Trials@uspto.gov
`571-272-7822
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` Paper 12
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` Entered: June 5, 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 IPR2015-01007
`Patent 6,009,469 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)
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`
`
`
`571-272-7822
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` Paper 12
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`
`
` Entered: June 5, 2015
`
`
`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 IPR2015-01007
`Patent 6,009,469 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)
`
`
`
`
`
`Case IPR2015-01007
`Patent 6,009,469 C1
`
`
`INTRODUCTION
`
`Cisco Systems, Inc. and AVAYA, Inc. (collectively, “Petitioner”)
`
`filed a Petition requesting an inter partes review of claims 1–3, 5, 6, 9, 10,
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`14, 17, and 18 of U.S. Patent No. 6,009,469 C1 (Ex. 1001, “the ’469
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`patent”). Paper 3 (“Pet.”). With the Petition, Petitioner filed a Motion for
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`Joinder (Paper 4, “Mot.”), seeking to join this case with Samsung Elecs. Co.
`
`v. Straight Path IP Grp., Inc., IPR2014-01367 (PTAB Mar. 6, 2015), filed
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`by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
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`Samsung Telecommunications America, LLC (collectively, “Samsung”).
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`Petitioner indicates that Patent Owner does not oppose the Motion for
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`Joinder. Mot. 1. In a separate decision, entered today, we institute an inter
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`partes review as to the same claims and the same ground of unpatentability
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`for which we instituted trial in Samsung Elecs. Co., Ltd. v. Straight Path IP
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`Grp., Inc., IPR2014-01367. For the reasons that follow, Petitioner’s Motion
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`for Joinder is granted.
`
`BACKGROUND
`
`Petitioner filed its Petition and Motion for Joinder on April 6, 2015,
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`within one month after the institution date of IPR2014-01367. On May 5,
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`2014, we held a conference call with counsel for the respective. During the
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`conference call, Patent Owner indicated that all of the parties intended to file
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`a stipulated proposed order defining the parameters of joinder. The parties
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`filed the stipulated proposed order on May 6, 2015. See Paper 10.
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`2
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`
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`Case IPR2015-01007
`Patent 6,009,469 C1
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`
`The Petition in this case asserts that claims 1–3, 5, 6, and 91 of the
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`’469 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
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`Microsoft Manual2 and NetBIOS,3 and claims 10, 14, 17, and 18 are
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`unpatentable under 35 U.S.C. § 103(a) as obvious over Microsoft Manual,
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`NetBIOS, and Palmer.4 Pet. 7, 37–54. These are the same claims and the
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`same grounds for which we instituted trial in IPR2014-01367. Samsung
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`Elecs. Co. v. Straight Path IP Grp., Inc., IPR2014-01367, slip op. at 21
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`(PTAB Mar. 6, 2014) (Paper 12).
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`ANALYSIS
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`The Leahy-Smith America Invents Act, Pub. L. No. 112-29 (2011),
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`permits joinder of like review proceedings. Thus, an inter partes review
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`may be joined with another inter partes review. The statutory provision
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`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c),
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`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
`
`
`
`1 Although Petitioner first identifies claim 17 as challenged under this
`ground, Petitioner’s argument and claim charts do not include claim 17.
`Accordingly, we do not understand Petitioner to have challenged claim 17
`under this ground. Compare Pet. 7 with id. at 37–48.
`2 MICROSOFT WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1012,
`“Microsoft Manual”).
`3 THE OPEN GROUP, TECHNICAL STANDARD, PROTOCOLS FOR X/OPEN PC
`INTERWORKING: SMB, VERSION 2.0 (1992) (Ex. 1014, “NetBIOS”).
`4 U.S. Patent No. 5,375,068, issued Dec. 20, 1994 (Ex. 1020, “Palmer”).
`3
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`Case IPR2015-01007
`Patent 6,009,469 C1
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`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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`As the movant, Petitioner bears the burden to show that joinder is
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`appropriate. 37 C.F.R. § 42.20(c). In its Motion for Joinder, Petitioner
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`contends that joinder is appropriate because “it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related
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`proceedings” because (1) Petitioner represents that IPR2015-01007 is
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`identical to IPR2014-01367 in all substantive aspects, including identical
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`grounds, analysis, exhibits, and relies upon the same expert Declaration;
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`(2) Petitioner agrees to (a) incorporate its filings with Samsung, (b) not
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`advance any separate arguments from those advanced by Samsung, and
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`(c) to consolidated discovery; (3) joinder will not have any impact on the
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`IPR2014-01367 schedule; and (4) there will be no prejudice to Patent
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`Owner. Mot. 4–8.
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`Acting on behalf of the Director, we have discretion to join
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`proceedings. 35 U.S.C. § 315(c). In exercising our discretion, we consider
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`the impact of both substantive issues and procedural matters on the
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`proceedings.
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`The substantive issues in IPR2014-01367 will not be affected by
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`joinder because Petitioner asserts the ground of unpatentability for which
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`trial was instituted in IPR2014-01367, presents the same arguments as those
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`advanced by Samsung, and, therefore, our analysis would similarly institute
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`review of the claims for the same grounds for which trial was instituted in
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`IPR2014-01367. Compare Pet. 37–54 with Samsung Elecs. Co. v. Straight
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`4
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`Case IPR2015-01007
`Patent 6,009,469 C1
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`Path IP Grp., Inc., IPR2014-01367, Paper 1, 34–49. Further, Petitioner
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`submits the same declaration of Dr. Henry Houh that Samsung submitted in
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`support of its Petition. See Ex. 1004; Samsung Elecs. Co., Ltd. v. Straight
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`Path IP Grp., Inc., IPR2014-01367, Ex. 1004. Thus, Petitioner asserts that
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`the Petition in this proceeding raises no new issues beyond those already
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`before the Board in IPR2014-01367.
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`Regarding procedural matters, Petitioner argues that joinder would not
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`require any change to the trial schedule in IPR2014-01367. Mot. 6–7.
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`Petitioner further argues that joinder would “permit Petitioner to maintain its
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`ongoing interests in the Board’s review of the ʼ469 patent” in the event
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`Samsung withdraws from the proceeding. Id. 7–8.
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`CONCLUSION
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`Under the circumstances, we conclude Petitioner has demonstrated
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`that joinder will not unduly complicate or delay IPR2014-01367, and
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`therefore joinder is appropriate.
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`
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`Accordingly, it is:
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`ORDER
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` ORDERED that Petitioner’s Motion for Joinder with IPR2014-01367
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`is granted;
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` FURTHER ORDERED that this proceeding is joined with IPR2014-
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`01367;
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`5
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`Case IPR2015-01007
`Patent 6,009,469 C1
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` FURTHER ORDERED that the ground on which a trial was instituted
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`in IPR2014-01367 is unchanged and that no other grounds raised in the
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`IPR2015-01007 Petition are authorized for inter partes review;
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` FURTHER ORDERED that the Scheduling Order for IPR2014-01367
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`(Paper 13) shall govern the joined proceedings;
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`
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`FURTHER ORDERED that throughout the proceeding, Samsung and
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`Petitioner will file papers as consolidated filings, except for motions that do
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`not involve the other party, in accordance with the Board’s established rules
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`regarding page limits. So long as they both continue to participate in the
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`merged proceeding, Samsung and Petitioner will identify each such filing as
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`a Consolidated Filing and will be responsible for completing all consolidated
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`filings;
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`
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`FURTHER ORDERED that Petitioner will refrain from requesting or
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`reserving any additional depositions or deposition time;
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`
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`FURTHER ORDERED that Samsung and Petitioner will jointly
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`conduct the cross-examination of any given witness produced by Patent
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`Owner and the redirect of any given witness produced by Samsung or
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`Petitioner within the timeframe normally allotted by the rules for one part.
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`Samsung and Petitioner will not receive any separate cross-examination or
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`redirect time;
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`
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`FURTHER ORDERED that Patent Owner will conduct any cross
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`examination of any given witness jointly produced by Samsung or Petitioner
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`and the redirect of any given witness produced by Straight Path within the
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`6
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`Case IPR2015-01007
`Patent 6,009,469 C1
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`time frame normally allotted by the rules for one cross-examination or
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`redirect examination;
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`FURTHER ORDERED that Samsung and Petitioner agree not to
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`request additional oral hearing time solely on the basis of the participation of
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`multiple petitioners;
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`
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`FURTHER ORDERED that Petitioner will assume a second-chair role
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`as long as Samsung remains in the proceeding. Should Samsung cease to be
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`in the proceeding, Petitioner will consolidate its activities with the remaining
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`petitioners for the remainder of the proceeding consistent with the applicable
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`rules and the direction of the Board;
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`
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`FURTHER ORDERED that IPR2015-01007 is instituted, joined, and
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`terminated under 37 C.F.R. § 42.72, and all further filings in the joined
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`proceeding shall be made in IPR2014-01367;
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` FURTHER ORDERED that the case caption in IPR2014-01367 shall
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`be changed to reflect the joinder with this proceeding in accordance with the
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`attached example;
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` FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-01367.
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`7
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`Case IPR2015-01007
`Patent 6,009,469 C1
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`FOR PETITIONER:
`
`Brian Erickson
`Jeff Cole
`DLA Piper, LLP
`Samsung-sp-ipr@dlapiper.com
`
`
`
`FOR PATENT OWNER:
`William Meunier
`Matthew Durell
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`WAMeunier@mintz.com
`MDurell@mintz.com
`
`
`8
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`
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`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 12
`
`
`
` Entered: June 5, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`CISCO SYSTEMS, INC., and AVAYA, INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-013671
`Patent 6,108,704 C1
`____________
`
`
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`1 IPR2015-01007 has been joined with this proceeding.
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`
`
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