Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 26
`Entered: November 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ARRIS GROUP INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`Case IPR2016-00766
`Patent 5,659,891
`
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`INTRODUCTION
`The Arris Group Inc. (“Arris”) filed a Petition requesting inter partes
`
`review of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891 Patent”).
`Paper 1 (“Arris Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Arris filed a
`Motion for Joinder, seeking to join the instant proceeding with Aruba
`
`
`571-272-7822
`
`
`
`
`Paper 26
`Entered: November 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ARRIS GROUP INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`Case IPR2016-00766
`Patent 5,659,891
`
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`INTRODUCTION
`The Arris Group Inc. (“Arris”) filed a Petition requesting inter partes
`
`review of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891 Patent”).
`Paper 1 (“Arris Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Arris filed a
`Motion for Joinder, seeking to join the instant proceeding with Aruba
`
`
`
`IPR2016-00766
`Patent 5,659,891
`
`Networks, Inc. v. Mobile Telecommunications Technologies, LLC, Case
`IPR2016-00768 (PTAB). Paper 19 (“Mot.”). Aruba Networks, Inc.,
`Hewlett Packard Enterprise Company, and HP Inc. (collectively, “Aruba”)
`filed a nearly identical Petition requesting inter partes review of claims 1–5
`the ’891 Patent. IPR2016-00768, Paper 1 (“Aruba Pet.”). We instituted
`inter partes review of claims 1–5 of the ’891 Patent, issuing one Decision
`for both proceedings. Paper 13, 2. Patent Owner filed a notice stating that it
`does not oppose joinder of the inter partes reviews. Paper 23. For the
`reasons set forth below, the Motion for Joinder is granted.
`
`
`ANALYSIS
`The Board, acting on behalf of the Director, has the discretion to join
`
`an inter partes review with another inter partes review. See 35 U.S.C. §
`315(c). Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When
`exercising its discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b); 37
`C.F.R. § 42.1(b). The Board considers the impact of both substantive issues
`and procedural matters on the proceedings. As the moving party, Arris bears
`the burden to show that joinder is appropriate. 37 C.F.R. §§ 42.20(c),
`42.122(b).
`
`In its Motion for Joinder, Arris contends that joinder, in this particular
`situation, is appropriate because: “it will promote efficiency by avoiding
`duplicative reviews and filings of the same invalidity issues across two
`cases” (Mot. 6); Arris’s Petition is substantively identical to Aruba’s Petition
`
`2
`
`
`
`IPR2016-00766
`Patent 5,659,891
`
`filed in IPR2016-00768 (see id. at 5); Aruba agrees to consolidated filings
`and discovery (id. at 6–7); and joinder would not affect the schedule in
`IPR2016-00768 (see id. at 6).
`
`
`The substantive issues in IPR2016-00768 would not be affected by
`joinder, because Arris’s Petition is substantively identical to Aruba’s
`Petition filed in IPR2016-00768. Arris’s Petition asserts identical grounds
`of unpatentability, challenging the same claims of the ’891 Patent. Compare
`Arris Pet. 4 with Aruba Pet. 4. Arris also submits the same Declaration of
`Dr. Apostolos Kakaes as filed in IPR2016-00768. Compare Ex. 1003, with
`IPR2016-00768, Ex. 1003. We instituted the instant inter partes review
`based on the same grounds for which we instituted trial in IPR2016-00768,
`issuing one Decision for both. Paper 13. Therefore, Arris’s Petition raises
`no new issues beyond those already before us in IPR2016-00768.
`
`Further, conducting a single joined proceeding for reviewing claims
`1–5 of the ’891 Patent is more efficient than conducting multiple
`proceedings, eliminating duplicate filings and discovery. Arris indicates that
`Aruba agrees to consolidated filings for all substantive papers and that
`Aruba agrees to be responsible for the consolidated filings. See Mot. 7.
`Arris indicates that it will file “separate filings, if any, of no more than seven
`pages directed to only to points of disagreement with [Aruba].” Id. The
`Motion for Joinder does not indicate that any such disagreements exists at
`this time. Thus, we do not authorize Arris to file any separate papers. Arris
`may request a conference call with the Board should a disagreement between
`Arris and Aruba arise to request authorization for a separate filing at that
`time.
`
`3
`
`
`
`IPR2016-00766
`Patent 5,659,891
`
`Arris indicates that Arris and Aruba (collectively, Petitioners) will
`
`coordinate and work together to conduct the cross-examination of any
`witnesses produced by Patent Owner and the redirect of any witnesses
`produced by Petitioners, within the timeframe normally allotted by our Rules
`for one party. Id. at 7. Arris also indicates that Petitioners will coordinate
`the presentation of any arguments during oral argument (if requested). Id.
`
`Joinder will not require any change to the trial schedule in IPR2016-
`00768, allowing the trial still to be completed within one year. We issued
`one Scheduling Order for both proceedings. See Paper 15.
`
`
`
`Given that Arris’s Petition raises no new issues, and Petitioners agree
`to consolidated filings and discovery, the impact of joinder on IPR2016-
`00768 will be minimal, and joinder will streamline the proceedings,
`reducing the costs and burdens on the parties and the Board. For the
`foregoing reasons, Arris has met its burden of demonstrating that joinder of
`the instant proceeding with IPR2016-00768 is warranted under the
`circumstances.
`
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that the Motion for Joinder with IPR2016-00768 is
`
`granted;
`
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2016-00768;
`
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2016-00768 are unchanged;
`
`4
`
`
`
`IPR2016-00766
`Patent 5,659,891
`
`FURTHER ORDERED that the Scheduling Order for IPR2016-00768
`
`(Paper 14) shall govern the joined proceeding;
`
`FURTHER ORDERED that the instant proceeding is joined and
`terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`proceeding shall be made only in IPR2016-00768;
`
`FURTHER ORDERED that, throughout IPR2016-00768, Petitioners
`will file papers, except for motions which do not involve the other parties, as
`consolidated filings; Aruba will identify each such filing as a consolidated
`filing and will be responsible for completing all consolidated filings; the
`page limits set forth in 37 C.F.R. § 42.24 will apply to all consolidated
`filings; no individual Petitioner will receive any additional pages in addition
`to the page limits set forth in 37 C.F.R. § 42.24 for one party, unless
`otherwise ordered by the Board;
`
`FURTHER ORDERED that, unless otherwise ordered by the Board1,
`Patent Owner will conduct the cross-examination of witnesses, as well as the
`redirect examination of any witness it produces, in the timeframes set forth
`in 37 C.F.R. § 42.53(c);
`
`FURTHER ORDERED that Petitioners collectively will coordinate to
`conduct the cross-examination of any witnesses produced by Patent Owner
`and the redirect examination of any witnesses produced by Petitioners,
`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
`individual Petitioner will receive any cross-examination or redirect
`examination time in addition to the time normally allotted by 37 C.F.R. §
`42.53(c) for one party;
`
`
`1 The timeframe for the cross-examination of Dr. Kakaes was extended to 10
`hours by order of the Board. Paper 22.
`
`5
`
`
`
`IPR2016-00766
`Patent 5,659,891
`
`FURTHER ORDERED that Petitioners collectively will designate
`
`attorneys to present at the oral hearing (if requested) as a consolidated
`presentation;
`
`FURTHER ORDERED that the case caption in IPR2016-00768 shall
`be changed to reflect the joinder with the instant proceeding in accordance
`with the attached example; and
`
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2016-00768.
`
`PETITIONERS:
`J. Steven Baughman
`Megan F. Raymond
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`megan.raymond@ropesgray.com
`
`
`
`
`
`PATENT OWNER:
`
`John R. Kasha
`Kelly L. Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
`
`
`
`6
`
`
`
`IPR2016-00766
`Patent 5,659,891
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARRIS GROUP, INC., ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and HP, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`Case IPR2016-00768
`Patent 5,659,8912
`
`
`
`
`
`
`
`
`
`
`
`2 Case IPR2016-00766 has been joined with the instant proceeding.
`
`
`7
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