Paper No. ____
`Filed: September 8, 2016
`
`Filed on behalf of: Aerohive Networks, Inc.
`By: Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH AND ROSATI
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`AEROHIVE NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2016-01758
`U.S. Patent No. 9,019,838 B2
`_____________________________
`
`
`
`MOTION FOR JOINDER
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`
`
`
`
`
`
`Filed: September 8, 2016
`
`Filed on behalf of: Aerohive Networks, Inc.
`By: Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH AND ROSATI
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`AEROHIVE NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2016-01758
`U.S. Patent No. 9,019,838 B2
`_____________________________
`
`
`
`MOTION FOR JOINDER
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`
`
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`
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`I.
`
`Statement of the Precise Relief Requested
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`Aerohive Networks, Inc. (“Aerohive”) moves for joinder of its concurrently
`
`filed petition (“Petition”) for inter partes review of claims 1, 2, 7, 26, 29, 38, 40,
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`47, 55, and 69 (“the challenged claims”) of U.S. Patent No. 9,019,838 B2 (“the
`
`’838 patent”), purportedly assigned to ChriMar Systems, Inc. (“Patent Owner”), to
`
`an instituted inter partes review initiated by AMX, LLC. (“AMX”) AMX, LLC v.
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`ChriMar Systems, Inc., IPR2016-00573 (“the ’573 review”), pursuant to 35 U.S.C.
`
`§ 315(c) and 37 C.F.R. § 42.122(b).
`
`This Motion is timely because the Board instituted the ’573 review on
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`August 10, 2016, less than one month ago. See 37 C.F.R. § 42.122(b). Aerohive
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`has not previously sought IPR of the challenged claims.
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`In the Petition, Aerohive requests cancellation of the challenged claims on
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`the same unpatentability ground, over the same prior art, and in light of the same
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`arguments and expert testimony as AMX submitted, and on which the Board
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`instituted the ’573 review.1 No new claims are challenged; no new issues are
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`raised. The Petition is substantially identical to the petition submitted by AMX
`
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`1 In its petition, AMX includes another unpatentability ground. The Board
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`declined to institute on that ground. Aerohive omits the non-instituted ground from
`
`its Petition.
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`-1-
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`
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`with respect to the instituted ground.
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`Joinder is also appropriate here because Aerohive expects to participate in
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`the ’573 review in a limited capacity as an understudy, taking over only if AMX
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`settles with Patent Owner. Also, if requested, oral argument is scheduled for May
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`3, 2017—months away—making joinder especially appropriate here. Joinder will
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`have no impact on the trial schedule of the ’573 review because that proceeding is
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`still in its early stages and Aerohive, in its limited role, is agreeable to the same
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`schedule. Adding Aerohive as a back-up party does not prejudice the existing
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`parties to the ’573 review and ensures that the challenged claims —asserted against
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`much of the computer networking hardware industry— receive the Board’s expert
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`scrutiny.
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`Aerohive has conferred with counsel for AMX regarding this joinder
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`request. Counsel indicated that AMX does not oppose joinder.
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`II. Background
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`Patent owner has asserted the ’838 patent against most of the computer
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`networking hardware industry, in courts across the country. Patent owner filed its
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`complaint against Aerohive on July 1, 2015 in Tyler, Texas. See Case No. 6:15-cv-
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`00636 (E.D. Tex. filed July 1, 2015). Other companies are fighting off related
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`lawsuits in the Eastern District of Texas, the Northern District of California, and
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`the Eastern District of Michigan, as listed in Exhibit 1014 to Aerohive’s Petition.
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`-2-
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`
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`On March 3, 2016, AMX petitioned for inter partes review of the ’838
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`patent’s challenged claims, which was designated as IPR2016-00573. On August
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`10, 2016 the Board instituted IPR, scheduling oral arguments for May 3, 2017.
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`Here, Aerohive’s Petition is a practical copy of AMX’s petition, including the
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`same prior art, analysis, and expert testimony and differing only to address
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`formalities, such as, e.g., mandatory notices, counsel, etc., and to omit the non-
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`instituted ground.
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`III. Argument
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`A. Legal Standard
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`The Board may join any person who properly files a petition for inter partes
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`review to an instituted inter partes review as a party. 35 U.S.C. §315(c). A motion
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`for joinder must be filed within one month of institution of any inter partes review
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`for which joinder is requested. 37 C.F.R. § 42.122(b). In deciding whether to grant
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`a motion for joinder, the Board considers several factors including: (1) the reasons
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`why joinder is appropriate; (2) whether the party to be joined has presented any
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`new grounds of unpatentability; (3) what impact, if any, joinder would have on the
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`trial schedule for the existing review; and (4) how briefing and discovery may be
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`simplified. See, e.g., Hyundai Motor Co. v. Am. Vehicular Sciences LLC, IPR2014-
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`01543, Paper 11 at 3 (Oct. 24, 2014); Macronix Int’l Co. v. Spansion, IPR2014-
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`00898, Paper 15 at 4 (Aug. 13, 2014) (quoting Kyocera Corporation v. Softview
`
`
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`-3-
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`
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`LLC, IPR2013-00004, Paper 15 at 4 (April 24, 2013)).
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`B. Aerohive’s Motion for Joinder Is Timely
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`Because the Board instituted the ’573 review less than a month ago on
`
`August 10, 2016, this Motion and the Petition are timely.
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`C. The Relevant Factors Weigh in Favor of Joinder
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`Each of the four factors the Board considers weighs in favor of joinder here.
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`Granting joinder neither enlarges the scope of the ’573 review nor affects its
`
`schedule. Denying joinder, though, would prejudice Aerohive and harm the public.
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`1.
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`Joinder is Appropriate
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`Here, joinder is appropriate because no new grounds or evidence are
`
`presented. Aerohive’s Petition relies on the same prior art, expert testimony, and
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`arguments presented in the ’573 petition. Other than minor differences in
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`formalities such as mandatory notices, and omission of the ground that was not
`
`instituted in the ’573 review, the present Petition is essentially identical to the
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`petition in the ’573 review.
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`Joinder is also appropriate because it allows the just, speedy, and
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`inexpensive resolution of the challenged claims’ validity issues. See 37 C.F.R.
`
`§ 42.1(b). A final written decision will narrow the issues left for the courts in
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`Michigan, Texas, and California to handle. Joining Aerohive as a party ensures that
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`the ’573 review reaches a final written decision on schedule.
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`
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`-4-
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`
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`Denying joinder could harm the public if Patent Owner and AMX settle by
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`allowing the ’838 patent, asserted against a large swath of the computer
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`networking hardware industry, to escape the Board’s expert review. In this
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`scenario, the Board’s evaluation of AMX’s petition and Patent Owner’s
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`preliminary response would be wasted. But if Aerohive is joined, it could replace
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`AMX and take the ’573 review through oral argument. Joinder allows Aerohive to
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`protect the policy goals of inter partes review.
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`Moreover, granting joinder will not prejudice Patent Owner or AMX, while
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`denying joinder will prejudice Aerohive. As mentioned above, the Petition does
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`not raise any new ground that is not raised in the ’573 review. In addition, the
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`Board issued an institution decision in the ’573 review less than one month prior to
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`the filing of this motion. Therefore, joinder should not significantly affect the
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`timing of the ’573 review. Also, there should be little to no additional cost to
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`Patent Owner or AMX given the overlap in the petitions. On the other hand,
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`Aerohive and the public may be potentially prejudiced if joinder is denied. For
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`example, absent joinder, Patent Owner and AMX might settle and request
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`termination of the proceedings, leaving facially intact a patent that the Board has
`
`already found is likely unpatentable.
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`2.
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`No New Grounds Are Presented
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`The Petition and AMX’s petition are substantively identical except for
`
`
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`-5-
`
`
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`omission of the ground that was not instituted in the ’573 review. Aerohive relies
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`on the same prior art, analysis, and expert testimony as AMX submitted. Aerohive
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`challenges no new claims and raises no new issues. The Board should thus join
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`Aerohive to the ’573 review. See, e.g., Hyundai, IPR2014-01543, Paper 11 at 2-4;
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`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00495, Paper 13 at
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`5-9 (Sep. 16, 2013); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper
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`17, at 6-10 (Jul. 29, 2013); Motorola Mobility LLC v. Softview LLC, IPR2013-
`
`00256, Paper 10 at 4-10 (June 20, 2013).
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`3.
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`Joinder Will Not Negatively Affect the ’573 Review’s
`Schedule
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`The timing and content of Aerohive’s petition and motion for joinder
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`minimize any impact on trial schedule in the ’573 review. The ’573 review was
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`only instituted on August 10, 2016, and oral argument is not scheduled until May
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`3, 2017. In general, Aerohive expects to be an understudy to AMX, stepping into a
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`lead role in the ’573 review only if AMX settles. For example, if the proceedings
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`are joined Aerohive will not present additional technical experts. Accordingly,
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`Aerohive does not believe any extension of the schedule will be required by virtue
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`of joinder of Aerohive as a party to the proceeding. Even if the Board were to
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`determine that joinder would require a modest extension of the schedule, such an
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`extension is permitted by law and is not a reason for denying joinder. 35 U.S.C.
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`§ 316(a)(11); 37 C.F.R. § 42.100(c).
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`-6-
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`4.
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`Discovery and Briefing Can Be Simplified
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`The Board may adopt procedures to simplify briefing and discovery during
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`trial. See e.g., Hyundai, IPR2014-01543, Paper 11 at 5; Dell, IPR2013-00385,
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`Paper 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10. As long as AMX
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`remains, the Board may order petitioners to consolidate filings. Likewise, Aerohive
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`will not submit any separate filings unless it disagrees with AMX, and if the parties
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`disagree, Aerohive will request that the Board allow a short separate filing directed
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`only to points of disagreement with AMX with the understanding that it will not be
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`permitted any separate arguments in furtherance of those advanced in AMX’s
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`consolidated filings. See, e.g., Hyundai, IPR2014-01543, Paper 11 at 5. The Board
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`may also allow the Patent Owner a corresponding number of pages to respond to
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`separate filings. See Dell Inc., IPR2013-00385, Paper 17 at 8-9. These procedures
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`prevent “complication or delay” due to joinder.
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`Further, no additional depositions will be needed and depositions will be
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`completed within ordinary time limits. See Hyundai, IPR2014-01543, Paper 11 at
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`5. In related district court litigation, Aerohive has retained expert witness Richard
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`Siefert, the same expert who submitted supporting testimony on behalf of AMX in
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`the ’573 review and whose identical testimony is relied upon in Aerohive’s
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`Petition. Aerohive will be able to provide him for Patent Owner’s cross-
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`examination if AMX drops out of the ’573 review.
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`-7-
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`To the extent that Aerohive does participate in the proceeding, Aerohive will
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`coordinate with AMX to consolidate filings, manage questioning at depositions,
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`manage presentations at the hearing, ensure that briefing and discovery occur
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`within the time normally allotted, and avoid redundancies. Aerohive is willing to
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`take a “backseat” role to AMX, in which it would not file any separate papers
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`without consultation with AMX and prior authorization from the Board. These
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`procedures should simplify briefing and discovery.
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`IV. Conclusion
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`Aerohive requests that this Motion be granted and an inter partes review of
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`the challenged claims be instituted based on the ground already instituted in the
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`’573 review, and that this proceeding be joined with the ’573 review.
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`
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`Dated: September 8, 2016
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`Respectfully submitted,
`
`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
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`-8-
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing Motion for Joinder by
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`overnight courier (Federal Express or UPS), on this September 8, 2016, on the
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`Patent Owner at the correspondence address of the Patent Owner as follows:
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`HARNESS, DICKEY & PIERCE, P.L.C.
`P.O. Box 828
`Bloomfield Hills, MI 48303
`
`G. Gregory Schivley
`HARNESS, DICKEY AND PIERCE, P.L.C.
`5445 Corporate Dr, Suite 200
`Troy, MI 48098
`
`Richard W. Hoffman
`REISING ETHINGTON PC
`755 West Big Beaver Road, Suite 1850
`Troy, MI 48084
`
`Justin S. Cohen
`THOMPSON & KNIGHT LLP
`1722 Routh Street, Suite 1500
`Dallas, TX 75201
`
`
`Date: September 8, 2016
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`
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`Respectfully submitted,
`
`
`
`
`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
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`-9-
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