`571-272-7822
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` Paper 36
`Entered: November 10, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC. and AVAYA INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01398
`Patent 6,108,704 C1
`____________
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`INTRODUCTION
`
`
`
`Cisco Systems, Inc. and AVAYA Inc. (collectively, “Petitioner”) filed
`a Petition requesting an inter partes review of claims 1, 11, 12, 14, 16, 19,
`22, 23, 27, 30, and 31 of U.S. Patent No. 6,108,704 C1 (Ex. 1001, “the ’704
`patent”). Paper 4 (“Pet.”). With the Petition, Petitioner filed a Motion for
`
`
`
`
`
`IPR2015-01398
`Patent 6,108,704 C1
`
`Joinder (Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v
`Straight Path IP Grp., Inc., IPR2015-00209, filed by LG Electronics, Inc.,
`Toshiba Corp., VIZIO, Inc., and Hulu, LLC (collectively, “LG”). Patent
`Owner does not oppose the Motion for Joinder. Paper 8, 2. In a separate
`decision, entered today, we institute an inter partes review as to the same
`claims on the same ground of unpatentability for which we instituted trial in
`LG Elecs., Inc. v Straight Path IP Grp., Inc., IPR2015-00209. For the
`reasons that follow, Petitioner’s Motion for Joinder is granted.
`
`BACKGROUND
`Petitioner filed its Petition and Motion for Joinder on June 15, 2015,
`within one month after the institution date of IPR2015-00209. Petitioner’s
`Motion for Joinder includes a proposed order defining the parameters of
`joinder. See Mot. 9–10.
`The Petition in this case asserts that claim 1 of the ’704 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over WINS1 and
`NetBIOS2 and claims 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 of the ’704
`patent are unpatentable under 35 U.S.C. § 103(a) as obvious over WINS,
`NetBIOS, and Pinard. 3 Pet. 34–60. These are the same claims and the same
`ground for which we instituted trial in IPR2015-00196. LG Elecs., Inc. v.
`Straight Path IP Grp., Inc., Case IPR2015-00209, slip op. at 9–23 (PTAB
`May 15, 2015) (Paper 20).
`
`1 MICROSOFT WINDOWS NT SERVER VERSION 3.5, TCP/IP USER
`GUIDE, © 1994 Microsoft Corporation (Ex. 1003, “WINS”).
`2, TECHNICAL STANDARD PROTOCOLS FOR X/OPEN PC
`INTERWORKING: SMB, VERSION 2, THE OPEN GROUP © September
`1992, X/Open Company Limited (Ex. 1004, “NetBIOS”).
`3 U.S. Patent No. 5,533,110, issued July 2, 1996 (Ex. 1020, “Pinard”).
`2
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`
`
`IPR2015-01398
`Patent 6,108,704 C1
`
`
`ANALYSIS
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29 (2011),
`permits joinder of like review proceedings. Thus, an inter partes review
`may be joined with another inter partes review. The statutory provision
`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c),
`which provides:
`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.
`As the movant, Petitioner bears the burden to show that joinder is
`appropriate. 37 C.F.R. § 42.20(c). In its Motion for Joinder, Petitioner
`contends that joinder is appropriate because “it is the most expedient way to
`secure the just, speedy, and inexpensive resolution of the related
`proceedings.” Mot. 4. Petitioner (1) represents that IPR2015-01398 is
`identical to IPR2015-00209 in all substantive aspects, including identical
`grounds, analysis, exhibits, and relies upon the same expert Declaration;
`(2) agrees to (a) incorporate its filings with LG, (b) not advance any
`arguments separate from those advanced by LG, and (c) consolidated
`discovery; (3) represents that joinder will not have any impact on the
`IPR2015-00209 schedule; and (4) asserts that there will be no prejudice to
`Patent Owner. Id. at 4–8.
`Acting on behalf of the Director, we have discretion to join
`proceedings. 35 U.S.C. § 315(c). In exercising our discretion, we consider
`
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`IPR2015-01398
`Patent 6,108,704 C1
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`the impact of both substantive issues and procedural matters on the
`proceedings.
`The substantive issues in IPR2015-00209 will not be affected by
`joinder because Petitioner asserts the same ground of unpatentability, for
`which trial was instituted in IPR2014-00209, presents the same arguments as
`those advanced by LG, and, therefore, our analysis would similarly institute
`review of the claims for the same ground for which trial was instituted in
`IPR2014-01368. Compare Pet. 34–60 with LG Elecs., Inc. v. Straight Path
`IP Grp., Inc., Case IPR2015-00196, Paper 1, 34–60. Further, Petitioner
`submits the same Declaration of Dr. Bruce M. Maggs that Samsung
`submitted in support of its Petition. See Ex. 1002; LG Elecs., Inc. v. Straight
`Path IP Grp., Inc., Case IPR2015-00209, Ex. 1002. Thus, Petitioner asserts
`that the Petition in this proceeding raises no new issues beyond those already
`before the Board in IPR2015-00209.
`Regarding procedural matters, Petitioner argues that joinder would not
`require any change to the trial schedule in IPR2015-00209. Mot. 6–7.
`Petitioner further argues that joinder would “permit Petitioners to maintain
`their ongoing interests in the Board’s review of the ʼ704 patent” in the event
`Samsung withdraws from the proceeding. Id. at 8.
`
`CONCLUSION
`Under the circumstances, we conclude Petitioner has demonstrated
`that joinder will not unduly complicate or delay IPR2015-00209, and
`therefore joinder is appropriate. Petitioner’s Motion for Joinder is granted.
`
`4
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`IPR2015-01398
`Patent 6,108,704 C1
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`
`ORDER
`
`
`
`Accordingly, it is:
` ORDERED that Petitioner’s Motion for Joinder with IPR2015-00209
`is granted;
` FURTHER ORDERED that this proceeding is joined with IPR2015-
`00209;
` FURTHER ORDERED that the ground on which a trial was instituted
`in IPR2015-00209 is unchanged and that no other grounds raised in the
`IPR2015-01398 Petition are authorized for inter partes review;
` FURTHER ORDERED that the Scheduling Order for IPR2015-00209
`(Paper 21) shall govern the joined proceedings;
`
`FURTHER ORDERED that throughout the proceeding, LG and
`Petitioner will file papers as consolidated filings, except for motions that do
`not involve the other party, in accordance with the Board’s established rules
`regarding page limits. So long as they both continue to participate in the
`merged proceeding, LG and Petitioner will identify each such filing as a
`Consolidated Filing and will be responsible for completing all consolidated
`filings;
`
`FURTHER ORDERED that Petitioner will refrain from requesting or
`reserving any additional depositions or deposition time;
`
`FURTHER ORDERED that LG and Petitioner will jointly conduct the
`cross-examination of any given witness produced by Patent Owner and the
`redirect of any given witness produced by LG or Petitioner within the
`timeframe normally allotted by the rules for one party. LG and Petitioner
`will not receive any separate cross-examination or redirect time;
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`Patent 6,108,704 C1
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`FURTHER ORDERED that Patent Owner will conduct any cross-
`examination of any given witness jointly produced by LG or Petitioner and
`the redirect of any given witness produced by Patent Owner within the time
`frame normally allotted by the rules for one cross-examination or redirect
`examination;
`
`FURTHER ORDERED that LG and Petitioner agree not to request
`additional oral hearing time solely on the basis of the participation of
`multiple petitioners;
`
`FURTHER ORDERED that Petitioner will assume a second-chair role
`as long as LG remains in the proceeding. Should LG cease to be in the
`proceeding, Petitioner will consolidate its activities with the remaining
`petitioners for the remainder of the proceeding consistent with the applicable
`rules and the direction of the Board;
`
`FURTHER ORDERED that IPR2015-01398 is instituted, joined, and
`terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`proceeding shall be made in IPR2015-00209;
` FURTHER ORDERED that the case caption in IPR2015-00209 shall
`be changed to reflect the joinder with this proceeding in accordance with the
`attached example;
` FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2015-00209.
`
`
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`6
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`IPR2015-01398
`Patent 6,108,704 C1
`
`FOR PETITIONER:
`
`David Cavanaugh
`Jason Kipnis
`WILMER, CUTLER, PICKERING, HALE AND DORR
`David.cavanaugh@wilmerhale.com
`Jason.kipnis@wilmerhale.com
`
`Dorothy P. Whelan
`Christopher O. Green
`FISH & RICHARDSON P.C.
`whelan@fr.com
`cgreen@fr.com
`
`FOR PATENT OWNER:
`
`William Meunier
`Michael Renaud
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`WAMeunier@mintz.com
`mtrenaud@mintz.com
`
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`7
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`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 36
`Entered: November 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., HULU, LLC,
`CISCO SYSTEMS, INC., and AVAYA INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-002091
`Patent 6,108,704 C1
`____________
`
`
`
`
`
`
`1 IPR2015-01398 has been joined with this proceeding.