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
`________________________________________________
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107(A) AND
`
`PATENT OWNER’S RESPONSE AND OPPOSITION TO
`AEROHIVE’S MOTION FOR JOINDER
`
`
`
`
`________________________________________________
`
`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
`________________________________________________
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107(A) AND
`
`PATENT OWNER’S RESPONSE AND OPPOSITION TO
`AEROHIVE’S MOTION FOR JOINDER
`
`
`
`
`Table of Contents
`
`Introduction and Summary of Arguments ............................................................... 1
`Summary of Argument ............................................................................................. 2
`Background .............................................................................................................. 3
`A.
`Status of Related Litigation.................................................................. 3
`
`B.
`
`Status of Related IPRs ......................................................................... 3
`
`Arguments and Authorities ...................................................................................... 4
`A.
`Aerohive’s Petition should be Denied because it was not Timely Filed.
`
`Institution is Barred by 35 U.S.C. § 315(b). ......................................... 4
`
`B.
`
`Aerohive’s Motion for Joinder must be Denied because the -573 IPR
`
`has been Fully Terminated. ................................................................. 5
`
`Conclusion ............................................................................................................... 6
`CERTIFICATE OF SERVICE ....................................................................................... 9
`
`
`
`
`
`
`-i-
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`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit Description
`
`Date Filed
`
`Transcript of Telephone Proceedings, November 1,
`2016, IPR2016-01758, IPR2016-01758, IPR2016-
`01758
`Complaint in Chrimar Systems Inc. et al., v. Dell, Inc.
`and Aerohive Networks, Inc., Case No. 6:15-cv-0639
`(E.D. Tex.)
`Proof of service of summons on Aerohive Networks
`Inc. in Chrimar Systems Inc., et al. v. Dell, Inc. and
`Aerohive Networks, Inc., Case No. 6:15-cv-0639 (E.D.
`Tex.)
`
`
`
`11/30/2016
`
`12/14/2016
`
`12/14/2016
`
`
`
`
`
`Chrimar
`Exhibit No.
`
`2089
`
`2090
`
`2091
`
`
`
`-ii-
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`
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`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
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`
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`
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`Introduction and Summary of Arguments
`
`Patent Owner Chrimar Systems, Inc. (“Chrimar” or “Patent Owner”) files
`
`this combined Patent Owner’s Preliminary Response pursuant to 35 U.S.C. § 313
`
`and 37 C.F.R. § 42.107(a) and Patent Owner’s Response and Opposition to
`
`Aerohive’s Motion for Joinder.
`
`This Preliminary Response raises preliminary or threshold issues only, and
`
`does not attempt to make a full response to all arguments or issues raised in the
`
`Petition by Aerohive Networks, Inc. (“Aerohive” or “Petitioner”). If a trial is
`
`instituted in this case, Patent Owner reserves its right to present additional
`
`evidence and to raise additional factual and legal arguments in addition to the
`
`arguments presented in this Preliminary Response. Patent Owner’s decision at this
`
`time to forgo contesting or rebutting any contention or argument made in the
`
`Petition is not an indication of Patent Owner’s agreement with the contention or
`
`argument, nor should it be deemed an admission by Patent Owner as to the truth or
`
`accuracy of such contention or argument. Patent Owner reserves all rights to
`
`provide a full response to the Petition in a Patent Owner Response, in accordance
`
`with the applicable federal statutes and rules of the Patent Trial and Appeal Board.
`
`See 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120.
`
`-1-
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`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
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`Summary of Argument
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`Aerohive does not dispute that it filed this petition more than one year after
`
`it was served with a complaint for infringement of U.S. Patent No. 9,019,838 (the
`
`“’838 Patent”). For this reason, Aerohive’s IPR petition must be denied, and the
`
`Board may not institute a trial in this case. See 35 U.S.C. §315(b) (“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 . . . is served with a complaint
`
`alleging infringement of the patent”).
`
`Aerohive’s Motion for Joinder also should be denied. With the motion,
`
`Aerohive seeks to join Case IPR2016-00573 (the “-573 IPR”), which was filed by
`
`petitioner AMX. But the -573 IPR has been fully terminated with respect to all
`
`parties, and has been closed. Aerohive cannot join a proceeding that has been fully
`
`terminated. Aerohive’s motion for joinder should be denied for other reasons, but
`
`Chrimar will not brief those reasons here given the termination of the -573 IPR case
`
`to which Aerohive is seeking to be joined.
`
`Aerohive has admitted that if its motion for joinder is not granted, this
`
`petition is time barred. Because the motion for joinder must be denied given the
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`-2-
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`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
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`complete termination of the -573 IPR, the Board must also deny Aerohive’s
`
`petition and terminate this case.
`
`
`
`Background
`
`A.
`
`Status of Related Litigation
`
`The ’838 Patent is currently one of four related patents asserted in litigation
`
`pending in the Eastern District of Texas against several defendants, including
`
`Aerohive: Chrimar Systems, Inc., et al. v. ADTRAN, Inc. et al., Case No. 6:15-cv-
`
`618. The case against Aerohive is scheduled for trial on January 3, 2017, along with
`
`Aerohive’s co-defendant Dell, Inc. A jury trial was held against Alcatel-Lucent
`
`Enterprise, USA, Inc. (“ALE”) the week of October 3, 2016, resulting in a jury
`
`verdict in Chrimar’s favor.
`
`B.
`
`Status of Related IPRs
`
`The ’838 Patent is currently at issue in one IPR that has been instituted,
`
`Case IPR2016-01151. The ’838 Patent is also the subject of one petition for inter
`
`partes review filed by Juniper Networks, Inc., Case No. IPR2016-01397 and one
`
`petition for inter partes review filed by D-Link Systems, Inc., Case No. IPR2016-
`
`01426.
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`
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`-3-
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`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
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`Arguments and Authorities
`
`A. Aerohive’s Petition should be Denied because it was not Timely Filed.
`Institution is Barred by 35 U.S.C. § 315(b).
`
`Aerohive’s IPR Petition was not timely filed, and it may not be instituted for
`
`trial. Congress set forth the one-year statutory time-bar for IPR petitions as follows:
`
`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
`
`petition, 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).
`
`35 U.S.C. § 315(b).
`
`On July 1, 2015, Chrimar filed a complaint for infringement of the ’838
`
`Patent against Aerohive and Dell. See Ex. 2090. The complaint was timely served
`
`on Aerohive on or about July 8, 2015. See Ex. 2091. The case is still pending and
`
`set for trial against Dell and Aerohive on January 3, 2017. Aerohive filed this IPR
`
`Petition on September 8, 2016—more than one year after Aerohive was served
`
`with Chrimar’s complaints for infringement of the ’838 Patent. See Petition, Paper
`
`2.
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`-4-
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`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
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`Aerohive does not contest that its IPR petition was filed after the one-year
`
`statutory deadline. Instead, Aerohive contends that the § 315(b) time-bar does not
`
`apply because Aerohive also filed a Motion for Joinder requesting to be joined as a
`
`party to the -574 IPR, which has been instituted for trial. See Petition, Paper 3 at 3
`
`(“The time limit of 35 U.S.C. § 315(b) . . . does not apply here because Aerohive
`
`has moved for joinder . . . .”). See also Order, Paper 7 at 2 (“Aerohive
`
`acknowledged that, unless Motions for Joinder are granted, the Petitions are barred
`
`under 35 U.S.C. § 315(b)”).
`
`B. Aerohive’s Motion for Joinder must be Denied because the -573 IPR has
`been Fully Terminated.
`
`Upon the filing of a Joint Motion to Terminate the Proceeding, the Board
`
`completely terminated the -573 IPR with respect to both patent owner and
`
`petitioner. See -573 IPR at Paper 25. The Board’s order terminating the case
`
`expressly acknowledged that Aerohive had filed a pending motion to join the
`
`proceeding, and that termination would moot Aerohives joinder motion and render
`
`Aerohive’s petition time-barred under §315(b). See id. at p. 2. The Board decided
`
`to terminate the case anyway, holding that “Aerohive, however, could have
`
`avoided the §315(b) bar by filing the Petition within one year after Chrimar served
`
`its complaint alleging infringement of the challenged patent.” Id.
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`-5-
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`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
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`
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`The Board was correct in stating that the complete termination of the -573
`
`Patent serves to moot Aerohive’s Motion for Joinder. See, e.g., LG Electronics v.
`
`Cellular Communications Equip., LLC, Case IPR2016-00178, Paper 9 at 30 (PTAB
`
`March 28, 2016) (denying motion for joinder as moot where the proceeding to
`
`which joinder was sought had been terminated); Oracle Corp. v. Crossroads Sys.,
`
`Inc., case IPR2015-01063, Paper 11 at 2 (PTAB Sept. 9, 2015) (same). Aerohive’s
`
`motion is therefore moot, and should be denied.
`
`Conclusion
`
`For the foregoing reasons, the Board should deny Aerohive’s IPR petition
`
`and also deny Aerohive’s Motion for Joinder. This case should be terminated in its
`
`entirety.
`
`
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`-6-
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`
`
`Respectfully submitted,
`
`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
`
`
`
`
`
`
`Dated: December 14, 2016
`
`
`
`
`
` /s/ Justin S. Cohen
`Justin S. Cohen
` Reg. No. 59,964
` Justin.Cohen@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
`214.969.1700
`214.969.1751 (Fax)
`
`Richard W. Hoffmann
` Reg. No. 33,711
` Hoffmann@Reising.com
`REISING ETHINGTON PC
`755 West Big Beaver Road, Suite 1850
`Troy, Michigan 48084
`248.689.3500
`248.689.4071 (Fax)
`
`Counsel for Patent Owner
`Chrimar Systems, Inc.
`
`
`
`
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`-7-
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`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
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`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
`
`
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`
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`Pursuant to 37 C.F.R. § 42.24(d), I certify that this Preliminary Response
`
`complies with the type-volume limits of 37 C.F.R. § 42.24(b)(1) because it contains
`
`1,127 words, excluding the parts of this Preliminary Response that are exempted by
`
`37 C.F.R. § 42.24(a)(1), according to the word processing system used to prepare
`
`this Preliminary Response.
`
`
`
` /s/ Justin S. Cohen
`Justin S. Cohen
` Reg. No. 59,964
` Justin.Cohen@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
`214.969.1700
`214.969.1751 (Fax)
`
`-8-
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`December 14, 2016
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`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
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`CERTIFICATE OF SERVICE
`
`
`
`A copy of this PATENT OWNER’S PRELIMINARY RESPONSE
`
`UNDER 37 C.F.R. §107(a) and PATENT OWNER’S RESPONSE AND
`
`OPPOSITION TO MOTION FOR JOINDER has been served on Petitioner
`
`via email at the following correspondence addresses:
`
`
`
`Matthew A. Argenti (Reg. No. 61,836)
`margenti@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: 650-354-4154
`Fax: 650-493-6811
`
`Michael T. Rosato (Reg. No. 52,182)
`mrosato@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Telephone: 206-883-2529
`Fax: 206-883-2699
`
`
`
`
`-9-
`
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`
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`
` /s/ Justin S. Cohen
`Justin S. Cohen
` Reg. No. 59,964
` Justin.Cohen@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
`214.969.1700
`214.969.1751 (Fax)
`
`Case No. IPR2016-001758
`U.S. Patent No. 9,019,838
`
`
`
`
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`December 14, 2016
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`-10-
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