`Tel: 571-272-7822
`
`Paper 10
`Entered: May 19, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.,
`and RPX CORP.,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00853
`Patent 8,648,717 B2
`____________
`
`
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`IPR2016-00853
`Patent 8,648,717 B2
`
`On March 8, 2016, we issued a decision in IPR2015-01823 instituting
`an inter partes review of claims 1, 3, 5, 6, 10–13, 15–24, and 29 of U.S.
`Patent No. 8,648,717 B2 (“the ’717 patent”) but denying institution as to
`dependent claims 2, 7, 14, and 30 of the ’717 patent. Sierra Wireless Am.,
`Inc. v. M2M Solutions LLC, Case IPR2015-01823, Paper 16, 2, 25–26. On
`April 8, 2016, Petitioner (Sierra Wireless America, Inc., Sierra Wireless,
`Inc., and RPX Corp.) filed a second Petition (IPR2016-00853) requesting
`inter partes review of claims 2, 7, 14, and 30 of the ’717 patent and a
`Motion for Joinder seeking to have the second Petition joined to IPR2015-
`01823. Papers 1, 4.
`On May 4, 2016, counsel for Petitioner requested a conference call to
`discuss potential modifications to the schedule in this matter. In the email
`requesting the call, counsel for Petitioner indicated the parties had met and
`conferred regarding schedule modifications but could not reach agreement.
`On May 9, 2016, a conference call was held with the Board.
`Petitioner explained that, because the present matter involves the four
`dependent claims on which institution was denied in IPR2015-01823,
`Petitioner is interested in adjusting the schedule, including expediting the
`deadline for Patent Owner’s Preliminary Response, so that, if joinder is
`granted and a trial is instituted in this matter, the deadlines in IPR2015-
`01823 would not be adversely impacted.
`Patent Owner argued Petitioner’s proposed deadline of May 20, 2016,
`for Patent Owner’s Preliminary Response is unreasonable, noting that the
`Patent Owner Response in IPR2015-01823 is due on May 25, 2016, and,
`therefore, expediting the deadline for its Preliminary Response in this case to
`May 20, 2016, would significantly impact Patent Owner. Patent Owner
`
`2
`
`
`
`IPR2016-00853
`Patent 8,648,717 B2
`
`represented it prefers to have the entire period typically permitted by the
`Rules for its Preliminary Response. Patent Owner opposes joinder, and
`Patent Owner timely filed its opposition to the Motion for Joinder. See
`Paper 9. We took the matter under advisement.
`The Notice of Filing Date Accorded to the Petition was filed on April
`12, 2016, and states that the deadline for Patent Owner’s Preliminary
`Response is three months from the date of the notice, i.e., July 12, 2016. See
`Paper 5, 2; 37 C.F.R. § 42.107(b) (“The preliminary response must be filed
`no later than three months after the date of a notice indicating that the
`request to institute an inter partes review has been granted a filing date.”).
`However, our Rules also provide the Board authority to modify default
`deadlines. 37 C.F.R. § 42.5(c)(1) (“The Board may set times by order.
`Times set by rule are default and may be modified by order. Any
`modification of times will take any applicable statutory pendency goal into
`account.”).
`We determine that advancing the deadline for Patent Owner’s
`Preliminary Response in this proceeding by three weeks is appropriate under
`the circumstances and will not unduly burden Patent Owner.
`Accordingly, it is:
`ORDERED that the deadline for Patent Owner to file its Preliminary
`Response in IPR2016-00853 is June 21, 2016.
`
`
`3
`
`
`
`IPR2016-00853
`Patent 8,648,717 B2
`
`
`For PETITIONER:
`
`Jennifer Hayes
`Ronald Lopez
`Nixon Peabody LLP
`
`jenhayes@nixonpeabody.com
`rflopez@nixonpeabody.com
`patentSV@nixonpeabody.com
`
`For PATENT OWNER:
`
`Jeffrey N. Costakos
`Michelle A. Moran
`Foley & Lardner LLP
`
`jcostakos@foley.com
`mmoran@foley.com
`
`4
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