`571.272.7822
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`Paper No. 25
`Filed: March 15, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUCKUS WIRELESS, INC., BROCADE COMMUNICATION
`SYSTEMS, INC. and NETGEAR, INC.,
`Petitioners,
`
`
`
`
`
`
`
`v.
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`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`Case IPR2017-00718
`Patent 8,942,107 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 IPR2016-01391
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`IPR2017-00718
`Patent 8,942,107
`
`I.
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`INTRODUCTION
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`Petitioners, Ruckus Wireless, Inc., Brocade Communication Systems, Inc.,
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`and Netgear, Inc. (“Ruckus et al.”) filed a Petition (“Pet.”) on January 18, 2017
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`(Paper 1) requesting inter partes review of claims 1, 5, 31, 43, 70, 72, 74, 75, 83,
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`103, 104, 111, 123, and 125 of U.S. Patent No. 8,942,107 (“the ’170 patent,” Ex.
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`1001). Pet. 1. Along with the Petition, Petitioner filed a Motion for Joinder (Paper
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`3) with Case IPR2016-01391, Juniper Networks, Inc. v. ChriMar Systems, Inc., a
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`pending inter partes review involving the ’170 patent. Paper 3, 1. Chrimar
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`Systems, Inc. is Patent Owner in both cases.
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`By a joint e-mail communication (by Ruckus et al. and Patent Owner in this
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`proceeding and the parties in IPR2016-01391) with the Board on February 24,
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`2017, Patent Owner waived its right to file a Preliminary Response in the instant
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`case, IPR2017-00718. Ex. 3001. Patent Owner also does not oppose Petitioner’s
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`Motion for Joinder, provided that Ruckus et al. join via an “understudy role” in
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`IPR2016-01391. See Paper 9 (Response to Motion to Joinder), 1. For the reasons
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`described below, we institute an inter partes review of all the challenged claims
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`and grant Petitioner’s Motion for Joinder.
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`II. ANALYSIS
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`An inter partes review may be joined with another inter partes review, subject
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`to the provisions of 35 U.S.C. § 315(c), which governs joinder of inter partes review
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`proceedings:
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`(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.
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`2
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`IPR2017-00718
`Patent 8,942,107
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`As the moving party, Ruckus et al. bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should
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`(1) set forth the reasons joinder is appropriate; (2) identify any new grounds of
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`unpatentability asserted in the petition; and (3) explain what impact (if any) joinder
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`would have on the trial schedule for the existing review. Kyocera Corp. v.
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`Softview LLC, Case IPR2013-00004, slip. op. at 3–4 (PTAB April 24, 2013) (Paper
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`15).
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`Ruckus et al. filed its Motion for Joinder on January 18, 2017. Paper 3. The
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`Board instituted inter partes review in IPR2016-01391 on December 22, 2016.
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`IPR2016-01391, Paper 9. Accordingly, the filing date of the Motion for Joinder
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`satisfies the joinder filing requirement, as set forth in 37 C.F.R. § 42.122. See id.
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`(“Any request for joinder must be filed . . . no later than one month after the
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`institution date of any inter partes review for which joinder is requested”). The
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`Petition asserts the same grounds as those on which the Board instituted review in
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`IPR2016-01391. Compare Pet. 6–66, with IPR2016-01391, slip. op. at 6 (PTAB
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`December 22, 2016) (Paper 9) (“’1391 DI”); see also Paper 3, 5 (“The Petition
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`asserts only grounds that the Board has already instituted in [IPR2016-01391].”)
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`The Board instituted a trial in the IPR2016-01391 matter on the following
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`grounds:
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`Reference(s)
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`Basis Claims challenged
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`Hunter1 and Bulan2
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`§ 103 1, 5, 31, 43, 70, 72, 74, 75, 83, 103,
`104, 111, 123, and 125
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`1 WO 96/23377, Richard K. Hunter et al. (Aug. 1, 1996).
`2 US 5,089,927, Sergio Bulan et al., (Feb. 18, 1992).
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`3
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`IPR2017-00718
`Patent 8,942,107
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`Reference(s)
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`Basis Claims challenged
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`Bloch,3 Huizinga,4 and
`IEEE 802.35
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`§ 103
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`1, 5, 31, 43, 70, 72, 74, 75, 83, 103,
`104, 111, 123, and 125
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`’1391 DI, 6, 40–41.
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`As noted above, Ruckus et al., in the e-mail noted above, agreed to take an
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`understudy role to petitioner in the ’1391 IPR, Juniper Networks, Inc. (“Juniper”),
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`and agreed to adhere to the existing trial schedule in IPR2016-01391. Ex. 3001;
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`see also Paper 3, 4–7 (similar assurances). Ruckus et al. also demonstrates
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`sufficiently that joinder will promote efficiency. See Paper 3, 2–5.
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`In view of the following: 1) the challenges in the instant Petition are
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`identical to the grounds instituted in IPR2016-01391; 2) joinder will not impact the
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`existing trial schedule in IPR2016-01391; 3) joinder will promote efficiency; and
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`4) all the parties agree that joinder is appropriate, we institute an inter partes
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`review in this proceeding on the same grounds as those on which the Board
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`instituted inter partes review in IPR2016-01391 and join this proceeding to
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`IPR2016-01391.
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`Accordingly, Ruckus et al. shall adhere to the existing schedule of IPR2016-
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`01391. Any future filings by Ruckus et al. in IPR2016-01391 shall be consolidated
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`with the filings of Juniper. If, however, Ruckus et al. has a point of disagreement
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`related to a consolidated filing, Ruckus et al. may request authorization from the
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`Board to file an addendum of no more than five pages. If the Board authorizes
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`Ruckus et al. to file such an addendum, Patent Owner may request authorization
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`from the Board to file a response of no more than five pages to the addendum. The
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`3
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` 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).
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`4
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`IPR2017-00718
`Patent 8,942,107
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`page limits and word counts as set forth in 37 C.F.R. § 42.24 otherwise will apply
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`to all consolidated filings.
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`Ruckus et al. is bound by any discovery agreements, including deposition
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`arrangements, between Patent Owner and Juniper in IPR2016-01391, and Ruckus
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`et al. shall not seek any discovery beyond that sought by Juniper. Patent Owner
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`shall not be required to provide any additional discovery or deposition time as a
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`result of the joinder. Juniper shall designate attorneys to conduct the cross-
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`examination of any witness produced by Patent Owner and the redirect
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`examination of any other witness, within the timeframes set forth in 37 C.F.R.
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`§ 42.53(c) or as otherwise agreed by Patent Owner and Juniper. No individual
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`party will receive any additional cross-examination or redirect examination time.
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`Moreover, if an oral hearing is requested and scheduled, Juniper shall designate
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`attorney(s) to present a consolidated argument at the oral hearing.
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`The Board expects Ruckus et al., Juniper, and Patent Owner to meet and
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`confer regarding any disputes between them and to contact the Board only if such
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`matters cannot be resolved.
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`III. ORDER
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`For the reasons given, it is
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`ORDERED that Petitioner’s Motion for Joinder is granted;
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`FURTHER ORDERED that IPR2017-00718 is instituted and Ruckus et al.
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`are joined with IPR2016-01391;
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`FURTHER ORDERED that the grounds on which IPR2016-01391 were
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`instituted remain unchanged and no other grounds are included in the joined
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`proceeding;
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`FURTHER ORDERED that the Stipulated Schedule (Paper 17) and Order
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`(Paper 18) in IPR2016-01391 shall govern the schedule of the joined proceeding;
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`FURTHER ORDERED that, throughout the joined proceeding, Juniper shall
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`5
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`IPR2017-00718
`Patent 8,942,107
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`file all papers as a single, consolidated filing;
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`FURTHER ORDERED that Ruckus et al. is bound by any discovery
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`agreements between Patent Owner and Juniper in IPR2016-01391 and that Ruckus
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`et al. shall not seek any discovery beyond that sought by Juniper;
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`FURTHER ORDERED that Juniper in the joined proceeding shall designate
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`attorney(s) to conduct the cross-examination, redirect, and any other discovery;
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`within the timeframes set forth by the rules in the joined proceeding, including 37
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`C.F.R. § 42.53(c), or as the parties otherwise agree upon;
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`FURTHER ORDERED that Juniper in the joined proceeding shall designate
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`attorney(s) to present argument at the oral hearing in the joined proceeding, if
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`requested and scheduled, in a consolidated argument;
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`FURTHER ORDERED that IPR2017-00718 is terminated under
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`37 C.F.R. § 42.72 and all further filings in the joined proceedings will be in
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`IPR2016-01391;
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`FURTHER ORDERED that a copy of this Decision will be entered into the
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`record of IPR2016-01391; and
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`FURTHER ORDERED that the case caption in IPR2016-01391 shall be
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`changed to reflect joinder of this proceeding in accordance with the attached
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`example.
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`6
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`7
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`IPR2017-00718
`Patent 8,942,107
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`For PETITIONER:
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`Joseph Powers
`Christopher Tyson
`Duane Morris LLP
`japowers@duanemorris.com
`cjtyson@duanemorris.com
`
`Nima Hefazi
`IRELL & MANELLA, LLP
`nhefazi@irell.com
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`
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`For PATENT OWNER:
`
`Frank Angileri
`Thomas Lewry
`Christopher Smith
`Marc Lorelli
`BROOKS KUSHMAN P.C
`fangileri@brookskushman.com
`tlewry@brookskushman.com
`csmith@brookskushman.com
`mlorelli@brookskushman.com
`
`Richard Hoffmann
`REISING ETHINGTON P.C.
`hoffmann@reising.com
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`IPR2017-00718
`Patent 8,942,107
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`_____________
`
`
`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 IPR2016-013916
`Patent 8,942,107 B2
`____________
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`6 Ruckus Wireless, Inc., Brocade Communication Systems, Inc., and Netgear, Inc.
`filed a petition in (now terminated) IPR2017-00718, who have been joined to the
`instant proceeding.
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`8
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