Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper No. 28
`Filed: March 15, 2017
`
`
`
`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.
`
`Case IPR2017-00790
`Patent 8,155,012 B2
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and ROBERT J.
`WEINSCHENK, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder to IPR2016-01389
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`571.272.7822
`
`
`
`
`Paper No. 28
`Filed: March 15, 2017
`
`
`
`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.
`
`Case IPR2017-00790
`Patent 8,155,012 B2
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and ROBERT J.
`WEINSCHENK, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder to IPR2016-01389
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`IPR2017-00790
`Patent 8,155,012
`
`I.
`
`INTRODUCTION
`
`
`
`
`
`
`
`Petitioners, Ruckus Wireless, Inc., Brocade Communication Systems, Inc.,
`
`and Netgear, Inc. (“Ruckus et al.”) filed a Petition (“Pet.”) on January 27, 2017
`
`(Paper 1) requesting inter partes review of claims 31, 35, 36, 40, 43, 52, 55, 56, 59,
`
`60, and 65 of U.S. Patent No. No. 8,115,012 (“the ’012 patent,” Ex. 1001). Pet. 1.
`
`Along with the Petition, Ruckus et al. filed a Motion for Joinder (Paper 3) with
`
`Case IPR2016-01389, Juniper Networks, Inc. v. ChriMar Systems, Inc., a pending
`
`inter partes review involving the ’012 patent. Paper 3, 1. Chrimar Systems, Inc. is
`
`Patent Owner in both cases.
`
`By a joint e-mail communication (by Ruckus et al. and Patent Owner in this
`
`proceeding and the parties in IPR2016-01389) with the Board on February 24,
`
`2017, Patent Owner waived its right to file a Preliminary Response in the instant
`
`case, IPR2017-00790. Ex. 3001. Patent Owner also does not oppose Ruckus et
`
`al.’s Motion for Joinder, provided that Ruckus et al. join via “an understudy role”
`
`in IPR2016-01389. See Paper 10 (Response to Motion to Joinder), 1. For the
`
`reasons described below, we institute an inter partes review of all the challenged
`
`claims and grant Petitioner’s Motion for Joinder.
`
`II. ANALYSIS
`
`An inter partes review may be joined with another inter partes review, subject
`
`to the provisions of 35 U.S.C. § 315(c), which governs joinder of inter partes review
`
`proceedings:
`
`(c) 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 313
`or the expiration of the time for filing such a response, determines
`warrants the institution of an inter partes review under section 314.
`
`
`2
`
`
`
`
`IPR2017-00790
`Patent 8,155,012
`
`
`
`
`
`As the moving party, Ruckus et al. bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should
`
`(1) set forth the reasons joinder is appropriate; (2) identify any new grounds of
`
`unpatentability asserted in the petition; and (3) explain what impact (if any) joinder
`
`would have on the trial schedule for the existing review. Kyocera Corp. v.
`
`Softview LLC, Case IPR2013-00004, slip. op. at 4 (PTAB April 24, 2013) (Paper
`
`15).
`
`Ruckus et al. filed its Motion for Joinder on January 27, 2017. Paper 3. The
`
`Board instituted inter partes review in IPR2016-01389 on January 25, 2017.
`
`IPR2016-01389, Paper 12. Accordingly, the filing date of the Motion for Joinder
`
`satisfies the joinder filing requirement, as set forth in 37 C.F.R. § 42.122. See id.
`
`(“Any request for joinder must be filed . . . no later than one month after the
`
`institution date of any inter partes review for which joinder is requested”). The
`
`Petition asserts the same grounds as those on which the Board instituted review in
`
`IPR2015-01389. Compare Pet. 26–59, with IPR2016-01389, slip. op. at 5 (PTAB
`
`January 25, 2017) (Paper 12) (“’1389 DI”); see also Paper 3, 5 (“The Petition
`
`asserts only grounds that the Board has already instituted in [IPR2016-01389].”)
`
`The Board instituted a trial in the IPR2016-01389 matter on the following
`
`grounds:
`
`Reference(s)
`
`Basis Claims challenged
`
`Hunter1 and Bulan2
`
`§ 103 31, 35, 36, 40, 43, 52, 55, 56, 59, 60
`and 65
`
`
`1 WO 96/23377, Richard K. Hunter et al. (Aug. 1, 1996).
`2 US 5,089,927, Sergio Bulan et al., (Feb. 18, 1992).
`
`3
`
`
`
`
`IPR2017-00790
`Patent 8,155,012
`Bloch,3 Huizinga,4 and
`IEEE 802.35
`
`’1389 DI 5.
`
`
`
`
`
`§ 103 31, 35, 36, 40, 43, 52, 55, 56, 59, 60
`and 65
`
`As noted above, Ruckus et al., in the e-mail noted above, agreed to take an
`
`understudy role to petitioner Juniper Networks, Inc. (“Juniper”) and agreed to
`
`adhere to the existing trial schedule in IPR2016-01389. Ex. 3001; see also Paper
`
`3, 4–7 (similar assurances). Ruckus et al. also demonstrates sufficiently that
`
`joinder will promote efficiency. See Paper 3, 2–5.
`
`In view of the following: 1) the challenges in the instant Petition are
`
`identical to the grounds instituted in IPR2016-01389; 2) joinder will not impact the
`
`existing trial schedule in IPR2016-01389; 3) joinder will promote efficiency; and
`
`4) all the parties agree that joinder is appropriate, we institute an inter partes
`
`review in this proceeding on the same grounds as those on which the Board
`
`instituted inter partes review in IPR2016-01389 and join Ruckus et al. to IPR2016-
`
`01389.
`
`Accordingly, Ruckus et al. shall adhere to the existing schedule of IPR2016-
`
`01389. Any future filings by Ruckus et al. in IPR2016-01389 shall be consolidated
`
`with the filings of Juniper. If, however, Ruckus et al. has a point of disagreement
`
`related to a consolidated filing, Ruckus et al. may request authorization from the
`
`Board to file an addendum of no more than five pages. If the Board authorizes
`
`Ruckus et al. to file such an addendum, Patent Owner may request authorization
`
`from the Board to file a response of no more than five pages to the addendum. The
`
`page limits and word counts, as set forth in 37 C.F.R. § 42.24, otherwise will apply
`
`to all consolidated filings.
`
`3
`
`
` US 4,173,714, Alan Bloch et al. (Nov. 6, 1979).
`4 US 4,046,972, Donald D. Huizinga et al. (Sept. 6, 1977).
`5 IEEE Standards 802.3-1993 and 802.3-1995 (Parts 1 and 2).
`
`4
`
`
`
`
`IPR2017-00790
`Patent 8,155,012
`
`
`
`
`
`Ruckus et al. is bound by any discovery agreements, including any
`
`deposition arrangements, between Patent Owner and Juniper in IPR2016-01389,
`
`and Ruckus et al. shall not seek any discovery beyond that sought by Juniper.
`
`Patent Owner shall not be required to provide any additional discovery or
`
`deposition time as a result of the joinder. Juniper in the joined proceeding shall
`
`designate attorney(s) to conduct the collective cross-examination of any witness
`
`produced by Patent Owner and the collective redirect examination of any other
`
`witness within the timeframes set forth in 37 C.F.R. § 42.53(c) or as otherwise
`
`agreed by Patent Owner and Juniper. No individual party will receive any
`
`additional cross-examination or redirect examination time. Moreover, if an oral
`
`hearing is requested and scheduled, Juniper in the joined proceeding shall
`
`designate attorney(s) to present a consolidated argument at the oral hearing.
`
`The Board expects Ruckus et al., Juniper, and Patent Owner to meet and
`
`confer regarding any disputes between them and to contact the Board only if such
`
`matters cannot be resolved.
`
`III. ORDER
`
`For the reasons given, it is
`
`ORDERED that Ruckus et al.’s Motion for Joinder is granted;
`
`
`
`FURTHER ORDERED that IPR2016-00790 is instituted and Ruckus et al.
`
`is joined with IPR2016-01389;
`
`FURTHER ORDERED that the grounds on which IPR2016-01389 were
`
`instituted remain unchanged and no other grounds are included in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Stipulated Schedule (Paper 21) and Order
`
`(Paper 22) in IPR2016-01389 shall govern the trial schedule of the joined
`
`proceeding;
`
`FURTHER ORDERED that, throughout the joined proceeding, Juniper shall
`
`5
`
`
`
`
`IPR2017-00790
`Patent 8,155,012
`
`
`
`
`
`file all papers as a single, consolidated filing;
`
`FURTHER ORDERED that Ruckus et al. is bound by any discovery
`
`agreements between Patent Owner and Juniper in IPR2016-01389 and that Ruckus
`
`et al. shall not seek any discovery beyond that sought by Juniper;
`
`FURTHER ORDERED that Juniper in the joined proceeding shall designate
`
`attorney(s) to conduct collective cross-examination, redirect examination, and any
`
`other discovery within the timeframes set forth by the rules, including 37 C.F.R.
`
`§ 42.53(c), or as the parties otherwise agree upon;
`
`FURTHER ORDERED that Juniper in the joined proceeding shall designate
`
`attorney(s) to present argument at the oral hearing, if requested and scheduled, in a
`
`consolidated argument;
`
`FURTHER ORDERED that IPR2017-00790 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceedings will be in
`
`IPR2016-01389;
`
`FURTHER ORDERED that a copy of this Decision will be entered into the
`
`record of IPR2016-01389; and
`
`FURTHER ORDERED that the case caption in IPR2016-01389 shall be
`
`changed to reflect joinder of the instant proceeding in accordance with the attached
`
`6
`
`
`example.
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`IPR2017-00790
`Patent 8,155,012
`
`
`
`For PETITIONER:
`
`Joseph Powers
`japowers@duanemorris.com
`
`Christopher Tyson
`cjtyson@duanemorris.com
`
`
`
`For PATENT OWNER:
`
`Frank Angileri
`fangileri@brookskushman.com
`
`Thomas Lewry
`tlewry@brookskushman.com
`
`Christopher Smith
`csmith@brookskushman.com
`
`Richard Hoffmann
`hoffmann@reising.com
`
`Marc Lorelli
`mlorelli@brookskushman.com
`
`
`
`
`
`IPR2017-00790
`Patent 8,155,012
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC.,
`RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION
`SYSTEMS, INC., and NETGEAR, INC,
`Petitioners,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-013896
`Patent 8,155,012 B2
`____________
`
`
`
`
`
`
`
`
`
`6 Ruckus Wireless, Inc., Brocade Communication Systems, Inc., and Netgear, Inc.
`(“Ruckus et al.”) filed a petition in (now terminated) IPR2017-00790, and Ruckus
`et al. has been joined to the instant proceeding.
`
`8
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
