`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