UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`MICROSOFT CORP.,
`Petitioner
`
`v.
`
`PROVEN NETWORKS, LLC,
`Patent Owner
`
`Case No. IPR2021-00887
`U.S. Patent No. 8,165,024
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`MICROSOFT CORP.,
`Petitioner
`
`v.
`
`PROVEN NETWORKS, LLC,
`Patent Owner
`
`Case No. IPR2021-00887
`U.S. Patent No. 8,165,024
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Microsoft Corp.
`
`(“Petitioner”) moves for joinder with the Inter Partes Review of U.S. Patent No.
`
`8,165,024 (“the ’024 Patent”), VMWare, Inc. and Dell Techs. Inc. v. Proven
`
`Networks, LLC, IPR2021-00194 (“the Dell IPR”), for which the petition for Inter
`
`Partes Review was filed on February 19, 2021, and is currently pending. IPR2021-
`
`00194, paper 4. Petitioner requests that action on this motion be held in abeyance
`
`until, and only if, the Dell IPR is instituted.1 This motion is timely because it is filed
`
`before institution of the Dell IPR, i.e., “no later than one month after the institution
`
`date” of the Dell IPR. 37 C.F.R. § 42.122(b); Central Security Group – Nationwide,
`
`Inc. v. Ubiquitous Connectivity, LP, IPR2019-01609, Paper 11, at 8-9 (P.T.A.B. Feb.
`
`26, 2020) (stating that § 42.122(b) is “[t]he only timing requirement for a motion for
`
`joinder”). Petitioner understands that the petitioner in the Dell IPR (“the Dell
`
`Petitioner”) does not oppose Petitioner’s requests for joinder.
`
`1 Should the Board deny institution of the Dell IPR, this Motion should be considered
`
`moot and Petitioner respectfully requests that the Board consider this petition
`
`independently of the Dell IPR.
`
`-1-
`
`
`
`Petitioner requests institution of this Petition for Inter Partes Review. This
`
`Petition is substantively identical to the original Dell IPR petition in all material
`
`respects, with the exception that the challenges in this Petition identify and address
`
`certain constructions promulgated by a district court after the filing of Dell IPR
`
`petition, without relying on any additional references. The primary changes are in
`
`the Introduction to identify the correct Petitioner, in mandatory notices under
`
`37 C.F.R. § 42.8(b), and in identifying and addressing claim construction rulings in
`
`In re Proven Networks Patent Litigation, Case No. 6:20-mc-02959-ADA (W.D.
`
`Tex.) (not involving Microsoft), which were issued after filing of the Dell IPR
`
`Petition. The Petition here and the Dell IPR petition challenge the same claims of
`
`the ’024 patent on the same grounds relying on the same prior art and evidence,
`
`including a declaration identical in substance from the same expert.2
`
`Thus, the Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
`
`§ 315(c) permits Petitioner’s joinder to the Dell IPR.
`
`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in the
`
`Dell IPR and coordinate all filings with the Dell Petitioner in the Dell IPR. The Dell
`
`Petitioner will maintain the lead role in the proceedings so long as it is a party to the
`
`2 The declaration has been updated only to reflect retention by Petitioner and is
`
`otherwise identical to the declaration submitted in the Dell IPR.
`
`-2-
`
`
`
`proceedings and is not estopped under § 315(e)(1), and Petitioner here will assume
`
`an understudy role. Petitioner will only assume the lead role in the proceedings if
`
`the Dell Petitioner is no longer a party to the proceedings or unable to advance
`
`arguments for one or more claims, or grounds, for example, because of § 315(e)(1).
`
`Petitioner agrees to consolidated filings for all substantive papers in the proceeding.
`
`The Dell Petitioner and Petitioner will be jointly responsible for the consolidated
`
`filings. Absent a Board order precluding the Dell Petitioner from making arguments
`
`that would otherwise be available to Petitioner, Petitioner will not advance any
`
`arguments separate from those advanced by the Dell Petitioner in the consolidated
`
`filings. These limitations will avoid lengthy and duplicative briefing. Also,
`
`Petitioner will not seek additional depositions or deposition time, and will coordinate
`
`deposition questioning and hearing presentations with the Dell Petitioner. Petitioner
`
`agrees to the foregoing conditions even in the event that other IPRs filed by other,
`
`third-party petitioners are joined with the Dell IPR.
`
`Joinder will help efficiently resolve the disputes among the parties. By
`
`joinder, a single Board decision may dispose of the issues raised in the Dell IPR for
`
`all interested parties. Further, the Patent Owner has asserted the ’024 patent in
`
`district court against Petitioner. Joinder will estop Petitioner from asserting in
`
`district court those issues resolved in a final decision from the Dell IPR, thus
`
`narrowing the issues in the district court actions. See 35 U.S.C. § 315(e)(2). Finally,
`-3-
`
`
`
`joinder would not complicate or delay the Dell IPR and would not adversely affect
`
`any schedule set in that proceeding. In sum, joinder would promote efficient
`
`adjudication in multiple forums. On the other hand, if instituted, maintaining the
`
`Petitioner’s IPR proceeding separate from that of the Dell IPR would entail needless
`
`duplication of effort.
`
`Joinder will not unduly prejudice any party. Because joinder will not add any
`
`new substantive issues, delay the schedule, burden deponents, or increase needless
`
`filings, any additional costs on the Patent Owner would be minimal. On the other
`
`hand, denial of joinder would prejudice Petitioner. Their interests may not be
`
`adequately protected in the Dell IPR proceedings, particularly if the Dell Petitioner
`
`settles with the Patent Owner. Petitioner should be allowed to join in a proceeding
`
`affecting a patent asserted against them.
`
`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`Proven Networks, LLC (the “Patent Owner”) is the owner of the ’024 patent.
`
`Proven Networks has asserted the ’024 patent against Microsoft in Proven Networks,
`
`LLC v. Microsoft Corporation, 6-21-cv-00022 (W.D. Tex. Jan. 11, 2021). Patent
`
`Owner has also asserted the ’024 patent in Proven Networks, LLC v. Dell
`
`Technologies, Inc., No. 1:20-cv-710-ADA (W.D. Tex.); Proven Networks, LLC v.
`
`F5 Networks, Inc., 5-20-cv-02521 (N.D. Cal.); Proven Networks, LLC v. Arista
`
`-4-
`
`
`
`Networks, 6:20-cv-00281 (W.D. Tex.); Proven Networks, LLC v. Hewlett Packard
`
`Enterprise Co., 6:20-cv-00632 (W.D. Tex.); Proven Networks, LLC v. Cisco
`
`Systems, Inc., 2-20-cv-00074 (E.D. Tex.); Proven Networks, LLC v. Palo Alto
`
`Networks, Inc., 2-20-cv-00389 (E.D. Tex.); Proven Networks, LLC v. Broadcom
`
`Inc., 6-21-cv-00003 (W.D. Tex.); Proven Networks LLC v. Barricuda Networks,
`
`Inc., 3:21-cv-02185 (N.D. Cal.); and Proven Networks LLC v. Juniper Networks,
`
`Inc., 6-21-cv-00305 (W.D. Tex.). The ’024 patent is also the subject of SonicWall
`
`Inc. v. Proven Networks, LLC, 6:20-cv-00977-ADA (W.D. Tex.), in which
`
`SonicWall Inc. is seeking declaratory judgments of noninfringement and invalidity.3
`
`On February 19, 2021, Dell filed its IPR petition, IPR2021-00194, against the
`
`’024 patent. Petitioner here timely moves for joinder with the Dell IPR.
`
`III.
`
`STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A.
`Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an IPR
`
`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
`
`3 Many of the listed cases have been consolidated for pre-trial in the Western District
`
`of Texas as 6:20-mc-02959-ADA. Petitioner Microsoft’s case, however, has not
`
`been consolidated in 6:20-mc-02959-ADA.
`
`-5-
`
`
`
`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
`
`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
`
`“The Board will determine whether to grant joinder on a case-by-case basis, taking
`
`into account the particular facts of each case, substantive and procedural issues, and
`
`other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear the
`
`burden of proof in establishing entitlement to the requested relief. 37 C.F.R.
`
`§§ 42.20(c), 42.122(b). 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; (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.
`
`Dell, IPR2013-00385, Paper 19, at 4.
`
`B.
`
`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
`The Petition is based on the same grounds and combinations of prior art that
`
`are at issue in the Dell IPR. For simplicity and efficiency, Petitioner has
`
`substantially copied the substance of Dell’s petition and accompanying declaration.
`
`Petitioner does not seek to introduce grounds or claims not in the Dell IPR and seeks
`
`only to join the proceeding as instituted. Petitioner retained the same expert, who
`
`has submitted an identical declaration as in the Dell IPR. The Patent Owner should
`-6-
`
`
`
`not require any discovery beyond that which it may need in the Dell IPR—nor should
`
`the Board permit any. The Petition presents no new substantive issues relative to
`
`the Dell IPR and does not seek to broaden the scope of the Dell IPR.
`
`For efficiency’s sake, Petitioner will:
`
`1. Adhere to all applicable deadlines in the Dell IPR;
`
`2. Submit “consolidated” filings with the Dell Petitioner, as set forth
`
`above in the statement of precise relief requested;
`
`3. Refrain from requesting or reserving any additional depositions or
`
`deposition time;
`
`4. Refrain from requesting or reserving additional oral hearing time; and
`
`5. Assume a second-chair role as long as the Dell Petitioner remains in the
`
`proceeding.4
`
`In view of these provisions, joinder should not affect the trial schedule.
`
`4 These limitations are consistent with previously granted joinder motions. See, e.g.,
`
`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
`
`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
`
`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
`
`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
`
`-7-
`
`
`
`C.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioner presents substantially identical arguments and supporting evidence
`
`as the Dell IPR. Joinder will simplify briefing and discovery. Given that the Dell
`
`IPR and the Petition address the same prior art and grounds for rejection of the same
`
`claims, joining these proceedings allows for joint submissions and discovery, further
`
`streamlining the proceedings. This should promote efficiency and conserve the
`
`Board’s and the parties’ resources. Further, joinder will estop Petitioner from
`
`asserting in district court those issues resolved in a final written decision in the Dell
`
`IPR, thus narrowing the issues in the district court actions. See 35 U.S.C.
`
`§ 315(e)(2).
`
`Joinder is Appropriate
`D.
`The Board has previously stated that it is “mindful of a policy preference for
`
`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
`
`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
`
`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
`
`anticipates that joinder will be allowed as of right – if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical petition
`
`will be joined to that proceeding, and thus allowed to file its own briefs and make
`
`its own arguments.”)).
`
`-8-
`
`
`
`Here, because Petitioner seeks institution on the grounds, evidence, and
`
`arguments advanced, or that will be advanced, in the Dell IPR, institution is
`
`warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Dell IPR is
`
`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
`
`asserted. As explained above, joinder would not adversely impact the trial schedule,
`
`briefing, or discovery in the Dell IPR, and the remaining equities compel joinder.
`
`Petitioner is filing this Petition and joinder motion to ensure that the trial is
`
`completed in the event that the Dell Petitioner reaches settlement with Patent Owner.
`
`1. Without joinder, Petitioner will be prejudiced
`A denial of joinder would prejudice Petitioner. Its substantial interests, as
`
`parties against whom the ’024 patent has been asserted in a federal district court
`
`action, may not be adequately protected by the Dell Petitioner in the Dell IPR
`
`proceedings. For example, Petitioner has an interest that the Dell IPR reach a final
`
`determination to facilitate a timely and cost-effective end to the controversy between
`
`Petitioner and the Patent Owner. Petitioner should be allowed to join in a proceeding
`
`affecting a patent asserted against it.
`
`Joinder will not unduly prejudice any party
`2.
`The Petition raises issues already before the Board and long known to the
`
`Patent Owner. Addressing patent validity in this proceeding, well on its way towards
`
`a final determination, serves the parties’ and Board’s interests.
`
`-9-
`
`
`
`IV. GENERAL PLASTICS IS INAPPLICABLE
`Petitioner respectfully submits application of the General Plastic analysis is
`
`inapplicable here. In General Plastic, the Board set forth a series of factors that may
`
`be analyzed for follow-on petitions to help conserve the finite resources of the Board.
`
`Here, both Microsoft and Dell submitted separate, independent petitions. In the
`
`current motion, Microsoft merely seeks to join Dell’s petition and does not present
`
`any new grounds. As such, Microsoft respectfully submits that General Plastic does
`
`not apply in this circumstance because Microsoft would be taking an understudy role
`
`and the Board’s finite resources would not be impacted. Moreover, a joinder petition
`
`in these circumstances is not the type of serial petition to which General Plastic
`
`applies, as there is no strategic advantage to be gained by filing this additional
`
`petition, and there are no concerns of “road mapping” the Patent Owner’s strategy
`
`particularly where the Patent Owner Preliminary Response has not yet been filed, as
`
`is the case here.
`
`In the event the Board does analyze the General Plastic factors, those factors
`
`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co.,
`
`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16 (PTAB Sept. 6,
`
`2017) (Paper 19) (precedential as to § II.B.4.i).
`
`The first factor is whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent. Microsoft has not previously filed a
`-10-
`
`
`
`petition against the ’024 Patent. Microsoft is concurrently filing two inter partes
`
`review petitions directed to the ’024 patent—both are “copycat” petitions—but
`
`Microsoft will also provide a ranking document in the event the PTAB decides not
`
`to institute review of both petitions, such that the PTAB would only expend
`
`resources on the higher-ranked petition. Accordingly, this factor weighs in favor of
`
`institution.
`
`The second factor is whether at the time of filing the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition. This
`
`factor is neutral, if not inapplicable, in the General Plastic analysis. Here, Dell’s
`
`petition and Microsoft’s Petition share the same prior art because Microsoft’s
`
`Petition is a “copycat” of Dell’s petition. Because Microsoft is merely seeking to
`
`join in an understudy role, the factor is neutral, at best, in determining whether to
`
`institute.
`
`The third factor is whether at the time of filing of the second petition the
`
`petitioner already received the patent owner’s preliminary response to the first
`
`petition or received the Board’s decision on whether to institute review in the first
`
`petition. Patent owner has not yet responded to the Dell petition, and the Board has
`
`not decided whether to institute review on that IPR. Further, because the present
`
`Petition is essentially a copy of the prior Dell Petition and submitted with a motion
`
`a joinder stating that Microsoft will serve an understudy role, the Petition is not an
`-11-
`
`
`
`attempt to harass the Patent Owner or otherwise engage in serial, tactical filings.
`
`Thus, this factor weighs against denial of joinder/institution.
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second
`
`petition, and the fifth factor is whether the petitioner provides adequate explanation
`
`for the time elapsed between the filings of multiple petitions directed to the same
`
`claims of the same patent. In the context of a joinder motion where Microsoft will
`
`be taking an understudy role, these factors are inapplicable. In any event, Microsoft
`
`filed its Petition less than two months after Dell filed its petition, and before Patent
`
`Owner has provided its preliminary response.
`
`The sixth factor is the finite resources of the Board. Allowing Microsoft’s
`
`joinder motion where it will serve in an understudy role will not impact the Board’s
`
`resources beyond those resources the Board dedicates to the instant joinder motion.
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on which the Director notices
`
`institution of review. As noted above, joining Microsoft should not impact the
`
`schedule. Accordingly, this factor weighs in favor of institution.
`
`An eighth factor identified by the Board in Shenzhen is the extent to which
`
`the petitioner and any prior petitioner(s) were similarly situated defendants or
`
`otherwise realized a similar-in-time hazard regarding the challenged patent.
`-12-
`
`
`
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898,
`
`Paper 9 at 7, 13-14 (PTAB Oct. 1, 2018) (noting “the purpose of proposed Factor 8
`
`is to discourage tactical filing of petitions over time by parties that faced the same
`
`threat at the same time” such that earlier petitions are filed as “test case(s)” to gain
`
`“tactical advantage”). Because Microsoft’s Petition does not introduce any new
`
`grounds of unpatentability and will effectively merge into a single proceeding with
`
`Dell’s IPR, no such tactical advantage is gained here.
`
`Thus, none of the General Plastic factors weighs against institution and
`
`joinder in this situation.
`
`V.
`
`CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Dell IPR.
`
`Petitioner files this motion under the statutory joinder provisions as contemplated by
`
`the AIA. Joinder will simplify the issues and promote efficiency, justice, and speed.
`
`For the foregoing reasons, Petitioner respectfully requests inter partes review
`
`of U.S. Patent No. 8,165,024 and joinder with Dell, Inc. v. Proven Networks, LLC,
`
`IPR2021-00194.
`
`Dated: May 14, 2021
`
`Respectfully submitted,
`
`/ James M. Heintz/
`James M. Heintz, Reg. No. 41,828
`
`-13-
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned hereby
`
`certifies that a copy of the foregoing Motion for Joinder was provided to Patent
`
`Owner by emailing a copy of same (by agreement) to the following attorneys of
`
`record for the Patent Owner:
`
`rmirzaie@raklaw.com
`mfenster@raklaw.com
`bledahl@raklaw.com
`bwang@raklaw.com
`RUSS AUGUST & KABAT
`
`In addition, a copy of this Motion for Joinder and supporting material is being
`
`electronically served in its entirety on counsel for Petitioner in related Case No.
`
`IPR2021-00194.
`
`Peter.Dichiara@wilmerhale.com
`Jason.Kipnis@wilmerhale.com
`Chetan.Chandra@wilmerhale.com
`Bin.Li@wilmerhale.com
`Cynthia.Vreeland@wilmerhale.com
`Wilmer Cutler Pickering Hale and Dorr LLP
`
`Dated: May 14, 2021
`
`Respectfully submitted,
`
`
`By:/ James M. Heintz /
`James M. Heintz (Reg. No. 41,828)
`Email: jim.heintz@dlapiper.com
`11911 Freedom Dr., Suite 300
`Reston VA 20190
`Phone: 703.773.4148
`Fax: 703.773.5000
`Counsel for Petitioner Microsoft Corp.
`
`
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