Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: April 3, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS,INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP,INC.,
`Petitioner,
`
`Vv.
`
`TQ DELTA, LLC,
`Patent Owner.
`
`Case IPR2017-00417
`Patent 8,718,158 B2
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,and
`TREVORM. JEFFERSON,Administrative Patent Judges.
`
`MEDLEY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F-.R. § 42.108
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`571-272-7822
`
`Paper 10
`Entered: April 3, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS,INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP,INC.,
`Petitioner,
`
`Vv.
`
`TQ DELTA, LLC,
`Patent Owner.
`
`Case IPR2017-00417
`Patent 8,718,158 B2
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,and
`TREVORM. JEFFERSON,Administrative Patent Judges.
`
`MEDLEY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F-.R. § 42.108
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`I. INTRODUCTION
`
`Comcast Cable Communications, L.L.C., Cox Communications,Inc.,
`
`Time Warner Cable Enterprises L.L.C., Verizon Services Corp., and ARRIS
`
`Group,Inc. (collectively “Petitioner’”) filed a Petition for inter partes review
`
`of claims 1-30 of U.S. Patent No. 8,718,158 B2 (Ex. 1001, “the ’158
`
`patent”). Paper 1 (“Pet.”). Concurrently with its Petition, Petitioner filed a
`Motion for Joinder with Cisco Systems, Inc. v. TO Delta, LLC, Case
`IPR2016-01021 (“the Cisco IPR”). Paper 3 (“Mot.”). Petitioner represents
`
`that the petitioners in the Cisco IPR—Cisco Systems, Inc. and DISH
`
`Network, L.L.C.'—do not oppose the Motion for Joinder. Mot. 1. TQ
`
`Delta, LLC (“Patent Owner’) submits that it does not oppose joinder. See
`
`Paper 9. Patent Owneralso elected to waive its Preliminary Response. Id.
`
`For the reasons explained below, weinstitute an inter partes review of
`
`claims 1—30 of the ’158 patent and grant Petitioner’s Motion for Joinder.
`
`Il. RELATED PROCEEDINGS
`
`Petitioner and Patent Owneridentify several pending judicial matters
`
`as relating to the °158 patent. Pet. 2~3; Mot. 2-3; Paper 6, 2-4.
`
`! DISH Network, L.L.C., whofiled a Petition in IPR2017-00255, has been
`joined as a petitioner in the Cisco IPR.
`
`2
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`In the Cisco IPR, weinstituted an inter partes review of claims 1-30
`
`of the 7158 patent on the following grounds:
`Reacs———a[ais
`
`
`
`
`Shively” and Stopler?
`§ 103(a)
`1, 2, 4, 15, 16, and 18
`
`
`Gents
`
`Bene
`
`BremerandGeszberg_|
`
`Bremet, andFlammer
`
`910500
`
`
`
`
`
`
`
`
`
`Cisco Systems, Inc. v. TQ Delta, LLC, Case IPR2016-01021, slip op. at 20-
`
`21 (PTAB Nov.4, 2016) (Paper 7) (“Cisco Dec.”).
`
`II. INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds of
`
`unpatentability as the ones on which weinstituted review in the Cisco IPR.
`
`Compare Pet. 13-62, with Cisco Dec. 20-21. Indeed, Petitioner contends
`
`that the Petition asserts only the groundsthat the Board instituted in the
`
`Cisco IPR, there are no new arguments for the Board to consider, and
`
`Petitioner relies on the same exhibits and expert declaration as the Cisco
`
`IPR. Mot. 6.
`
`2 U.S. Patent No. 6,144,696; issued Nov. 7, 2000 (Ex. 1011) (“Shively”).
`3 U.S. Patent No. 6,625,219 B1; issued Sept. 23, 2003 (Ex. 1012)
`(“Stopler”).
`4 U.S. Patent No. 6,424,646 B1; issued July 23, 2002 (Ex. 1013)
`(“Gerszberg”).
`> U.S. Patent No. 4,924,516; issued May 8, 1990 (Ex. 1017) (“Bremer”).
`6 U.S. Patent No. 5,515,369; issued May 7, 1996 (Ex. 1019) (“Flammer”).
`
`3
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`For the same reasonsset forth in ourinstitution decision in the Cisco
`
`IPR, we determine that the information presented in the Petition shows a
`reasonablelikelihood that Petitioner would prevail in showing that
`(a) claims 1, 2, 4, 15, 16, and 18 would have been obvious over Shively and
`
`Stopler, (b) claims 3, 5, 14, 17, 19, and 28-30 would have been obvious over
`
`Shively, Stopler, and Gerszberg,(c) claims 6, 9, 10, 12, 20, 23, 24, and 26
`
`would have been obvious over Shively, Stopler, and Bremer, (d) claims8,
`
`11, 13, 22, 25, and 27 would have been obvious over Shively, Stopler,
`
`Bremer, and Gerszberg, and (e) claims 7 and 21 would have been obvious
`
`over Shively, Stopler, Bremer, and Flammer. See Cisco Dec. 7—20.
`
`Accordingly, we institute an inter partes review on the same groundsas the
`
`ones on which weinstituted review in the Cisco IPR. Wedo notinstitute
`
`inter partes review on any other grounds.
`
`IV. GRANT OF MOTION FOR JOINDER
`
`The Petition and Motion for Joinder in this proceeding were accorded
`
`a filing date of December 5, 2016. See Paper 5. Thus, Petitioner’s Motion
`
`for Joinderis timely because joinder was requested no later than one month
`
`after the institution date of the Cisco IPR,i.e., November 4, 2016.’ See 37
`
`C.F.R. § 42.122(b).
`
`The statutory provision governing joinderin inter partes review
`
`proceedingsis 35 U.S.C. § 315(c), which reads:
`
`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 properlyfiles a petition under section
`
`7 Because December 4, 2016 fell on a Sunday, the one-month date extended
`to the next business day, December 5, 2016. See 37 C.F.R. § 1.7.
`
`4
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`311 that the Director, after receiving a preliminary response
`undersection 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review undersection 314.
`
`A motion for joinder should (1) set forth reasons why joinderis appropriate;
`
`(2) identify any new groundsof unpatentability asserted in the petition;
`
`(3) explain what impact(if any) joinder would have onthetrial schedule for
`
`the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`
`00004,slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`Asnoted,the Petition in this case asserts the same unpatentability
`
`grounds on which weinstituted review in the Cisco IPR. See Mot.6.
`
`Petitioneralso relies on the sameprior art analysis and expert testimony
`
`submitted by the Cisco Petitioner. See id. Indeed, the Petition is nearly
`
`identical to the petition filed by the Cisco Petitioner with respect to the
`grounds on which review wasinstituted in the Cisco IPR. See id. Thus,this
`inter partes review does not present any ground or matter not already at
`
`issue in the Cisco IPR.
`
`, Ifjoinder is granted, Petitioner anticipates participating in the
`
`proceeding in a limited capacity absent termination of the Cisco Petitioner as
`
`a party. Id. at 7. Petitioner agrees to “assumea limited ‘understudy’ role”
`
`and “would only take on an active role if Cisco were no longer a party to the
`
`IPR.” Jd. Petitioner further represents thatit “presents no new groundsfor
`
`invalidity and its presence in the proceedings will not introduce any
`
`additional arguments, briefing or need for discovery.” Id. Because
`Petitioner expects to participate only in a limited capacity, Petitioner submits
`that joinder will not impact the trial schedule for the Cisco IPR. Jd. at 6-7.
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`Weagree with Petitioner that joinder with the Cisco IPRis
`
`appropriate under the circumstances. Accordingly, we grantPetitioner’s
`
`Motion for Joinder.
`
`V. ORDER
`
`Accordingly,it is:
`
`ORDEREDthat an inter partes review is instituted in IPR2017-
`
`00417;
`
`FURTHER ORDEREDthat the Motion for Joinder with IPR2016-
`
`01021 is granted, and Comcast Cable Communications, L.L.C., Cox
`
`Communications, Inc., Time Warner Cable Enterprises L.L.C., Verizon
`
`Services Corp., and ARRIS Group,Inc. are joined as a petitioner in
`
`IPR2016-01021;
`
`FURTHER ORDEREDthat IPR2017-00417 is terminated under
`
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2016-
`
`01021;
`
`FURTHER ORDEREDthat, subsequentto joinder, the grounds for
`
`trial in IPR2016-01021 remain unchanged;
`
`FURTHER ORDEREDthat, subsequentto joinder, the Scheduling
`
`Order in place for IPR2016-01021 (Paper 8) remains unchanged;
`
`FURTHER ORDEREDthat in IPR2016-01021, the Cisco Petitioner
`
`and Petitioner will file each paper, except for a motion that does not involve
`
`the other party, as a single, consolidated filing, subject to the page limitsset
`
`forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
`
`consolidatedfiling;
`
`FURTHER ORDEREDthat for any consolidatedfiling,if Petitioner
`
`wishesto file an additional paper to address points of disagreement with the
`
`6
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`Cisco Petitioner, Petitioner must request authorization from the Boardto file
`
`a motion for additional pages, and no additional paper may befiled unless
`
`the Board grants such a motion;
`
`FURTHER ORDEREDthat the Cisco Petitioner and Petitioner shall
`
`collectively designate attorneys to conduct the cross-examination of any
`
`witness produced by Patent Ownerandthe redirect of any witness produced
`
`by the Cisco Petitioner and Petitioner, within the timeframes set forth in 37
`
`C.F.R. § 42.53(c) or agreed to by the parties;
`
`FURTHER ORDEREDthatthe Cisco Petitioner and Petitioner shall
`
`collectively designate attorneys to presentat the oral hearing, if requested
`
`and scheduled,in a consolidated argument;
`
`FURTHER ORDEREDthatthe case caption in IPR2016-01021 shall
`
`be changedto reflect joinder of Comcast Cable Communications, L.L.C.,
`
`Cox Communications, Inc., Time Warner Cable Enterprises L.L.C., Verizon
`
`Services Corp., and ARRIS Group,Inc. as a petitioner in accordance with
`
`the attached example; and
`
`- FURTHER ORDEREDthat a copy of this Decision shall be entered
`
`into the record of IPR2016-01021.
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`FOR COMCASTPETITIONER:
`
`John M.Baird
`Christopher Tyson
`DUANE MORRIS LLP
`JMBaird@duanemorris.com
`CJTyson@duanemorris.com
`
`FOR CISCO PETITIONER:
`
`David McCombs
`Theo Foster
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`
`FOR PATENT OWNER:
`
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`Andrew B. Karp
`MCANDREWS, HELD & MALLOY,LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`escharff@mcandrews-ip.com
`akarp@mcandrews-ip.com
`
`
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