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
`U.S. Patent No. 7,835,430
`Filing Date: June 3, 2009
`Issue Date: November 16, 2010
`Inter Partes Review No. 2016-____
`
`Title: Multicarrier Modulation Messaging for Frequency Domain Received Idle
`Channel Noise Information
`
`
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`
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`MOTION FOR JOINDER
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`
`
`
`
`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
`U.S. Patent No. 7,835,430
`Filing Date: June 3, 2009
`Issue Date: November 16, 2010
`Inter Partes Review No. 2016-____
`
`Title: Multicarrier Modulation Messaging for Frequency Domain Received Idle
`Channel Noise Information
`
`
`
`
`
`MOTION FOR JOINDER
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`I.
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`INTRODUCTION
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`Comcast Cable Communications, LLC (“Comcast”); Cox Communications,
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`Inc. (“Cox”); Time Warner Cable Enterprises LLC (“TWC”); Verizon Services
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`Corp. (“Verizon”) and ARRIS Group, Inc. (“ARRIS”) (collectively “Petitioner”)
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`submit concurrently with this motion a petition for inter partes review of U.S. Patent
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`No. 7,835,430 (“the ‘430 patent”) (“Petition”) based on the identical grounds that
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`form the basis for the pending inter partes review initiated by Cisco Systems, Inc.
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`concerning the same patent, Case No. IPR2016-01006 (the “Cisco IPR”).
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`Petitioner respectfully requests that the Petition be instituted and moves that
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`the Petition be joined with the Cisco IPR pursuant to 35 U.S.C. § 315(c) and
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`37 C.F.R. §§ 42.22 and 42.122(b). Petitioner merely requests an opportunity to join
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`with the Cisco IPR as an “understudy” to Cisco, only assuming an active role in the
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`event Cisco settles with Patent Owner TQ Delta, LLC (“TQ Delta”). Petitioner does
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`not seek to alter the grounds upon which the Board has already instituted the Cisco
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`IPR, and joinder will have no impact on the IPR’s existing schedule. Petitioner has
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`conferred with counsel for Cisco and DISH, and neither oppose this motion. This
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`motion is timely as it was filed within one month of the institution of IPR2016-
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`01006. 35 U.S.C. § 21(b); 37 C.F.R. § 42.122(b).
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS
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`TQ Delta, the owner of the ‘430 patent, sued six companies, including the
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`Comcast, Cox, TWC, and Verizon Petitioners, in the District of Delaware in July
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`2015 for infringement of U.S. Pat. Nos. 6,961,369, 7,835,430, 8,238,412, 8,432,956,
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`8,611,404, 8,718,158, 9,014,243, and 9,094,268 (collectively, the “Asserted
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`Patents.”). In addition, Products made by ARRIS are accused of infringement in
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`these litigations.
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` The litigations are TQ Delta LLC v. Comcast Cable
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`Communications, LLC, No. 1-15-cv-00611 (D. Del. 2015); TQ Delta LLC v.
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`CoxCom, LLC et al., No. 1-15-cv- 00612 (D. Del. 2015); TQ Delta LLC v. DIRECTV
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`et al., No. 1-15-cv-00613 (D. Del. 2015); TQ Delta LLC v. DISH Network
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`Corporation et al., No. 1-15-cv-00614 (D. Del. 2015); TQ Delta LLC v. Time
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`Warner Cable Inc., et al., No. 1-15-cv-00615 (D. Del. 2015); and TQ Delta LLC v.
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`Verizon Communications, Inc. et al., Inc., No. 1-15-cv-00616 (D. Del. 2015). TQ
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`Delta subsequently voluntarily dismissed the ‘369 and ‘956 patents from these
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`litigations.
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`In May 2016, Cisco Systems, Inc. (“Cisco”) filed six petitions for inter partes
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`review against five of the Asserted Patents. See IPR Case Nos. IPR2016-01006
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`(‘430 patent), -01007 (‘956 patent), -01008 (‘412 patent), -01009 (‘412 patent),
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`-01020 (‘243 patent) and -01021 (‘158 patent). The Board instituted each of these
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`IPRs on November 4, 2016. Id. In addition to this motion to join IRP2016-01006,
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`2
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`Petitioner is filing related motions to join IPR Case Nos. IPR2016-01008, -01020
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`and -01021.
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`On November 11, 2016, DISH Network L.L.C. (“DISH”) filed petitions for
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`IPRs and motions to join the same set of four Cisco IPRs. See DISH IPR Case Nos.
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`IPR2017-00251 (‘430 patent), -00253 (‘412 patent), -00254 (‘243 patent), -00255
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`(‘158 patent). For simplicity, this motion for joinder is substantially identical to
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`DISH’s pending motions for joinder, in which DISH likewise agrees to take on an
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`“understudy” role. See, e.g., IPR2017-00251, Paper 2, at 5 (citing IPR2013-00495,
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`Paper 13 (Sept. 16, 2013)).
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`Separately, ARRIS is filing a motion to join a fifth instituted IPR filed by
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`Cisco, IPR Case No. IPR2016-01007 (‘956 patent). An affiliate of ARRIS, 2Wire,
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`Inc., is accused of infringing the ‘956 patent in an earlier litigation, TQ Delta LLC
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`v. 2Wire, Inc. No. 1:13-cv-01835 (D. Del. 2013).
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`Several other IPRs have been filed against Asserted Patents and are awaiting
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`institution. These include IPR2016-01160 (‘404 patent), filed by the ARRIS on June
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`6, 2016, IPR2016-01466 (‘404 patent), filed by Cisco on July 20, 2016, IPR2016-
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`01469 (‘268 patent) and -01470 (‘404 patent), filed by DISH Network L.L.C. on
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`July 21, 2016, and IPR2016-01760 (‘268 patent) filed by Cisco on September 8,
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`2016.
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`3
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`Finally, several other IPRs have been filed on the asserted patents but were
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`denied institution. On July 17, 2015, ARRIS filed IPR2016-00428 (‘430 patent),
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`-00429 (‘956 patent), and -00430 (‘412 patent.) On June 22, 2016, the Board denied
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`institution of these IPRs.
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`III. LEGAL STANDARD AND APPLICABLE RULES
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`Joinder is governed by 35 U.S.C. § 315(c), which reads as follows:
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`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.
`A motion for joinder should “(1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
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`(3) explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified.” See Decision on Joinder, IPR2013-00385 (Paper No. 17, July 29, 2013);
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`see also Order Authorizing Joinder, IPR2013-00004 (Paper No. 15, April 24, 2013.)
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`Petitioner that submits the factors outlined below support granting of the present
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`4
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`Motion for Joinder.
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`IV. PETITIONER MEETS THE REQUIREMENTS FOR MOTION FOR
`JOINDER
`Petitioner submits that (1) joinder is appropriate because it will promote
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`efficient determination of the validity of the ‘430 patent without prejudice to Cisco;
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`(2) Petitioner’s petition raises the same grounds for unpatentability as does Cisco’s
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`petition; (3) joinder would not affect the pending schedule in the Cisco IPR nor
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`would it increase the complexity of that proceeding; and (4) Petitioner is willing to
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`accept an understudy role in the Cisco IPR to minimize burden and schedule impact.
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`Absent joinder, Petitioner could be prejudiced if the Cisco IPR is terminated before
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`the Board issues a final written decision. Petitioner could have to litigate the same
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`positions in the Petition before the District Court under a higher burden of proof,
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`wasting resources and losing efficiency. Accordingly, joinder should be granted.
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`A.
`
`Joinder Will Promote the Efficient Determination of the ‘430
`Patent’s Validity and Will Not Prejudice Cisco or TQ Delta
`Granting joinder and allowing Petitioner to assume an understudy role will
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`not prejudice Cisco. The Petition does not raise any issues that are not already before
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`the Board in the Cisco IPR. Joinder thus would not affect the timing of the Cisco
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`IPR or content of TQ Delta’s responses. The Board has granted motions for joinder
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`in similar circumstances. See, e.g., Decision on Joinder, IPR2014-00743 (Paper 10,
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`June 18, 2014). Petitioner has notified counsel for Cisco and DISH of this motion,
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`and neither oppose joinder.
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`5
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`Moreover, the Board’s final written decision on the ‘430 patent will minimize
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`issues in the underlying litigation and could potentially resolve the underlying
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`litigation altogether. This would promote the efficient determination of the ‘430
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`patent’s validity. If the Board allows Petitioner to join the Cisco IPR and upholds
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`the ‘430 patent’s validity, Petitioner will be estopped from further challenging the
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`validity of the ‘430 patent on the grounds in the Petition. See 35 U.S.C. § 315(e)(1).
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`Joinder is appropriate here to promote judicial efficiency and avoid unnecessary
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`expense.
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`B.
`Petitioner’s Petition Raises the Same Grounds as the Cisco IPR
`The Petition asserts only grounds that the Board has already instituted in the
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`Cisco IPR. There are no new arguments for the Board to consider. Likewise, the
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`Petition relies on the same exhibits and expert declaration as the Cisco IPR.
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`C.
`Joinder Will Not Affect the Schedule of the Cisco IPR
`Allowing Petitioner to join the Cisco IPR will not impact the Board’s ability
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`to complete its review within the statutory period and according to the schedule
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`already set in the Cisco IPR. Section 316(a)(11) requires that IPR proceedings be
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`completed and the Board’s final decision issued within one year of the institution of
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`the IPR. See also 37 C.F.R. § 42.100(c). Petitioner agrees to an understudy role and
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`does not raise any issues that are not already before the Board. The invalidity
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`grounds in the Petition are the same as those the Board already instituted in the Cisco
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`6
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`IPR. Given that Petitioner will assume an understudy role, its addition to this IPR
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`proceeding will not introduce any additional arguments, briefing, or need for
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`discovery. See Decision on Joinder, IPR2013-00495 (Paper 13, Sept. 16, 2013).
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`Petitioner submits that TQ Delta does not need to file a Patent Owner’s
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`Preliminary Response, and requests that the Board proceed without one. This is
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`consistent with the Board’s Order in IPR2013-00256 (Paper 8, June 13, 2013), which
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`allowed the Patent Owner to file a preliminary response addressing only those points
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`raised in the new petition that were different from those in the granted petition. Here,
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`because the invalidity grounds in the Petition are identical to those instituted in the
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`Cisco IPR, there are no new arguments for TQ Delta to address. TQ Delta already
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`addressed the invalidity grounds in the Petition in its Preliminary Response to the
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`Cisco IPR. Alternatively, the Board could add an additional deadline for TQ Delta
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`to respond to this Petition. This deadline would not impact other deadlines in the
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`schedule.
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`D.
`Petitioner Agrees to Assume a Limited Role
`As long as Cisco remains in the joined IPR, Petitioner agrees to assume a
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`limited “understudy” role. Petitioner would only take on an active role if Cisco were
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`no longer a party to the IPR. Petitioner presents no new grounds for invalidity and
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`its presence in the proceedings will not introduce any additional arguments, briefing
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`or need for discovery.
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`7
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`V.
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`CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of the ‘430 patent be granted and that the proceedings be joined
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`Respectfully submitted,
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`By: /John M. Baird/
`
`John M. Baird
`
`Reg. No. 57,585
`Counsel for Petitioner
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`with IPR2016-01006.
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`Date: December 5, 2016
`
`
`Duane Morris LLP
`505 9th Street, N.W., Suite 1000
`Washington, DC 20004
`Tel: (202) 776-7819; Fax: (202) 379-
`9850
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`8
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
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`the attached Motion for Joinder is being served via Federal Express on the 5th day
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`of December, 2016, the same day as the filing of the above-identified document in
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`the United States Patent and Trademark Office/Patent Trial and Appeal Board,
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`upon the Patent Owner by serving the correspondence address of record with the
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`USPTO as follows:
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`Jason H. Vick
`Sabrina Stavish
`Sheridan Ross PC
`1560 Broadway Suite 1200
`Denver, CO 80202
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`and upon counsel of record for the Patent Owner in the litigation pending before
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`the U.S. District Court for the District of Delaware entitled TQ Delta LLC v.
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`Comcast Cable Communications LLC, Case No. 1:15-cv-00611 as follows:
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`Peter J. McAndrews
`McAndrews Held & Malloy
`500 West Madison Street 34th Floor
`Chicago, IL 60661
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`Dated: December 5, 2016
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`/John M. Baird/
`John M. Baird (Reg. No. 57,585)
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`9
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