Trials@uspto.gov
`571-272-7822
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` Paper: 8
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` Entered: February 8, 2018
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOSHIBA CORPORATION AND TOSHIBA MEMORY
`CORPORATION,
`Petitioner,
`
`v.
`
`LONE STAR SILICON INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00083
`Patent 5,912,188
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN,
`JENNIFER MEYER CHAGNON, and ELIZABETH M. ROESEL,
`Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Granting Petitioner’s Unopposed Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`571-272-7822
`
`
`
`
`
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`
`
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`
`
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` Paper: 8
`
`
` Entered: February 8, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOSHIBA CORPORATION AND TOSHIBA MEMORY
`CORPORATION,
`Petitioner,
`
`v.
`
`LONE STAR SILICON INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00083
`Patent 5,912,188
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN,
`JENNIFER MEYER CHAGNON, and ELIZABETH M. ROESEL,
`Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Granting Petitioner’s Unopposed Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`IPR2018-00083
`Patent 5,912,188
`
`
`INTRODUCTION
`I.
`Toshiba Corporation and Toshiba Memory Corporation (collectively,
`“Petitioner” or “Toshiba”) filed a Petition requesting inter partes review of
`claims 1–5, 7–13, 15–23, and 25–29 of U.S. Patent No. 5,912,188 (Ex. 1001,
`“the ’188 patent”). Paper 1 (“Pet.”). Petitioner subsequently filed a Motion
`for Joinder requesting that Petitioner be joined as a party to Micron
`Technology, Inc. v. Lone Star Silicon Innovations, LLC, IPR2017-01561.
`Paper 6 (“Joinder Motion” or “Joinder Mot.”). Petitioner represents that
`Patent Owner (Lone Star Silicon Innovations, LLC) does not oppose
`Petitioner’s Joinder Motion, subject to certain procedural conditions agreed
`upon by both parties.
`At Petitioner’s request, a conference call regarding the Joinder Motion
`was conducted on January 18, 2018, among Michael Burns, counsel for
`Petitioner; Nicholas Peters and David Gosse, counsel for Patent Owner;
`Jeremy Jason Lang, counsel for Micron Technology, Inc. (“Micron”),
`Petitioner in IPR2017-01561; and Administrative Patent Judges Obermann,
`Chagnon, and Roesel.
`Following the conference call, Patent Owner filed a paper waiving a
`preliminary response to the Petition in view of the Joinder Motion. Paper 7.
`
`II. DISCUSSION
`
`A.
`
`The Petition
`Petitioner represents that the Petition “challenges the same claims of
`the ’188 Patent using the same grounds” as Micron’s petition in IPR2017-
`01561. Joinder Mot. 2. Petitioner further represents that the Petition is
`“substantially identical” to Micron’s petition and “presents no new issues.”
`Id.; see also id. at 1 n.2 (acknowledging that the petitions differ with respect
`
`2
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`IPR2018-00083
`Patent 5,912,188
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`to identification of “petitioners, real parties in interest, related matters, and
`the like”).
`Petitioner states that it relies on the same expert and the same expert
`declaration as filed Micron’s petition in IPR2017-01561. Id. at 4. More
`specifically, Petitioner states that it refiled the declaration prepared and filed
`by Micron in IPR2017-01561. Id. at 6 n.3.
`As noted above, Patent Owner waived a Preliminary Response to the
`Petition. Paper 7.
`On the question of whether to institute inter partes review based on
`the Petition, we incorporate our analysis from our institution decision in
`IPR2017-01561. IPR2017-01561, Paper 8 (“Dec.”), 3–28. For the same
`reasons, we conclude that Petitioner has demonstrated a reasonable
`likelihood of prevailing on the following grounds of unpatentability:
`Claims 1–5, 7–13, 15–19, 21–23, and 25–27 as obvious in view
`of Kawai; and
`Claims 20, 28, and 29 as obvious in view of Kawai and Sung.
`Dec. 3–28; Pet. 27–71.
`
`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join a party to another inter partes review, subject to certain exceptions
`not present here. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. As the
`moving party, Petitioner has 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 ground(s) of unpatentability asserted in the petition;
`(3) explain what impact (if any) joinder would have on the trial schedule for
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`IPR2018-00083
`Patent 5,912,188
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`the existing review; and (4) address how briefing and/or discovery may be
`simplified to minimize schedule impact. See Joinder Mot. 3; Kyocera Corp.
`v. SoftView LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`(Paper 15) (representative).
`Here, Petitioner represents that the Petition is “substantially identical”
`to Micron’s petition in IPR2017-01561 and challenges the same claims of
`the ’188 patent based on the same grounds and the same declaration
`testimony as Micron’s petition in IPR2017-01561. Joinder Mot. 1, 2, 4, 6
`n.3. Petitioner argues that, “since the grounds and prior art are identical to
`those instituted in IPR2017-01561, there are no new issues for Patent Owner
`to address.” Id. at 5.
`Petitioner further represents that, if joined as a petitioner, it would
`take an “understudy” role in the proceeding. Joinder Mot. 1, 5, 6. More
`specifically, Petitioner represents that Patent Owner does not oppose
`Petitioner’s Joinder Motion, subject to the following conditions, which
`Petitioner accepts: (1) the schedule in IPR2017-01561 remains in place; and
`(2) Petitioners’ participation in briefing, depositions, and oral argument is
`limited to sharing the briefing and time allotted to Micron in IPR2017-
`01561. Id. at 2, 3, 5. During the January 18th conference call, Patent Owner
`confirmed that it does not oppose joinder under the conditions set forth in
`Petitioner’s Joinder Motion. Micron stated that it does not object to joinder
`or to the conditions agreed upon by Petitioner and Patent Owner.
`Petitioner further represents that, because its Petition relies upon the
`same declarant (Dr. Fair) as Micron’s petition in IPR2017-01561, joinder
`“will allow for common discovery with regard to Dr. Fair (e.g., a common
`date for depositions).” Joinder Mot. 6. In addition, Petitioner represents that
`
`4
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`IPR2018-00083
`Patent 5,912,188
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`“so long as Micron maintains its IPR, all filings by Petitioner[] in the joined
`proceeding will be consolidated with the filings of Micron, unless a filing
`solely concerns issues that do not involve Micron.” Id. Petitioner agrees not
`to introduce any argument or discovery not introduced by Micron. Id.
`Petitioner also agrees to allow counsel for Micron to conduct the
`examination of any Patent Owner witness and to defend any common
`witness at any depositions in the joined proceeding. Id. at 6–7. During the
`January 18th conference call, Micron stated that it agrees to Petitioner’s
`request to attend depositions.
`Based on its representations in the Joinder Motion, Petitioner argues
`“[t]he requested joinder here will serve to secure the just, speedy, and
`inexpensive resolution of these proceedings.” Joinder Mot. 4. Petitioner
`additionally argues that joinder should not have any impact on the trial
`schedule and will simplify briefing and discovery in IPR2017-01561. Id. at
`4, 6.
`
`Based on Petitioner’s representations in the Joinder Motion and the
`representations of Petitioner, Patent Owner, and Micron during the January
`18th conference call, as summarized above, we determine that Petitioner has
`met its burden to show that joinder of Petitioner as a party in IPR2017-
`01561 is appropriate. We rely in particular, on Petitioner’s representation
`that its Petition is “substantially identical” to the petition in IPR2017-01561
`and challenges the same claims based on the same prior art and the same
`grounds of unpatentability as are already asserted in IPR2017-01561. We
`also rely on Petitioner’s agreement that the existing schedule IPR2017-
`01561 will remain in place and that its participation in the joined proceeding
`will be limited to an “understudy” role. We also rely on the fact neither
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`IPR2018-00083
`Patent 5,912,188
`
`Patent Owner nor Micron opposes Petitioner’s Joinder Motion under the
`conditions agreed to by Petitioner. Under these circumstances, we conclude
`that Petitioner has demonstrated that joinder of Petitioner as a party to
`IPR2017-01561 will secure the just, speedy, and inexpensive resolution of
`these proceedings. We therefore grant Petitioner’s Joinder Motion and, as a
`result, join Petitioner as a party to IPR2017-01561.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes review is instituted in Case IPR2018-
`00083 as to claims 1–5, 7–13, 15–23, and 25–29 of the ’188 patent based on
`the same grounds as instituted in Case IPR2017-01561;
`FURTHER ORDERED that Petitioner’s Joinder Motion is granted,
`and Toshiba is joined as a party to Case IPR2017-01561;
`FURTHER ORDERED that the grounds on which an inter partes
`review were instituted in Case IPR2017-01561 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Case IPR2018-00083 is instituted, joined,
`and administratively terminated under 37 C.F.R. § 42.72, and all further
`filings in the joined proceedings shall be made in Case IPR2017-01561;
`FURTHER ORDERED that the Scheduling Order entered in Case
`IPR2017-01561 (Paper 9) shall govern the schedules of the joined
`proceedings;
`FURTHER ORDERED that Toshiba’s participation in briefing,
`discovery, depositions, and oral argument is limited to sharing the briefing
`and time allotted to Micron, so long as Micron remains a party to the
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`IPR2018-00083
`Patent 5,912,188
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`proceeding and, absent our express authorization, Toshiba shall not file
`papers or exhibits apart from Micron;
`FURTHER ORDERED that the case caption in Case IPR2017-01561
`shall be changed to reflect the joinder with this proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the files of Case IPR2017-01561 and Case IPR2018-00083.
`
`
`
`7
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`IPR2018-00083
`Patent 5,912,188
`
`PETITIONER (IPR2017-01561):
`Jeremy Lang
`Robert Magee
`Weil, Gotshal & Manges LLP
`Jason.lang@weil.com
`Robert.magee@weil.com
`
`PETITIONER (IPR2018-00083):
`Steven Park
`Gerald Sekimura
`Michael Burns
`DLA Piper LLP
`steven.park@dlapiper.com
`gerald.sekimura@dlapiper.com
`michael.burns@dlapiper.com
`
`PATENT OWNER:
`Timothy P. Maloney
`Nicholas T. Peters
`David Gosse
`FITCH, EVEN, TABIN & FLANNERY LLP
`tim@fitcheven.com
`ntpete@fitcheven.com
`dgosse@fitcheven.com
`
`8
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`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper: 8
`
`
` Entered: February 8, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICRON TECHNOLOGY, INC., TOSHIBA CORPORATION, AND
`TOSHIBA MEMORY CORPORATION,
`Petitioner,
`
`v.
`
`LONE STAR SILICON INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-015611
`Patent 5,912,188
`____________
`
`
`
`
`
`1 The motion for joinder filed by Petitioner in Case IPR2018-00083 was
`granted, and Toshiba Corporation and Toshiba Memory Corporation have
`been joined as parties to Case IPR2017-01561.
`
`
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