`Trials@uspto.gov
`571-272-7822 Entered: September 20, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`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.
`
`Opinion for the Board filed by Administrative Patent Judge DESHPANDE.
`
`Opinion Concurring filed by Administrative Patent Judge GALLIGAN.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`DECISION
`Denying Joinder and Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122(b)
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`
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`IPR2016-00853
`Patent 8,648,717 B2
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`I. INTRODUCTION
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`Sierra Wireless America, Inc., Sierra Wireless, Inc., and RPX Corp.
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`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting inter
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`partes review of claims 2, 7, 14, and 30 of U.S. Patent No. 8,648,717 B2
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`(Ex. 1001, “the ’717 patent”) and a Motion for Joinder (Paper 4, “Mot.”)
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`seeking to have this Petition joined to IPR2015-01823. M2M Solutions
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`LLC (“Patent Owner”) filed an Opposition (Paper 9, “Opp.”) to Petitioner’s
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`Motion for Joinder as well as a Preliminary Response to the Petition (Paper
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`14, “Prelim. Resp.”). Petitioner filed a Reply (Paper 12, “Reply”) to Patent
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`Owner’s Opposition.
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`We have jurisdiction under 35 U.S.C. § 314(a). For the reasons that
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`follow, Petitioner’s Motion for Joinder and Petition are denied.
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`
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`Related Case IPR2015-01823
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`On August 26, 2015, Petitioner filed a Petition to institute an inter
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`partes review of claims 1–3, 5–7, 10–24, 29, and 30 of the ’717 patent.
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`IPR2015-01823, Paper 1. On March 8, 2016, the Board instituted an inter
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`partes review of claims 1, 3, 5, 6, 10–13, 15–24, and 29. IPR2015-01823,
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`Paper 16, 32‒33 (“-1823 Dec. on Inst.”). The Board did not institute an
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`inter partes review of claims 2, 7, 14, and 30. Id. at 25–26, 33. Petitioner
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`subsequently filed, on April 8, 2016, its Petition in the instant proceeding
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`challenging claims 2, 7, 14, and 30, and a Motion for Joinder requesting that
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`this proceeding be joined with IPR2015-01823.
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`2
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`IPR2016-00853
`Patent 8,648,717 B2
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`II. MOTION FOR JOINDER
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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:
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`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.
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`Thus, joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board
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`determines whether to grant joinder on a case-by-case basis, taking into
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`account the particular facts of each case, substantive and procedural issues,
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`and other considerations.
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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). A motion for joinder should: (1) set
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`forth the reasons why joinder is appropriate; (2) identify any new ground(s)
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`of unpatentability asserted in the petition; and (3) explain what impact (if
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`any) joinder would have on the trial schedule for the existing review. See
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`Frequently Asked Question H5 on the Board’s website at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp. Petitioner should specifically
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`address how briefing and/or discovery may be simplified to minimize
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`schedule impact. See Kyocera Corp. v. SoftView LLC, Case IPR2013-
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`3
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`IPR2016-00853
`Patent 8,648,717 B2
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`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15) (representative); Mot.
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`5.
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`Petitioner argues that its Motion for Joinder is timely and joinder is
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`appropriate because of efficiency, public policy considerations, and a lack of
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`prejudice to Patent Owner. Mot. 5‒8. Petitioner further sets forth that the
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`instant Petition generally relies upon substantially the same prior art and the
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`same declarant as Petitioner relied upon in IPR2015-01823. Id. at 6‒7.
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`Petitioner also argues generally that joinder will not result in
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`unnecessary delay. Id. at 9. Specifically, Petitioner asserts it is “willing to
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`forfeit a reasonable portion[] of its response period to the extent that it is
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`deemed necessary” and Petitioner “will also accommodate any reasonable
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`logistical or scheduling request” of Patent Owner. Id.; Reply 4 (stating that
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`Petitioner will agree to unspecified “changes in the schedule”).
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`Patent Owner argues Petitioner has not met “its burden of proof for
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`explaining the impact joinder would have on the trial schedule for the
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`existing review or to address specifically how briefing and discovery may be
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`simplified.” Opp. 12. Specifically, Patent Owner argues that although
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`Petitioner generally states that Petitioner is willing to forfeit reasonable
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`portions of its response period and will accommodate reasonable logistical
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`and scheduling requests, Petitioner does not set forth any specific impact
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`joinder would have on the trial schedule. Id. at 12–13. Patent Owner further
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`argues that Petitioner’s “Motion is silent” as to how briefing and discovery
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`may be simplified. Id.
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`We agree with Patent Owner. Petitioner does not explain specific
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`modifications to the schedule that would be necessary to account for the
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`additional issues, grounds, and prior art raised in the Petition. See Mot. 9;
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`4
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`IPR2016-00853
`Patent 8,648,717 B2
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`Reply 4. Indeed, the inter partes review in IPR2015-01823 involves four
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`prior art references (Whitley, SIM Specification, Kail, and Eldridge) and
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`three grounds of unpatentability. -1823 Dec. on Inst. 32–33. The Petition in
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`the instant proceeding raises two additional prior art references (SIM
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`Application Toolkit and SIM API Spec.) and asserts two additional prior art
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`grounds challenging four claims, with new declarant testimony for the newly
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`asserted grounds. Pet. 6–9.
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`Nor does Petitioner explain how briefing and discovery may be
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`simplified. As noted by Patent Owner, Petitioner filed the instant Petition a
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`full month after the Institution Decision in IPR2015-01823 and only six
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`weeks before the deadline for Patent Owner’s Response in IPR2015-01823.
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`Opp. 9; see IPR2015-01823, Paper 19, 6. Petitioner’s general statements of
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`forfeiting “reasonable” periods of its response period and accommodating
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`“reasonable” logistical and scheduling requests does not address sufficiently
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`the impact joinder would have on the trial schedule of IPR2015-01823,
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`particularly given that Patent Owner already filed its Response on May 25,
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`2016. As such, Petitioner has not provided sufficient explanation as to how
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`such timing would impact the trial schedule for IPR2015-01823 or any
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`modifications to the trial schedule that would be necessary to accommodate
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`joinder.
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`We also note that, under the circumstances, joinder would have a
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`significant adverse impact on the Board’s ability to complete the existing
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`proceeding in a timely manner, which weighs against granting the Motion
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`for Joinder. The Board is charged with securing the just, speedy, and
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`inexpensive resolution of every proceeding, and has the discretion to join or
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`not join proceedings to ensure that objective is met. 37 C.F.R. §§ 42.1(b),
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`5
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`IPR2016-00853
`Patent 8,648,717 B2
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`42.122. Case IPR2015-01823 was filed more than eleven months ago, with
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`Patent Owner having filed its Response and Petitioner having filed its Reply.
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`See IPR2015-01823, Paper 19, 6. Joinder at this stage would require a
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`lengthy delay in the ongoing review given the additional challenges and
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`evidence at issue.
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`Based on the timing of the Petition in the instant proceeding and its
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`necessary impact on the trial schedule of IPR2015-01823 and the Board’s
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`ability to complete timely the existing proceeding if joinder were granted, as
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`well as Petitioner’s failure to explain sufficiently the impact joinder would
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`have on the trial schedule of IPR2015-01823, we deny Petitioner’s Motion
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`for Joinder under 35 U.S.C. § 315(c).
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`III. PETITION
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`Petitioner filed a Petition requesting inter partes review of claims 2, 7,
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`14, and 30 the ’717 patent. The standard for instituting an inter partes
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`review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes
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`review may not be instituted unless the information presented in the Petition
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`shows “there is a reasonable likelihood that the petitioner would prevail with
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`respect to at least 1 of the claims challenged in the petition.” However,
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`§315(b) further provides:
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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 petitioner, 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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`6
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`IPR2016-00853
`Patent 8,648,717 B2
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`Petitioner asserts that the “one-year bar set forth in 37 C.F.R.
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`§ 42.101(b) does not apply” because the instant Petition is filed with a
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`timely-filed Motion for Joinder. Pet. 5‒6. Patent Owner contends the
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`Petition is time-barred because it was filed more than one year after
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`Petitioner was served with a complaint alleging infringement of the ’717
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`patent. Opp. 1.
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`Petitioner’s Motion for Joinder is denied. Petitioner filed the Petition
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`in this proceeding on April 8, 2016, which is more than one year after Sierra
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`Wireless America, Inc. and Sierra Wireless, Inc. were served with a
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`complaint alleging infringement of the ’717 patent in 2014. See Ex. 3001.
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`Accordingly, the Petition is time-barred and we do not institute an inter
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`partes review of claims 2, 7, 14, and 30 of the ’717 patent.
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Petitioner’s Motion for Joinder is denied; and
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`FURTHER ORDERED that the Petition is denied, and that no inter
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`partes review is instituted with respect to any of the challenged claims of the
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`’717 patent on the grounds of unpatentability asserted in the Petition.
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`7
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`IPR2016-00853
`Patent 8,648,717 B2
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`GALLIGAN, Administrative Patent Judge, concurring in the result.
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`I join Sections III and IV of the majority opinion. Although I concur
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`in the denial of the Motion for Joinder, I do not join the majority’s analysis
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`in Section II.
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`8
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`9
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`IPR2016-00853
`Patent 8,648,717 B2
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`PETITIONER:
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`Jennifer Hayes
`jenhayes@nixonpeabody.com
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`PATENT OWNER:
`
`Jeffrey Costakos
`jcostakos@foley.com
`
`Michelle Moran
`mmoran@foley.com