Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: September 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TELIT WIRELESS SOLUTIONS INC. and
`TELIT COMMUNICATIONS PLC,
`Petitioner,
`
`v.
`
`M2M SOLUTIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01081
`Patent 8,648,717 B2
`____________
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge ARBES.
`
`Opinion Concurring filed by Administrative Patent Judge GALLIGAN.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Denying Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`
`

`
`IPR2016-01081
`Patent 8,648,717 B2
`
`
`Petitioners Telit Wireless Solutions Inc. and Telit Communications
`PLC (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 25–28 and 30 of U.S. Patent No. 8,648,717 B2
`(Ex. 1201, “the ’717 patent”) pursuant to 35 U.S.C. § 311(a) and a Motion
`for Joinder (Paper 3, “Mot.”) with Case IPR2016-00055 (“the -55 Case”).
`Patent Owner M2M Solutions LLC filed an Opposition (Paper 8, “Opp.”) to
`the Motion for Joinder, to which Petitioner filed a Reply (Paper 9, “Reply”).
`Patent Owner did not file a preliminary response pursuant to 35 U.S.C.
`§ 313. Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
`inter partes review unless the information in the petition and preliminary
`response “shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons that follow, we deny the Petition and deny
`Petitioner’s Motion for Joinder.
`
`
`I. BACKGROUND
`A. Related Proceedings
`Petitions requesting inter partes review of the ’717 patent were filed
`previously in Cases IPR2015-01670, IPR2015-01672, IPR2016-00054, and
`IPR2016-00853, all of which were denied.
`On August 26, 2015, Sierra Wireless America, Inc., Sierra Wireless,
`Inc., and RPX Corp. (collectively, “the Sierra parties”) filed a petition
`requesting inter partes review of claims 1–3, 5–7, 10–24, 29, and 30 of the
`’717 patent, asserting four grounds of unpatentability based on five prior art
`references. IPR2015-01823, Paper 1. On March 8, 2016, we instituted an
`inter partes review as to claims 1, 3, 5, 6, 10–13, 15–24, and 29 on three of
`
`
`
`2
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`IPR2016-01081
`Patent 8,648,717 B2
`
`the asserted grounds, but denied institution as to claims 2, 7, 14, and 30.
`IPR2015-01823, Paper 16.
`On October 21, 2015, Petitioner filed a petition requesting inter partes
`review of claims 1–30 of the ’717 patent in the -55 Case, asserting 14
`grounds of unpatentability based on seven prior art references.
`IPR2016-00055, Paper 1. On April 22, 2016, we instituted an inter partes
`review as to claims 1–24 and 29 on five of the asserted grounds, but denied
`institution as to claims 25–28 and 30. Ex. 1207 (“-55 Dec. on Inst.”).
`Petitioner filed a request for rehearing, which was denied. See
`IPR2016-00055, Papers 11, 13. Petitioner filed its Petition and Motion for
`Joinder with the -55 Case in the instant proceeding on May 23, 2016.
`Also, on May 19, 2016, the Sierra parties filed a petition requesting
`inter partes review of claims 1–24 and 29 of the ’717 patent and a motion
`for joinder with the -55 Case. IPR2016-01073, Papers 1, 2. In a
`concurrently issued decision, we institute and grant the Sierra parties’
`motion for joinder.
`
`
`B. The Prior Art
`Petitioner relies on the following prior art:
`Publication
`International
`Patent
`Application
`No. WO 00/17021, published March 30, 2000 (Ex. 1208, “Van
`Bergen”); and
`C. Bettstetter et al., “GSM Phase 2+ General Packet
`Radio Service GPRS: Architecture, Protocols, and Air
`Interface,” IEEE COMMUNICATIONS SURVEYS, vol. 2, no. 3
`(1999) (Ex. 1209, “Bettstetter”).
`
`
`
`
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`IPR2016-01081
`Patent 8,648,717 B2
`
`
`C. The Asserted Ground
`Petitioner challenges claims 25–28 and 30 of the ’717 patent as
`unpatentable over Van Bergen and Bettstetter under 35 U.S.C. § 103(a).1
`
`
`II. DISCUSSION
`A. Motion for Joinder
`The AIA created administrative trial proceedings, including inter
`partes review, as an efficient, streamlined, and cost-effective alternative to
`district court litigation. The AIA permits the joinder of like proceedings.
`The Board, acting on behalf of the Director, has the discretion to join an
`inter partes review with another inter partes review. 35 U.S.C. § 315(c).
`Section 315(c) provides (emphasis added):
`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.
`35 U.S.C. § 315(b) bars institution of an inter partes review when the
`petition is filed more than one year after the petitioner (or the petitioner’s
`real party-in-interest or privy) is served with a complaint alleging
`infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
`However, the one-year time bar does not apply to a request for joinder.
`
`1 Petitioner provides, for parent independent claim 29 and dependent claims
`25, 26, 27, and 30, an explanation as to how certain limitations of the claims
`allegedly are taught by Van Bergen and certain limitations allegedly are
`taught by Bettstetter. Pet. 24–34. For parent independent claim 24 and
`dependent claim 28, Petitioner argues that the limitations of the claims are
`taught by Van Bergen. Id. at 18–24, 29.
`
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`IPR2016-01081
`Patent 8,648,717 B2
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`35 U.S.C. § 315(b) (“The time limitation set forth in the preceding sentence
`shall not apply to a request for joinder under subsection (c).”); 37 C.F.R.
`§ 42.122(b). Petitioner was served with a complaint alleging infringement
`of the ʼ717 patent on October 24, 2014—more than one year before filing
`the instant Petition. See Mot. 3; Opp. 2. Thus, absent joinder with the
`-55 Case, the Petition in this proceeding is barred.
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The
`Board determines whether to grant joinder on a case-by-case basis, taking
`into account the particular facts of each case, substantive and procedural
`issues, and other considerations. See 157 CONG. REC. S1376 (daily ed.
`Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether and when
`to allow joinder, the Office may consider factors including “the breadth or
`unusualness of the claim scope” and claim construction issues). 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).
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`A motion for joinder should: (1) set forth the reasons why joinder is
`appropriate; (2) identify any new ground(s) of unpatentability asserted in the
`petition; and (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review. See Mot. 5; Frequently Asked Question H5
`on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`Petitioner should address specifically how briefing and/or discovery may be
`
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`simplified to minimize schedule impact. See Mot. 5; Kyocera Corp. v.
`SoftView LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`(Paper 15) (representative).
`Petitioner argues that its Motion for Joinder is timely and joinder is
`appropriate because of efficiency and public policy considerations, as well
`as a lack of prejudice to Patent Owner. Mot. 5‒12. Petitioner contends that
`the Petition challenges five dependent claims that are similar to claims
`challenged in the -55 Case, asserts two prior art references that already are at
`issue in the existing proceeding, and relies on a declaration from the same
`individual, Kimmo Savolainen, who provided a declaration in the -55 Case.
`Id. at 6–9.
`Petitioner also argues generally that joinder will not result in
`unnecessary delay in the trial schedule of the -55 Case. Id. at 9–10.
`Petitioner asserts that it is “willing to make reasonable accommodations to
`the Patent Owner to ensure that any work is completed in a timely and
`sensible manner,” and argues that unspecified “minor readjustments to the
`schedule are not sufficiently prejudicial” to Patent Owner. Id.; Reply 5
`(stating that Petitioner is “willing to accommodate a reasonable request”
`from Patent Owner for a schedule extension).
`Patent Owner argues that Petitioner has not met “its burden of proof
`for explaining the impact joinder would have on the trial schedule for the
`existing review or to address specifically how briefing and discovery may be
`simplified.” Opp. 12. Patent Owner points out that Petitioner makes only
`vague assertions that it is amenable to “reasonable” accommodations and
`schedule extensions, but never specifies what they are. Id. at 12–13. Patent
`Owner further argues that the addition of the new ground of unpatentability
`
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`IPR2016-01081
`Patent 8,648,717 B2
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`as to claims 25–28 and 30 would require additional briefing from the parties
`and may require a second deposition of Mr. Savolainen, who has already
`been cross-examined in the -55 Case, and a declaration from a declarant for
`Patent Owner. Id. at 13.
`We agree with Patent Owner. Petitioner does not explain whether any
`specific modifications to the schedule would be necessary to account for the
`additional claims and issues raised in the Petition, or explain how briefing
`and discovery may be simplified. See Mot. 9–10; Reply 5. Petitioner
`broadly asserts that “[t]here will be no disruption of any trial activity as a
`result of the joinder.” Mot. 10 (emphasis added). That is incorrect. The
`Petition in the instant proceeding challenges five claims not at issue in the
`-55 Case and provides new declarant testimony pertaining to those claims
`(from the same individual who provided a declaration in the -55 Case). See
`Pet. 5; Ex. 1202. If instituted and joined, Patent Owner would be permitted
`to respond to the new arguments in the Petition and cross-examine
`Petitioner’s declarant.2 The -55 Case, however, already has progressed
`beyond those stages. Patent Owner filed its Response more than two months
`ago, Petitioner’s Reply is due shortly on October 10, 2016, and oral
`argument (if requested by the parties) will be held on December 5, 2016.
`See IPR2016-00055, Papers 10, 21, 24. Contrary to Petitioner’s position, at
`
`2 We are not persuaded by Petitioner’s assertion that Patent Owner could
`have avoided the need for a second deposition by cross-examining
`Mr. Savolainen at the time of his deposition in the -55 Case. See Reply 3–4
`(citing Ex. 1236). The period for cross-examination typically begins after
`institution and any supplemental evidence relating to the direct testimony is
`due. See 37 C.F.R. § 42.53(d)(2). Patent Owner was under no obligation to
`cross-examine Mr. Savolainen regarding his declaration in this proceeding,
`which had not been instituted at the time of the original deposition.
`
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`IPR2016-01081
`Patent 8,648,717 B2
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`least some additional briefing, discovery, and delay in the trial schedule
`would be required if joinder were granted. Petitioner’s statements that it is
`willing to make unspecified “reasonable” accommodations do not provide a
`sufficient explanation as to how briefing, discovery, and the trial schedule in
`the -55 Case would need to be changed to accommodate joinder. See Mot.
`9–10; Reply 5. The Board is charged with securing the just, speedy, and
`inexpensive resolution of every proceeding, and has the discretion to join or
`not join proceedings to ensure that objective is met. 37 C.F.R. §§ 42.1(b),
`42.122. Here, joinder would have a significant adverse impact on the
`Board’s ability to complete the existing proceeding in a timely manner,
`which weighs against granting the Motion for Joinder.3
`Based on the timing of the Petition in the instant proceeding, its
`necessary impact on the trial schedule of the -55 Case and the Board’s
`ability to complete timely the existing proceeding if joinder were granted,
`and Petitioner’s failure to explain sufficiently the impact joinder would have
`on briefing, discovery, and the trial schedule in the -55 Case, we are not
`persuaded that Petitioner has met its burden of demonstrating that joinder is
`warranted under the circumstances.
`
`
`
`3 We note that the delay in deciding the issue of joinder is largely
`attributable to Petitioner having filed the instant Petition a full month after
`the Decision on Institution in the -55 Case, and a month and a half before the
`original deadline for Patent Owner’s Response in the -55 Case. See
`IPR2016-00055, Paper 10. Petitioner also never requested that the
`three-month time period for Patent Owner to file a preliminary response in
`the instant proceeding be shortened.
`
`
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`IPR2016-01081
`Patent 8,648,717 B2
`
`
`B. The Petition
`Petitioner filed a Petition requesting inter partes review of claims
`25–28 and 30 of the ’717 patent. The standard for instituting an inter partes
`review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes
`review may not be instituted unless the information presented in the petition
`and preliminary response “shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” However, 35 U.S.C. § 315(b) further provides:
`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, 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).
`Petitioner asserts that “the one-year bar set forth in 37 C.F.R.
`§ 42.101(b) does not apply” because the instant Petition was filed with a
`timely-filed Motion for Joinder. Pet. 5; see Mot. 3. Patent Owner contends
`that the Petition is time-barred because it was filed more than one year after
`Petitioner was served with a complaint alleging infringement of the
`’717 patent. Opp. 1. Because Petitioner’s Motion for Joinder is denied, the
`one-year time bar in 35 U.S.C. § 315(b) applies. Petitioner filed the Petition
`in this proceeding on May 23, 2016, which is more than one year after
`Petitioner was served with a complaint alleging infringement on October 24,
`2014. See Mot. 3. Accordingly, the Petition is time-barred and we do not
`institute an inter partes review of claims 25–28 and 30 of the ’717 patent.
`
`
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`IPR2016-01081
`Patent 8,648,717 B2
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion for Joinder with Case
`IPR2016-00055 is denied; and
`FURTHER ORDERED that the Petition is denied, and no inter partes
`review is instituted with respect to any of the challenged claims of the
`’717 patent on the grounds of unpatentability asserted in the Petition.
`
`
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`IPR2016-01081
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`
`
`GALLIGAN, Administrative Patent Judge, concurring in the result.
`I join Sections II.B and III of the majority opinion. Although I concur
`in the denial of the Motion for Joinder, I do not join the majority’s analysis
`in Section II.A.
`
`1
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`

`
`IPR2016-01081
`Patent 8,648,717 B2
`
`PETITIONER:
`
`Caleb Pollack
`Guy Yonay
`David Loewenstein
`Milo Eadan
`PEARL COHEN ZEDEK LATZER BARATZ LLP
`cpollack@pearlcohen.com
`gyonay@pearlcohen.com
`dLoewenstein@pearlcohen.com
`meadan@pearlcohen.com
`
`PATENT OWNER:
`
`Jeffrey N. Costakos
`Michelle A. Moran
`FOLEY & LARDNER LLP
`jcostakos@foley.com
`mmoran@foley.com