBotts.com
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`Roger Fulghum
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002
`Tele: (713) 229-1234
`Fax: (713) 229-1522
`roger.fulghum@bakerbotts.com
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`Eliot Williams
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`Tele: (650) 739-7500
`Fax: (650) 739-7699
`eliot.williams@bakerbotts.com
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`Respectfully Submitted,
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`/s/ Matthew C. Juren
`Matthew C. Juren
`Registration No. 68,233
`Attorney for Patent Owner
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-9111
`Facsimile: (817) 377-3485
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`Dated: May 3, 2017
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