`571-272-7822
`
`
`
`
`
`Paper 19
`Entered: August 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION
`and
`QUALCOMM INCORPORATED, GLOBALFOUNDRIES INC.,
`GLOBALFOUNDRIES U.S. INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00287
`Case IPR2016-01311
`Patent 6,784,552 B2
`
`
`
`Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
`MINN CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION GRANTING MOTION FOR JOINDER
`37 C.F.R. § 42.22 AND 42.122(b)
`
`
`
`
`
`
`
`
`IPR2016-00287; IPR2016-01311
`Patent 6,784,552 B2
`
`
`
`I. BACKGROUND
`On July 1, 2016, Qualcomm Incorporated, Globalfoundries Inc.,
`Globalfoundries U.S. Inc., Globalfoundries Dresden Module One LLC &
`Co. KG, and Globalfoundries Dresden Module Two LLC & Co. KG
`(collectively, “Petitioner” or “Qualcomm”) filed a Petition (Paper 3, “Pet.”)
`requesting an inter partes review of claims 1–7 (the “challenged claims”) of
`U.S. Patent No. 6,784,552 B2 (“the ’552 patent”) owned by DSS
`Technology Management, Inc. (“Patent Owner”). 35 U.S.C. § 311.
`Petitioner also timely filed a Motion for Joinder (Paper 4, “Mot. for
`Joinder”) of this proceeding with Intel Corporation v. DSS Technology
`Management, Inc., IPR2016-00287 (“Intel IPR2016-00287”), which is the
`subject of a Decision to Institute entered on June 8, 2016. Petitioner
`represents that the instant Petition “is identical to the petition in [Intel
`IPR2016-00287].”1 Mot. for Joinder 6. In a separate decision, entered
`today, we instituted inter partes review in this proceeding on the same
`grounds as those in Intel IPR2016-00287. For the reasons that follow, we
`also grant Petitioner’s Motion for Joinder.
`
`II. DISCUSSION
`The Director has discretion to join as a party to an inter partes review
`any person who properly files a petition that, after receiving a preliminary
`
`
`1 We understand Petitioner to mean identical in all substantive matters, as
`the identity of the parties is different. Petitioner also acknowledges that it
`relies on the testimony of a different expert than the expert witness in Intel
`IPR2016-00287, but states that the testimony is essentially the same. Mot.
`for Joinder 4, 6.
`
`2
`
`
`
`
`
`IPR2016-00287; IPR2016-01311
`Patent 6,784,552 B2
`
`
`
`response, the Director determines warrants the institution of inter partes
`review. 35 U.S.C. § 315(c). Petitioner argues that we should exercise our
`discretion under 35 U.S.C. § 315(c) to authorize joinder in this case.
`Petitioner states that the instant Petition challenges the same claims,
`under the same grounds, advances the same arguments, and relies on
`substantially the same expert declaration (albeit from a different expert) as
`those on which we instituted inter partes review in Intel IPR2016-00287.
`Mot. for Joinder 4, 6–7. Having not advanced any new grounds or theories
`of unpatentability in this proceeding, Petitioner contends that joinder will
`avoid inefficiencies that could result from parallel proceedings. Id. at 7.
`Noting that its positions are identical to those advanced by Intel in
`Intel IPR2016-00287, Petitioner also proposes consolidated discovery and
`consolidated filings of all substantive papers. Id. at 9. Petitioner agrees not
`to file any separate briefs. Id. at 7–8. Petitioner also agrees not to request
`additional cross-examination or re-direct time. Id. at 8. Further, Petitioner
`proposes that Intel be responsible for presentation of argument before the
`Board at oral hearing and agrees not to submit any demonstratives of its
`own. Id. at 9.
`During a teleconference on August 11, 2016, both Intel and Patent
`Owner stated that they have no objection to the proposed joinder. Petitioner
`also stated that, while Intel participates in the proceeding, Petitioner will rely
`on the testimony of Intel’s expert. In the event that Intel’s involvement in
`this proceeding is terminated, Petitioner agreed that it would make its own
`expert available for cross-examination by Patent Owner.
`
`3
`
`
`
`
`
`IPR2016-00287; IPR2016-01311
`Patent 6,784,552 B2
`
`
`
`We agree that joinder in this case would promote the just, speedy, and
`inexpensive resolution of IPR2016-01311 and IPR2016-00287. Therefore,
`we GRANT Petitioner’s unopposed Motion for Joinder and authorize the
`joinder in accordance with the following order.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that IPR2016-01311 is joined with IPR2016-00287;
`FURTHER ORDERED that the grounds on which trial was instituted
`in Intel IPR2016-00287 remain unchanged and that no other grounds are
`authorized;
`FURTHER ORDERED that the Scheduling Order entered in Intel
`IPR2016-00287 is unchanged and shall govern the joined proceeding;
`FURTHER ORDRED that throughout the proceeding Qualcomm and
`Intel will file papers, except for motions that do not involve the other party,
`e.g., pro hac vice motions, as consolidated filings and that all rules
`concerning filing papers, e.g., page and word limits, apply to such
`consolidated filings;
`FURTHER ORDERED that each authorized cross-examination of
`Patent Owner’s witnesses shall be conducted as though this matter
`concerned only a single petitioner;
`FURTHER ORDERED that Qualcomm shall rely on the testimony of
`Intel’s expert witness and, should Intel’s involvement in the proceeding be
`terminated, Qualcomm shall make its own expert available to Patent Owner
`for cross-examination;
`
`4
`
`
`
`
`
`IPR2016-00287; IPR2016-01311
`Patent 6,784,552 B2
`
`
`
`FURTHER ORDERED that IPR2016-01311 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceeding shall be
`made in IPR2016-00287; and
`FURTHER ORDERED that the case caption in IPR2016-00287 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example (Attachment A).
`
`
`5
`
`
`
`
`
`
`
`IPR2016-00287; IPR2016-01311
`Patent 6,784,552 B2
`
`
`
`
`
`PETITIONER:
`Grant K. Rowan Y
`Yung-Hoon Ha
`Wilmer Cutler Pickering Hale and Dorr, LLP
`grant.rowan@wilmerhale.com
`yung-hoon.ha@wilmerhale.com
`
`
`
`PATENT OWNER:
`Andriy Lytvyn
`Anton J. Hopen
`Nicholas Pfeifer
`Smith & Hopen, P.A.
`andriy.lytvyn@smithhopen.com
`anton.hopen@smithhopen.com
`nicholas.pfeifer@smithhopen.com
`
`6
`
`
`
`
`
`
`
`ATTACHMENT A
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION
`and
`QUALCOMM INCORPORATED, GLOBALFOUNDRIES INC.,
`GLOBALFOUNDRIES U.S. INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-002871
`Patent 6,784,552 B2
`____________
`
`
`
`
`
`
`
`1 Case IPR2016-01311 has been joined with this proceeding.