UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Ruckus Wireless, Inc., Brocade Communication
`Systems, Inc. and Netgear, Inc.,
`
`Petitioners
`v.
`
`ChriMar Systems, Inc.,
`Patent Owner
`U.S. Patent No. 9,019,838
`Filing Date: September 14, 2012
`Issue Date: April 28, 2015
`Inter Partes Review No. 2017-____
`
`Title: A CENTRAL PIECE OF NETWORK EQUIPMENT
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`
`
`MOTION FOR JOINDER
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Ruckus Wireless, Inc., Brocade Communication
`Systems, Inc. and Netgear, Inc.,
`
`Petitioners
`v.
`
`ChriMar Systems, Inc.,
`Patent Owner
`U.S. Patent No. 9,019,838
`Filing Date: September 14, 2012
`Issue Date: April 28, 2015
`Inter Partes Review No. 2017-____
`
`Title: A CENTRAL PIECE OF NETWORK EQUIPMENT
`
`
`
`MOTION FOR JOINDER
`
`
`
`
`
`I.
`
`INTRODUCTION
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`Ruckus Wireless, Inc., Brocade Communication Systems, Inc. and Netgear,
`
`Inc. (“Petitioners”) submit concurrently with this motion a petition for inter partes
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`review of U.S. Patent No. 8,019,838 (“the ‘838 patent”) (“Petition”) based on the
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`identical grounds that form the basis for the pending inter partes review initiated by
`
`Juniper Networks, Inc. concerning the same patent, Case No. IPR2016-01397 (the
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`“Juniper IPR”).
`
`Petitioners respectfully request that the Petition be instituted and move that
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`the Petition be joined with the Juniper IPR pursuant to 35 U.S.C. § 315(c) and
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`37 C.F.R. §§ 42.22 and 42.122(b). Petitioners merely request an opportunity to join
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`with the Juniper IPR as an “understudy” to Juniper, only assuming a more active
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`role in the event Juniper settles with Patent Owner ChriMar Systems, Inc.
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`(“ChriMar”). Petitioners do not seek to alter the grounds upon which the Board has
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`already instituted the Juniper IPR, and joinder will have no impact on the IPR’s
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`existing schedule. Petitioners have conferred with counsel for Juniper, and it does
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`not oppose this motion. This motion is timely as it was filed within one month of
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`the institution of IPR2016-01391. 35 U.S.C. §§ 21(b), 315(b), 315(c); 37 C.F.R. §
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`42.122(b).
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`
`
`
`
`
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS
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`The ’838 patent has been the subject of 45 civil actions filed in the Eastern
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`District of Michigan, Eastern District of Texas, and Northern District of California.
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`Attached as Exhibit 1012 is a list identifying each of these civil actions, which
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`includes Chrimar Systems Inc., et al. v. Ruckus Wireless, Inc., Case No 3:16-cv-
`
`00186-SI (N.D. Cal.) and Chrimar Systems Inc., et al. v. Netgear, Inc., Case No
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`3:16-cv-00624-SI (N.D. Cal.). In addition to the ‘838 patent, ChriMar sued
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`Petitioners Ruckus Wireless, Inc. and Netgear, Inc. for infringement of U.S. Pat.
`
`Nos. 8,155,012 (‘012 patent), 8,942,107 (‘107 patent), and 8,902,760 (‘760 patent)
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`(collectively, the “Asserted Patents.”).
`
`In July 2016, Juniper Networks, Inc. (“Juniper”) filed four petitions for inter
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`partes review against the Asserted Patents. See IPR Case Nos. IPR2016-01389
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`(‘012 patent), -01399 (‘760 patent), -01391 (‘107 patent), and -01397 (‘838 patent).
`
`The Board instituted IPR2016-01391 on December 22, 2016. See Paper 9. The
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`Board instituted IPR2016-01397 and -01399 on January 4, 2017. See Paper 8, Paper
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`8. IPR2016-01389 is pending as of January 17, 2017. See Paper 1. In addition to
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`this motion to join IRP2016-01397, Petitioners are filing related motions to join IPR
`
`Case Nos. IPR2016-01391 and -01399.
`
`Several other IPRs have been filed against the Asserted Patents and are
`
`instituted or awaiting institution. The instituted IPRs include IPR2016-00569 (‘107
`
`
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`2
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`
`
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`patent), filed by the AMX, LLC on February 12, 2016, IPR2016-00574 (‘760
`
`patent), filed by AMX, LLC on February 29, 2016, IPR2016-00983 (‘012 patent),
`
`filed by Dell, Inc. on April 29, 2016, IPR2016-01151 (‘838 patent), filed by Dell
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`Inc. on June 3, 2016 and IPR2016-01425 (‘012 patent), filed by D-Link Systems,
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`Inc. on July 13, 2016. The IPRs awaiting institution include IPR2016-01757 (‘107
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`patent), -01758 (‘838 patent), and -01759 (‘760 patent), filed by Aerohive Networks,
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`Inc. on September 8, 2016.
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`III. LEGAL STANDARD AND APPLICABLE RULES
`
`Joinder is governed by 35 U.S.C. § 315(c), which reads as follows:
`
`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.
`A motion for joinder should “(1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
`
`(3) explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified.” See Decision on Joinder, IPR2013-00385 (Paper No. 17, July 29, 2013);
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`see also Order Authorizing Joinder, IPR2013-00004 (Paper No. 15, April 24, 2013.)
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`Petitioners submit the factors outlined below support granting of the present Motion.
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`
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`3
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`
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`
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`IV. PETITIONERS MEET THE REQUIREMENTS FOR MOTION FOR
`JOINDER
`Petitioners submit that (1) joinder is appropriate because it will promote
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`efficient determination of the validity of the ‘838 patent without prejudice to Juniper
`
`or ChriMar; (2) Petitioners’ petition raises the same grounds for unpatentability as
`
`does Juniper’s petition; (3) joinder would not affect the pending schedule in the
`
`Juniper IPR nor would it increase the complexity of that proceeding; and (4)
`
`Petitioners are willing to accept an understudy role in the Juniper IPR to minimize
`
`burden and schedule impact. Absent joinder, Petitioners could be prejudiced if the
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`Juniper IPR is terminated before the Board issues a final written decision.
`
`Petitioners could have to litigate the same positions in the Petition before the District
`
`Court under a higher burden of proof, wasting resources and losing efficiency.
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`Accordingly, joinder should be granted.
`
`A.
`
`Joinder Will Promote the Efficient Determination of the ‘838
`Patent’s Validity and Will Not Prejudice Juniper or ChriMar
`Granting joinder and allowing Petitioners to assume an understudy role will
`
`not prejudice Juniper or ChriMar. The Petition does not raise any issues that are not
`
`already before the Board in the Juniper IPR. Joinder thus would not affect the timing
`
`of the Juniper IPR or content of ChriMar’s responses. The Board has granted
`
`motions for joinder in similar circumstances. See, e.g., Institution of Inter Partes
`
`Review and Grant of Motion for Joinder, IPR2015-00543 (Paper 12, March 6, 2015);
`
`
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`4
`
`
`
`
`
`Decision on Joinder, IPR2014-00949 (Paper 16, January 28, 2015); Decision on
`
`Joinder, IPR2015-00176 (Paper 12, November 25, 2014); Decision on Joinder,
`
`IPR2014-00743 (Paper 10, June 18, 2014). Petitioners have notified counsel for
`
`Juniper of this motion, and it does not oppose joinder.
`
`Moreover, the Board’s final written decision on the ‘838 patent will minimize
`
`issues in the underlying litigation and could likely resolve the underlying litigation
`
`altogether. This would promote the efficient determination of the ‘838 patent’s
`
`validity. If the Board allows Petitioners to join the Juniper IPR and upholds the ‘838
`
`patent’s validity, Petitioners will be estopped from further challenging the validity
`
`of the ‘838 patent on the grounds in the Petition. See 35 U.S.C. § 315(e)(1). Joinder
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`is appropriate here to promote judicial efficiency and avoid unnecessary expense.
`
`B.
`Petitioners’ Petition Raises the Same Grounds as the Juniper IPR
`The Petition asserts only grounds that the Board has already instituted in the
`
`Juniper IPR. There are no new arguments for the Board to consider. Likewise, the
`
`Petition relies on the same exhibits and expert declaration as the Juniper IPR.
`
`C.
`Joinder Will Not Affect the Schedule of the Juniper IPR
`Allowing Petitioners to join the Juniper IPR will not impact the Board’s
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`ability to complete its review within the statutory period and according to the
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`schedule already set in the Juniper IPR. Section 316(a)(11) requires that IPR
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`proceedings be completed and the Board’s final decision issued within one year of
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`
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`5
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`
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`the institution of the IPR. See also 37 C.F.R. § 42.100(c). Petitioners agree to an
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`understudy role and do not raise any issues that are not already before the Board.
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`The invalidity grounds in the Petition are the same as those the Board already
`
`instituted in the Juniper IPR. Given that Petitioners will assume an understudy role,
`
`their addition to this IPR proceeding will not introduce any additional arguments,
`
`briefing, or need for discovery. See Decision on Joinder, IPR2013-00495 (Paper 13,
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`Sept. 16, 2013).
`
`Petitioners submit that ChriMar does not need to file a Patent Owner’s
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`Preliminary Response, and request that the Board proceed without one. This is
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`consistent with the Board’s Order in IPR2013-00256 (Paper 8, June 13, 2013), which
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`allowed the Patent Owner to file a preliminary response addressing only those points
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`raised in the new petition that were different from those in the granted petition. Here,
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`because the invalidity grounds in the Petition are identical to those instituted in the
`
`Juniper IPR, there are no new arguments for ChriMar to address. ChriMar already
`
`addressed the invalidity grounds in the Petition in its Preliminary Response to the
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`Juniper IPR. Alternatively, the Board could add an additional deadline for ChriMar
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`to respond to this Petition. This deadline would not impact other deadlines in the
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`schedule.
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`6
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`
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`D.
`Petitioners Agree to Assume a Limited Role
`As long as Juniper remains in the joined IPR, Petitioners agree to assume a
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`limited “understudy” role. Petitioners would only take on a more active role if
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`Juniper were no longer a party to the IPR. Petitioners present no new grounds for
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`invalidity and their presence in the proceedings will not introduce any additional
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`arguments, briefing or need for discovery.
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`V.
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`CONCLUSION
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`For the foregoing reasons, Petitioners respectfully request that their Petition
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`for Inter Partes Review of the ‘838 patent be granted and that the proceedings be
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`
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`Respectfully submitted,
`
`By: / Joseph A. Powers /
`
`Joseph A. Powers
`
`Reg. No. 47,006
`Counsel for Petitioners
`
`joined with IPR2016-01397.
`
`Date: January 18, 2017
`
`
`Duane Morris LLP
`30 South 17th Street
`Philadelphia PA 19103-4196
`Tel: 215-979-1842
`Fax: 215-689-3797
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`7
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`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
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`the attached Motion for Joinder is being served via Federal Express on the 18th
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`day of January, 2017, the same day as the filing of the above-identified document
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`in the United States Patent and Trademark Office/Patent Trial and Appeal Board,
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`upon the Patent Owner by serving the correspondence address of record with the
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`USPTO as follows:
`
`Jeffery L. Snyder
`HARNESS, DICKEY & PIERCE, P.L.C.
`P.O. BOX 828
`BLOOMFIELD HILLS MI 48303
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`and upon counsel of record for the Patent Owner in the litigation pending before
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`the U.S. District Court for the Northern District of California entitled ChriMar
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`Systems, Inc. d/b/a CMS Technologies et al v. Ruckus Wireless Inc., Case No.
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`3:16-cv-00186 and ChriMar Systems, Inc. d/b/a CMS Technologies et al v.
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`Netgear, Inc., Case No. 3:16-cv-00624 as follows:
`
`Justin S. Cohen
`Richard L. Wynne, Jr.
`One Arts Plaza
`1722 Routh St., Suite 1500
`Dallas, Texas 75201
`
`
`Dated: January 18, 2017
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`
`
`
`
`
`
`/ Joseph A. Powers /
`Joseph A. Powers (Reg. No. 47,006)
`
`8
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