throbber
Paper 15
` Entered: April 3, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS, INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00418
`Patent 9,014,243 B2
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`

`

`IPR2017-00418
`Patent 9,014,243 B2
`
`
`
`I. INTRODUCTION
`Comcast Cable Communications, L.L.C., Cox Communications, Inc.,
`Time Warner Cable Enterprises L.L.C., Verizon Services Corp., and ARRIS
`Group, Inc. (collectively “Petitioner”) filed a Petition for inter partes review
`of claims 1‒25 of U.S. Patent No. 9,014,243 B2 (Ex. 1001, “the ’243
`patent”). Paper 1 (“Pet.”). Concurrently with its Petition, Petitioner filed a
`Motion for Joinder with Cisco Systems, Inc. v. TQ Delta, LLC, Case
`IPR2016-01020 (“the Cisco IPR”). Paper 3 (“Mot.”). Petitioner represents
`that the petitioners in the Cisco IPR—Cisco Systems, Inc. and DISH
`Network, L.L.C.1—do not oppose the Motion for Joinder. Mot. 1. TQ
`Delta, LLC (“Patent Owner”) submits that it does not oppose joinder. See
`Paper 7. Patent Owner also elected to waive its Preliminary Response. Id.
`For the reasons explained below, we institute an inter partes review of
`claims 1–25 of the ’243 patent and grant Petitioner’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`Petitioner and Patent Owner identify several pending judicial matters
`as relating to the ’243 patent. Pet. 2–3; Mot. 2–3; Paper 5, 2–4.
`
`
`1 DISH Network, L.L.C., who filed a Petition in IPR2017-00254, has been
`joined as a petitioner in the Cisco IPR.
`
`2
`
`

`

`IPR2017-00418
`Patent 9,014,243 B2
`
`In the Cisco IPR, we instituted an inter partes review of claims 1–25
`of the ’243 patent on the following grounds:
`
`References
`Shively2 and Stopler3
`Shively, Stopler, and
`Gerszberg4
`
`Challenged Claims
`Basis
`1–3, 7–9, 13–16, and 20–22
`§ 103(a)
`§ 103(a) 4–6, 10–12, 17–19, and 23–25
`
`Cisco Systems, Inc. v. TQ Delta, LLC, Case IPR2016-01020, slip op. at 16
`(PTAB Nov. 4, 2016) (Paper 7) (“Cisco Dec.”).
`
`III. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the one on which we instituted review in the Cisco IPR.
`Compare Pet. 12–55, with Cisco Dec. 16. Indeed, Petitioner contends that
`the Petition asserts only the grounds that the Board instituted in the Cisco
`IPR, there are no new arguments for the Board to consider, and the
`Petitioner relies on the same exhibits and expert declaration as in the Cisco
`IPR. Mot. 6.
`For the same reasons set forth in our institution decision in the Cisco
`IPR, we determine that the information presented in the Petition shows a
`reasonable likelihood that Petitioner would prevail in showing that (a)
`claims 1–3, 7–9, 13–16, and 20–22 would have been obvious over Shively
`and Stopler and (b) claims 4–6, 10–12, 17–19, and 23–25 would have been
`
`
`2 U.S. Patent No. 6,144,696; issued Nov. 7, 2000 (Ex. 1011) (“Shively”).
`3 U.S. Patent No. 6,625,219 B1; issued Sept. 23, 2003 (Ex. 1012)
`(“Stopler”).
`4 U.S. Patent No. 6,424,646 B1; issued July 23, 2002 (Ex. 1013)
`(“Gerszberg”).
`
`3
`
`

`

`IPR2017-00418
`Patent 9,014,243 B2
`
`obvious over Shively, Stopler, and Gerszberg. See Cisco Dec. 6–16.
`Accordingly, we institute an inter partes review on the same grounds as the
`ones on which we instituted review in the Cisco IPR. We do not institute
`inter partes review on any other grounds.
`
`IV. GRANT OF MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`a filing date of December 5, 2016. See Paper 4. Thus, Petitioner’s Motion
`for Joinder is timely because joinder was requested no later than one month
`after the institution date of the Cisco IPR, i.e., November 4, 2016.5 See 37
`C.F.R. § 42.122(b).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`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 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 existing review; and (4) address specifically how briefing and discovery
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`
`5 Because December 4, 2016 fell on a Sunday, the one-month date extended
`to the next business day, December 5, 2016. See 37 C.F.R. § 1.7.
`
`4
`
`

`

`IPR2017-00418
`Patent 9,014,243 B2
`
`As noted, the Petition in this case asserts the same unpatentability
`grounds on which we instituted review in the Cisco IPR. See Mot. 6.
`Petitioner also relies on the same prior art analysis and expert testimony
`submitted by the Cisco Petitioner. See id. Indeed, the Petition is nearly
`identical to the petition filed by the Cisco Petitioner with respect to the
`grounds on which review was instituted in the Cisco IPR. See id. Thus, this
`inter partes review does not present any ground or matter not already at
`issue in the Cisco IPR.
`If joinder is granted, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of Cisco Petitioner as a
`party. Id. at 7. Petitioner agrees to “assume a limited ‘understudy’ role” and
`“would only take on an active role if Cisco were no longer a party to the
`IPR.” Id. Petitioner further represents that it “presents no new grounds for
`invalidity and its presence in the proceedings will not introduce any
`additional arguments, briefing or need for discovery.” Id. Because
`Petitioner expects to participate only in a limited capacity, Petitioner submits
`that joinder will not impact the trial schedule for the Cisco IPR. Id. at 6–7.
`We agree with Petitioner that joinder with the Cisco IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that an inter partes review is instituted in IPR2017-
`00418;
`FURTHER ORDERED that the Motion for Joinder with IPR2016-
`01020 is granted, and Comcast Cable Communications, L.L.C., Cox
`
`5
`
`

`

`IPR2017-00418
`Patent 9,014,243 B2
`
`Communications, Inc., Time Warner Cable Enterprises L.L.C., Verizon
`Services Corp., and ARRIS Group, Inc. are joined as a petitioner in
`IPR2016-01020;
`FURTHER ORDERED that IPR2017-00418 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2016-
`01020;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2016-01020 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2016-01020 (Paper 8) remains unchanged;
`FURTHER ORDERED that in IPR2016-01020, the Cisco Petitioner
`and Petitioner will file each paper, except for a motion that does not involve
`the other party, as a single, consolidated filing, subject to the page limits set
`forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
`consolidated filing;
`FURTHER ORDERED that for any consolidated filing, if Petitioner
`wishes to file an additional paper to address points of disagreement with the
`Cisco Petitioner, Petitioner must request authorization from the Board to file
`a motion for additional pages, and no additional paper may be filed unless
`the Board grants such a motion;
`FURTHER ORDERED that the Cisco Petitioner and Petitioner shall
`collectively designate attorneys to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
`by the Cisco Petitioner and Petitioner, within the timeframes set forth in 37
`C.F.R. § 42.53(c) or agreed to by the parties;
`
`6
`
`

`

`IPR2017-00418
`Patent 9,014,243 B2
`
`FURTHER ORDERED that the Cisco Petitioner and Petitioner shall
`collectively designate attorneys to present at the oral hearing, if requested
`and scheduled, in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2016-01020 shall
`be changed to reflect joinder of Comcast Cable Communications, L.L.C.,
`Cox Communications, Inc., Time Warner Cable Enterprises L.L.C., Verizon
`Services Corp., and ARRIS Group, Inc. as a petitioner in accordance with
`the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-01020.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`

`

`IPR2017-00418
`Patent 9,014,243 B2
`
`FOR COMCAST PETITIONER:
`John M. Baird
`Christopher Tyson
`DUANE MORRIS LLP
`JMBaird@duanemorris.com
`CJTyson@duanemorris.com
`
`FOR CISCO PETITIONER:
`David McCombs
`Theo Foster
`HAYNES AND BOONE, LLP
`David.mccombs.ipr@haynesboone.com
`Ipr.theo.foster@haynesboone.com
`
`FOR PATENT OWNER:
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`Andrew Karp
`MCANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`akarp@mcandrews-ip.com
`
`
`8
`
`

`

`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC., DISH NETWORK, LLC,
`COMCAST CABLE COMMUNICATIONS, LLC,
`COX COMMUNICATIONS, INC.,
`TIME WARNER CABLE ENTERPRISES LLC,
`VERIZON SERVICES CORP., and ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-010201
`Patent 9,014,243 B2
`____________
`
`
`1 DISH Network, L.L.C., who filed a Petition in IPR2017-00254, and
`Comcast Cable Communications, L.L.C., Cox Communications, Inc., Time
`Warner Cable Enterprises L.L.C., Verizon Services Corp., and ARRIS
`Group, Inc., who filed a Petition in IPR2017-00418, have been joined in this
`proceeding.
`
`

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