`571-272-7822
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`
`
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`Paper 24
`Entered: March 16, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RUCKUS WIRELESS, INC., BROCADE COMMUNICATION
`SYSTEMS, INC., and NETGEAR, INC.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00720
`Patent 9,019,838 B2
`_______________
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`Grant of Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122(b)
`
`
`
`
`
`
`IPR2017-00720
`Patent 9,019,838 B2
`
`
`I.
`
`INTRODUCTION
`
`Ruckus Wireless, Inc., Brocade Communication Systems, Inc., and
`
`Netgear, Inc. (collectively, “Ruckus”) filed a Petition (Paper 1, “Pet.”)
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`requesting an inter partes review of claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55,
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`and 69 (“the challenged claims”) of U.S. Patent No. 9,019,838 B2 (Ex. 1001,
`
`“the ’838 patent”). Ruckus also filed a Motion for Joinder (Paper 3, “Mot.”)
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`requesting that it be joined to IPR2016-01397, Juniper Networks, Inc. v.
`
`Chrimar Systems, Inc., a pending inter partes review involving the ’838
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`patent. Mot. 1. Chrimar Systems, Inc. is the Patent Owner in both
`
`proceedings.
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`In a joint email from the parties in this proceeding and the parties in
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`IPR2016-01397, on February 24, 2017, Patent Owner waived its right to file
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`a preliminary response in this proceeding. Ex. 3001. Patent Owner also
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`indicates that it does not oppose Ruckus’s Motion for Joinder, provided that
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`Ruckus maintains an “understudy” role in IPR2016-01397. Paper 9 (“Resp.
`
`to Mot.”), 1. For the reasons discussed below, we institute an inter partes
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`review on all of the challenged claims in this proceeding, and we grant
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`Ruckus’s Motion for Joinder.
`
`II. ANALYSIS
`
`A party may be joined to an inter partes review under 35 U.S.C.
`
`§ 315(c). Section 315(c) states:
`
`(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 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.
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`2
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`IPR2017-00720
`Patent 9,019,838 B2
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`As the moving party, Ruckus bears the burden of proving that it is entitled to
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`the relief requested in the Motion for Joinder. 37 C.F.R. § 42.20(c).
`
`We instituted an inter partes review in IPR2016-01397 on January 4,
`
`2017. Juniper Networks, Inc. v. Chrimar Sys. Inc., Case IPR2016-01397,
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`slip op. at 17–18 (PTAB Jan. 4, 2017) (Paper 8) (“Dec. on Inst.”). Ruckus
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`filed its Motion for Joinder in this case on January 18, 2017. Mot. 7. Thus,
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`Ruckus filed the Motion for Joinder within one month of institution in
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`IPR2016-01397, as required by 37 C.F.R. § 42.122(b).
`
`We instituted an inter partes review in IPR2016-01397 on the
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`following grounds of unpatentability:
`
`Claims
`1, 2, 7, 26, 29, 38, 39,
`40, 47, 55, and 69
`1, 2, 7, 26, 29, 38, 39,
`40, 47, 55, and 69
`
`Basis
`35 U.S.C. § 103(a)
`
`References
`Hunter1 and Bulan2
`
`35 U.S.C. § 103(a)
`
`Bloch,3 Huizinga,4 IEEE
`802.3-1993,5 and IEEE
`802.3-19956
`
`Dec. on Inst. 17–18. The Petition in this case asserts the same grounds of
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`unpatentability as IPR2016-01397. Pet. 7; Mot. 5 (“The Petition asserts only
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`grounds that the Board has already instituted in [IPR2016-01397].”); Dec.
`
`on Inst. 17–18. Further, Ruckus agrees to take an understudy role to Juniper
`
`Networks, Inc. (“Juniper”) in IPR2016-01397, and Ruckus agrees to adhere
`
`
`1 PCT Publication No. WO 96/23377 (Aug. 1, 1996). Ex. 1003.
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`2 U.S. Patent No. 5,089,927 (Feb. 18, 1992). Ex. 1004.
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`3 U.S. Patent No. 4,173,714 (Nov. 6, 1979). Ex. 1005.
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`4 U.S. Patent No. 4,046,972 (Sept. 6, 1977). Ex. 1009.
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`5 IEEE Standard 802.3-1993 (1993). Ex. 1006.
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`6 IEEE Standard 802.3u-1995 (1995). Ex. 1007; Ex. 1008.
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`3
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`IPR2017-00720
`Patent 9,019,838 B2
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`to the existing trial schedule in IPR2016-01397. Mot. 5–7; Ex. 3001.
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`Ruckus also shows that joining it to IPR2016-01397 promotes efficiency.
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`Mot. 4–5.
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`In sum, we find that 1) the asserted grounds of unpatentability in the
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`Petition are identical to the grounds of unpatentability in IPR2016-01397; 2)
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`joinder will not impact the existing trial schedule in IPR2016-01397; 3)
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`joinder will promote efficiency; and 4) Juniper and Patent Owner do not
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`oppose joinder. For the foregoing reasons, we institute an inter partes
`
`review in this proceeding on the same grounds that we instituted the inter
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`partes review in IPR2016-01397, and we join Ruckus to IPR2016-01397.
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`As a result of joining Ruckus to IPR2016-01397, Ruckus shall adhere
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`to the existing trial schedule in IPR2016-01397. Any future filings by
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`Ruckus in IPR2016-01397 shall be consolidated with the filings of Juniper.
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`If, however, Ruckus has a point of disagreement related to a consolidated
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`filing, Ruckus may request authorization from the Board to file an
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`addendum of no more than five pages. If the Board authorizes Ruckus to
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`file such an addendum, Patent Owner may request authorization from the
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`Board to file a response of no more than five pages to the addendum. The
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`page limits and word counts set forth in 37 C.F.R. § 42.24 otherwise apply
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`to all consolidated filings.
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`Ruckus is bound by any discovery agreements, including any
`
`deposition arrangements, between Patent Owner and Juniper in IPR2016-
`
`01397, and Ruckus shall not seek any discovery beyond that sought by
`
`Juniper in IPR2016-01397. Patent Owner shall not be required to provide
`
`any additional discovery or deposition time as a result of the joinder. In
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`IPR2016-01397, Juniper shall designate attorney(s) to conduct the collective
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`4
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`IPR2017-00720
`Patent 9,019,838 B2
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`cross-examination of any witness produced by Patent Owner and the
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`collective redirect examination of any other witness within the time frames
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`set forth in 37 C.F.R. § 42.53(c) or as otherwise agreed by Patent Owner
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`and Juniper. Moreover, if an oral hearing is requested and scheduled in
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`IPR2016-01397, Juniper shall designate attorney(s) to present a consolidated
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`argument at the oral hearing.
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`The Board expects Ruckus, Juniper, and Patent Owner to meet and
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`confer regarding any disputes between them and to contact the Board only if
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`such matters cannot be resolved.
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`III. ORDER
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`In consideration of the foregoing, it is hereby
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`ORDERED that an inter partes review is instituted on all of the
`
`challenged claims in IPR2017-00720;
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`FURTHER ORDERED that Ruckus’s Motion for Joinder is granted,
`
`and Ruckus is joined to IPR2016-01397;
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`FURTHER ORDERED that the grounds on which IPR2016-01397
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`were instituted remain unchanged and no other grounds are included in that
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`proceeding;
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`FURTHER ORDERED that the Stipulated Schedule (Paper 16) and
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`Order (Paper 18) in IPR2016-01397 shall govern the trial schedule of that
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`proceeding;
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`FURTHER ORDERED that, throughout the proceeding in IPR2016-
`
`01397, Juniper shall file all papers as a single, consolidated filing;
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`FURTHER ORDERED that Ruckus is bound by any discovery
`
`agreements between Patent Owner and Juniper in IPR2016-01397, and that
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`Ruckus shall not seek any discovery beyond that sought by Juniper in
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`5
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`
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`IPR2017-00720
`Patent 9,019,838 B2
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`IPR2016-01397;
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`FURTHER ORDERED that, in IPR2016-01397, Juniper shall
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`designate attorney(s) to conduct collective cross-examination, redirect
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`examination, and any other discovery within the time frames set forth by the
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`rules, including 37 C.F.R. § 42.53(c), or as the parties otherwise agree upon;
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`FURTHER ORDERED that, in IPR2016-01397, Juniper shall
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`designate attorney(s) to present argument at the oral hearing, if requested
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`and scheduled, in a consolidated argument;
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`FURTHER ORDERED that IPR2017-00720 is terminated under 37
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`C.F.R. § 42.72, and all further filings will be made in IPR2016-01397;
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2016-01397; and
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`FURTHER ORDERED that the case caption in IPR2016-01397 shall
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`be changed to reflect the joinder of Ruckus in accordance with the attached
`
`example.
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`6
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`IPR2017-00720
`Patent 9,019,838 B2
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`
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`Example Case Caption
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`
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`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.,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-013971
`Patent 9,019,838 B2
`____________
`
`
`
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc., and
`Netgear, Inc. (“Ruckus et al.”) filed a petition in (now terminated) IPR2017-
`00720, and Ruckus et al. has been joined to the instant proceeding.
`
`7
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`
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`IPR2017-00720
`Patent 9,019,838 B2
`
`PETITIONER:
`
`Joseph A. Powers
`Christopher J. Tyson
`Matthew S. Yungwirth
`DUANE MORRIS LLP
`japowers@duanemorris.com
`cjtyson@duanemorris.com
`
`
`
`PATENT OWNER:
`
`Frank A. Angileri
`Thomas A. Lewry
`Marc Lorelli
`Christopher C. Smith
`BROOKS KUSHMAN P.C.
`CHRMC0110IPR2@brookskushman.com
`
`
`Richard W. Hoffmann
`REISING ETHINGTON P.C.
`hoffmann@reising.com
`
`
`
`8
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