Trials@uspto.gov
`571-272-7822
`
` Paper 9
`
`Entered: April 4, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00422
`Patent 8,432,956 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and TREVOR
`M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`571-272-7822
`
` Paper 9
`
`Entered: April 4, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00422
`Patent 8,432,956 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and TREVOR
`M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`INTRODUCTION
`I.
`ARRIS Group, Inc. (“Petitioner”), filed a Petition (Paper 1, “Pet.”) for
`inter partes review of claims 1–10 of U.S. Patent No. 8,432,956 B2
`(Ex. 1001, “the ’956 patent”). Concurrently with its Petition, Petitioner filed
`a Motion for Joinder with Cisco Systems, Inc. v. TQ Delta, LLC, Case
`IPR2016-01007 (“the Cisco IPR”). Paper 3 (“Mot.”). Petitioner represents
`that the petitioner in the Cisco IPR, Cisco Systems, Inc. (“Cisco”), does not
`oppose the Motion for Joinder. Mot. 1. TQ Delta, LLC (“Patent Owner”)
`submits that it does not oppose joinder and waives its Preliminary Response.
`Paper 8.
`After considering the Petition, Motion for Joinder, and Patent
`Owner’s statement, we institute inter partes review of claims 1–10 of the
`’956 patent and grant Petitioner’s Motion for Joinder.
`
`A. Related Proceedings
`Petitioner identifies several pending matters related to the ’956 patent,
`including TQ Delta LLC v. Comcast Cable Commc’ns LLC, Case No. 1:15-
`cv-00611-RGA (D. Del); TQ Delta LLC v. CoxCom LLC et al., Case No.
`1:15-cv-00612-RGA (D. Del.); TQ Delta LLC v. DirecTV LLC, Case No.
`1:15-cv-00613-RGA (D. Del.); TQ Delta LLC v. DISH Network Corp. et al.,
`Case No. 1:15-cv-00614-RGA (D. Del.); TQ Delta LLC v. Time Warner
`Cable Inc., et al., Case No. 1:15-cv-00615-RGA (D. Del.); TQ Delta LLC v.
`Verizon Servs. Corp., Case No. 1:15-cv-00616-RGA (D. Del.); TQ Delta
`LLC v. 2Wire, Inc., Case No. 13-cv-1835-RGA (D. Del.); TQ Delta LLC v.
`Zhone Techs., Inc., Case No. 13-cv-1836-RGA (D. Del.); TQ Delta LLC v.
`ZyXEL Commc’ns, Inc. and ZyXEL Commc’ns Corp., Case No. 13-cv-
`02013-RGA (D. Del.); TQ Delta LLC v. ADTRAN, Inc., Case No. 1:14-cv-
`
`2
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`00954-RGA (D. Del.); ADTRAN, Inc. v. TQ Delta LLC, 15-cv-00121-RGA
`(D. Del.); Arris Group, Inc. v. TQ Delta, LLC, IPR2016-00428; Arris
`Group, Inc. v. TQ Delta, LLC, IPR2016-00429; and Arris Group, Inc. v. TQ
`Delta, LLC, IPR2016-00430. Pet. 1–2; Mot. 2–3; Paper 6, 2–5.
`
`B. The Cisco IPR
`In the Cisco IPR, we instituted inter partes review on the grounds that
`claims 1–10 of the ’956 patent are unpatentable under 35 U.S.C. § 103(a)
`over Milbrandt,1 Hwang,2 and ANSI T1.413.3 Cisco Systems, Inc. v. TQ
`Delta, LLC, Case IPR2016-01007, slip op. at 23 (PTAB Nov. 4, 2016)
`(Paper 8) (“Cisco Dec.”).
`
`INSTITUTION OF INTER PARTES REVIEW
`II.
`The Petition in this proceeding asserts the same ground of
`unpatentability as the one on which we instituted review in the Cisco IPR.
`Compare Pet. 8–51 with Cisco Dec. 23. Indeed, Petitioner contends that the
`Petition asserts the lone ground that the Board instituted in the Cisco IPR,
`there are no new arguments for the Board to consider, and the Petitioner
`relies on the same exhibits and expert declaration as in the Cisco IPR.
`Mot. 6.
`
`
`1 U.S. Patent No. 6,636,603 B1; issued Oct. 21, 2003 (Ex. 1011)
`(“Milbrandt”).
`2 U.S. Patent No. 6,590,893 B1; issued July 8, 2003 (Ex. 1013) (“Hwang”).
`3 AMERICAN NATIONAL STANDARDS INSTITUTE, for Telecommunications –
`Network and Customer Installation Interfaces – Asymmetric Digital
`Subscriber Line (ADSL) Metallic Interface, 1–186 (1995) (ANSI T1.413-
`1995) (Ex. 1014) (“ANSI T1.413”).
`
`3
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`For the same reasons set forth in our institution decision in the Cisco
`IPR, we determine that the information presented in the Petition shows a
`reasonable likelihood that Petitioner would prevail in showing that claims 1–
`10 of the ’956 patent are unpatentable under 35 U.S.C. § 103(a) over
`Milbrandt, Hwang, and ANSI T1.413. Cisco Dec. 9–22. Accordingly, we
`institute an inter partes review on the same ground as the one on which we
`instituted review in the Cisco IPR.
`
`III. GRANT OF MOTION FOR JOINDER
` The Petition and Motion for Joinder in this proceeding were
`accorded a filing date of December 5, 2016.4 See Paper 5, 1. Thus,
`Petitioner’s Motion for Joinder is timely because joinder was requested no
`later than one month after the institution date of the Cisco IPR, i.e.,
`November 4, 2016.5 See 37 C.F.R. § 42.122(b).
`The statutory provision governing joinder in inter partes review
`proceedings, 35 U.S.C. § 315(c), states:
`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.
`
`
`4 The “December 5, 2017” date in the Notice of Filing Date Accorded to
`Petition and Time for Filing Patent Owner Preliminary Response appears to
`be a typo.
`5 Because December 4, 2016 fell on a Sunday, the one-month date extended
`to the next business day, December 5, 2016. See 37 C.F.R. § 1.7.
`
`4
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition;
`(3) explain what impact (if any) joinder would have on the trial schedule for
`the existing review; and (4) address specifically how briefing and discovery
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`As noted above, the Petition in this case asserts the same
`unpatentability ground on which we instituted review in the Cisco IPR. See
`Mot. 6. Petitioner also relies on the same prior art analysis and expert
`testimony submitted by the Petitioner in the Cisco IPR. See id. Indeed, the
`Petition in the present case is nearly identical to the petition filed in the
`Cisco IPR. See id. Thus, this inter partes review does not present any
`ground or matter not already at issue in the Cisco IPR.
`If joinder is granted, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of Petitioner in
`IPR2016-01007 as a party. Id. at 7. Petitioner agrees to “assume a limited
`‘understudy’ role” and “would only take on an active role if Cisco were no
`longer a party to the IPR.” Id. Petitioner further represents that it “presents
`no new grounds for invalidity and its presence in the proceedings will not
`introduce any additional arguments, briefing or need for discovery.” Id.
`Because Petitioner expects to participate only in a limited capacity,
`Petitioner submits that joinder will not impact the trial schedule for the
`Cisco IPR. Id. at 6–7.
`We agree with Petitioner that joinder with the Cisco IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`5
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that an inter partes review is instituted in IPR2017-
`00422;
`FURTHER ORDERED that the Motion for Joinder with IPR2016-
`01007 is granted, and ARRIS Group, Inc. is joined as a petitioner in
`IPR2016-01007;
`FURTHER ORDERED that IPR2017-00422 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2016-
`01007;
`
`FURTHER ORDERED that, subsequent to joinder, the ground for
`trial in IPR2016-01007 remains unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2016-01007 (Paper 9) remains unchanged;
`FURTHER ORDERED that in IPR2016-01007, Cisco and Petitioner
`will file each paper, except for a motion that does not involve the other
`party, as a single, consolidated filing, subject to the page limits set forth in
`37 C.F.R. § 42.24, and shall identify each such filing as a consolidated
`filing;
`FURTHER ORDERED that for any consolidated filing, if Petitioner
`wishes to file an additional paper to address points of disagreement with the
`Cisco, Petitioner must request authorization from the Board to file a motion
`for additional pages, and no additional paper may be filed unless the Board
`grants such a motion;
`FURTHER ORDERED that the Cisco and Petitioner shall collectively
`designate attorneys to conduct the cross-examination of any witness
`
`6
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`produced by Patent Owner and the redirect of any witness produced by the
`Cisco and Petitioner, within the timeframes set forth in 37 C.F.R. § 42.53(c)
`or agreed to by the parties;
`FURTHER ORDERED that the Cisco and Petitioner shall collectively
`designate attorneys to present at the oral hearing, if requested and scheduled,
`in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2016-01007 shall
`be changed to reflect joinder of ARRIS Group, Inc. as a petitioner in
`accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-01007.
`
`
`
`7
`
`
`
`IPR2017-00417
`Patent 8,718,158 B2
`
`FOR PETITIONER:
`John M. Baird
`Christopher Tyson
`DUANE MORRIS LLP
`JMBaird@duanemorris.com
`CJTyson@duanemorris.com
`
`FOR CISCO IPR PETITIONER:
`David McCombs
`Theo Foster
`Gregory P. Huh
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`
`FOR PATENT OWNER:
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`MCANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`8
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC. and ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-010211
`Patent 8,718,158 B2
`____________
`
`
`
`
`
`
`
`
`1 ARRIS Group, Inc., who filed a Petition in IPR2017-00422, has been
`joined in this proceeding.
`
`
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