UnifiedOnline Inc fka UOIP

[DreamGreen]

UOIP/Chanbond Response to Arris petitions, EXACTLY what I was hoping to see! In order to be considered privy and have the 1 year rule apply the petitioner had to have some control over the prior litigation. I was not confident they would be considered privy to the Cisco and RPX petitions until I read the first section that I highlighted below in red. Apparently, Arris had a LEGAL RIGHT to control the prior litigation. This means they were privy or a real party-in-interest to the other petitions and the 1year limit should apply to them. I am now confident the IPR's wont be instituted. This will be another Massive win for UOIP/Chanbond!

A win that will get the same type of exposure that the wins over CISCO got last year.

This proceeding is the latest in a seemingly endless string of challenges to the validity of this patent family. Not even two months after Patent Owner initiated infringement litigation in Delaware District Court in 2015, RPX Corporation (“RPX”) filed a first, and ultimately unsuccessful, inter partes review petition against one of the asserted patents. This was followed less than a year later by a second salvo of eight inter partes review petitions filed by Cisco Systems, Inc. (“Cisco”) against each of the three patents asserted in the Delaware litigation. The Board, however, denied institution on seven of those eight petitions. This latest round of five petitions, again challenging all three asserted patents, was filed by Petitioner ARRIS International plc (“ARRIS”) just before issuance of a final written decision on the one Cisco petition that was instituted by
the Board.

These are not separate challenges by actors with independent interests.
Cisco and ARRIS are suppliers of telecommunications equipment to the
defendants in the Delaware litigation (“the Delaware Defendants”). Both Cisco and ARRIS are member companies of RPX. Cisco listed all of the Delaware Defendants, as well as ARRIS, as real parties in interest in each of its IPR petitions. And as Petitioner ARRIS admitted in its filings to the U.S. Securities and Exchange Commission (“SEC”) and other public documents, it has a duty to indemnify the Delaware Defendants in case of a loss, and under the same indemnification agreements it also has a legal right to control the litigation.

Under these facts, the Board should deny institution of trial for two separate reasons. First, Petitioner is in privity with the Delaware Defendants, who were served with a complaint for infringement of the challenged patent in 2015. Therefore, the petition is time-barred under 35 U.S.C. § 315(b). Second, the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) because “multiple, staggered petition filings, such as those here, are an inefficient use of the inter partes review process and the Board’s resources.” General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 21 (PTAB Sept. 6, 2017) (paper 19) (precedential). Petitioner and its allies should not be allowed to “strategically stage their prior art and arguments in multiple petitions, using the Board’s decisions as a roadmap, until a ground is found that results in the grant of review Id. at 17

Read more here:

https://s3-us-west-1.amazonaws.com/ptab-filings%2FIPR2018-00574%2F10