Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 7
`Entered: November 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AEROHIVE NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01757 (Patent 8,942,107 B2)
`Case IPR2016-01758 (Patent 9,019,838 B2)
`Case IPR2016-01759 (Patent 8,902,760 B2)1
`_______________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 We exercise our discretion to issue this Order in each case using a joint
`caption. Unless otherwise authorized, the parties are not permitted to use a
`joint caption.
`
`
`571-272-7822
`
`
`
`Paper 7
`Entered: November 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AEROHIVE NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01757 (Patent 8,942,107 B2)
`Case IPR2016-01758 (Patent 9,019,838 B2)
`Case IPR2016-01759 (Patent 8,902,760 B2)1
`_______________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 We exercise our discretion to issue this Order in each case using a joint
`caption. Unless otherwise authorized, the parties are not permitted to use a
`joint caption.
`
`
`
`IPR2016-01757 (Patent 8,942,107 B2)
`IPR2016-01758 (Patent 9,019,838 B2)
`IPR2016-01759 (Patent 8,902,760 B2)
`
`
`I.
`
`INTRODUCTION
`
`On November 1, 2016, Judges Easthom, Anderson, and Weinschenk
`
`held a telephone conference call with counsel for Aerohive Networks, Inc.
`
`(“Aerohive”) and counsel for Chrimar Systems, Inc. (“Chrimar”). Also
`
`present on the conference call were counsel for AMX, LLC (“AMX”) and
`
`counsel for Dell Inc. (“Dell”), who are parties in at least one of several
`
`related cases. A court reporter was present for part, but not all, of the
`
`conference call. This Order summarizes statements made during the
`
`conference call. A partial record also may be found in the court reporter’s
`
`transcript, which is to be filed by Chrimar as an exhibit.
`
`II. ANALYSIS
`
`A. Chrimar’s Preliminary Response
`
`Aerohive requested that we deem Chrimar to have waived its
`
`preliminary response, or, alternatively, that we shorten the deadline for
`
`Chrimar to file its preliminary response from December 14, 2016 to
`
`November 2, 2016. Aerohive explained that the petitions for inter partes
`
`review in IPR2016-01757, IPR2016-01758, and IPR2016-01759
`
`(“Petitions”) are substantively identical to the petitions for inter partes
`
`review in IPR2016-00569, IPR2016-00573, and IPR2016-00574,
`
`respectively. Aerohive also explained that it filed motions with each of the
`
`Petitions requesting that IPR2016-01757, IPR2016-01758, and IPR2016-
`
`01759 be joined with the pending inter partes reviews in IPR2016-00569,
`
`IPR2016-00573, and IPR2016-00574, respectively (“Motions for Joinder”).
`
`Aerohive acknowledged that, unless the Motions for Joinder are granted, the
`
`Petitions are barred under 35 U.S.C. § 315(b).
`
`2
`
`
`
`IPR2016-01757 (Patent 8,942,107 B2)
`IPR2016-01758 (Patent 9,019,838 B2)
`IPR2016-01759 (Patent 8,902,760 B2)
`
`
`Aerohive explained that AMX and Chrimar reached a settlement with
`
`respect to the challenged patents in IPR2016-00569, IPR2016-00573, and
`
`IPR2016-00574. Aerohive further explained that, because AMX and
`
`Chrimar are the only parties in IPR2016-00573, the settlement may result in
`
`termination of that case.2 According to Aerohive, if IPR2016-00573 is
`
`terminated before we consider Aerohive’s Petitions and Motions for Joinder,
`
`the Motion for Joinder in IPR2016-01758 will be moot and the Petition in
`
`IPR2016-01758 will be barred under § 315(b). Aerohive argued that, by
`
`deeming Chrimar to have waived its preliminary response or by shortening
`
`the deadline, we can consider Aerohive’s Petitions and Motions for Joinder
`
`before IPR2016-00573 is terminated.
`
`
`
`Chrimar opposed Aerohive’s request. Chrimar explained that it needs
`
`until December 14, 2016 to file its preliminary response in order to
`
`investigate a potential real party-in-interest issue and to prepare a
`
`substantive response to the asserted grounds of unpatentability in Aerohive’s
`
`Petitions. Chrimar disagreed with Aerohive as to whether the deadline for
`
`filing an opposition to Aerohive’s Motions for Joinder had passed.
`
`According to Chrimar, Aerohive’s Motions for Joinder were not authorized,
`
`and, thus, the time period for filing an opposition never started.
`
`After considering the respective positions of the parties, we deny
`
`Aerohive’s request to deem Chrimar to have waived its preliminary response
`
`or to shorten the deadline. As discussed above, the reason for Aerohive’s
`
`request is that, unless we expedite consideration of the Petitions and Motions
`
`
`2 Dell and Chrimar confirmed that no settlement has been reached between
`them with respect to IPR2016-00569 and IPR2016-00574.
`
`3
`
`
`
`IPR2016-01757 (Patent 8,942,107 B2)
`IPR2016-01758 (Patent 9,019,838 B2)
`IPR2016-01759 (Patent 8,902,760 B2)
`
`for Joinder, at least one of the Petitions may be barred under § 315(b).
`
`Aerohive, however, could have avoided the § 315(b) bar by filing the
`
`Petitions within one year after Chrimar served its complaint alleging
`
`infringement of the challenged patents. Further, even if Aerohive preferred
`
`to join the cases filed by AMX, Aerohive could have expedited
`
`consideration of the Petitions and Motions for Joinder by filing them earlier
`
`than just a few days before the deadline in 37 C.F.R. § 42.122(b).3
`
`Aerohive now seeks to avoid the consequences of its delay by asking
`
`us to deem Chrimar to have waived its preliminary response or to shorten the
`
`deadline. Aerohive did not present any authority indicating that we can, in
`
`essence, preclude Chrimar from filing a preliminary response, as provided
`
`by 35 U.S.C. § 313. Also, given Aerohive’s delay discussed above, we are
`
`not persuaded that there is good cause to shorten the deadline for Chrimar to
`
`file its preliminary response. Therefore, we deny Aerohive’s request.
`
`B.
`
`Aerohive’s Motions for Joinder
`
`During the conference call, we expressed no opinion regarding the
`
`merits of Aerohive’s Petitions and Motions for Joinder, and we will consider
`
`them in due course after Chrimar files its preliminary response.
`
`Nonetheless, we asked the parties whether the schedule in IPR2016-00569,
`
`IPR2016-00573, and IPR2016-00574 would need to be modified if we
`
`granted any of Aerohive’s Petitions and Motions for Joinder. Aerohive,
`
`Chrimar, AMX, and Dell each indicated that, if we granted any of
`
`
`3 Even if, as Aerohive argued, the Motions for Joinder are timely under
`§ 42.122(b), that does not mean that we must expedite consideration of the
`Petitions and Motions for Joinder by shortening the deadline for Chrimar’s
`preliminary response.
`
`4
`
`
`
`IPR2016-01757 (Patent 8,942,107 B2)
`IPR2016-01758 (Patent 9,019,838 B2)
`IPR2016-01759 (Patent 8,902,760 B2)
`
`Aerohive’s Petitions and Motions for Joinder, the schedule in IPR2016-
`
`00569, IPR2016-00573, and IPR2016-00574 would not require any
`
`modifications.
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Aerohive’s request to deem Chrimar to have waived
`
`its preliminary response, or, alternatively, to shorten the deadline for
`
`Chrimar to file its preliminary response is denied; and
`
`FURTHER ORDERED that Chrimar may file its preliminary response
`
`on or before December 14, 2016.
`
`
`
`5
`
`
`
`IPR2016-01757 (Patent 8,942,107 B2)
`IPR2016-01758 (Patent 9,019,838 B2)
`IPR2016-01759 (Patent 8,902,760 B2)
`
`PETITIONER:
`Matthew A. Argenti
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`
`PATENT OWNER:
`Justin S. Cohen
`THOMPSON & KNIGHT LLP
`justin.cohen@tklaw.com
`
`Richard W. Hoffman
`REISING ETHINGTON PC
`hoffmann@reising.com
`
`
`
`PETITIONER (IPR2016-00569, IPR2016-00573, and/or IPR2016-00574):
`Brent A. Hawkins
`Amol A. Parikh
`MCDERMOTT, WILL & EMERY LLP
`bhawkins@mwe.com
`amparikh@mwe.com
`
`Gilbert A. Greene
`NORTON ROSE FULBRIGHT US LLP
`bert.greene@nortonrosefulbright.com
`
`6
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
