`Tel: 571-272-7822
`
`
`Paper No. 9
`Entered: July 27, 2018
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NOKIA OF AMERICA CORPORATION,
`Petitioner,
`
`v.
`
`OYSTER OPTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00984
`Patent 6,476,952 B1
`____________
`
`
`Before PATRICK M. BOUCHER, JESSICA C. KAISER, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`DECISION
`
`
`
`
`
`Grant of Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`Case IPR2018-00984
`Patent 6,476,952 B1
`
`
`I. INTRODUCTION
`
`A. Background
`On April 27, 2018, Nokia of America Corporation (“Petitioner”) filed
`a Petition (Paper 2, “Pet.”) requesting inter partes review of claims 1–5
`(“the challenged claims”) of U.S. Patent No. 6,476,952 B1 (Ex. 1001, “the
`’952 patent”). Concurrently with the Petition, Petitioner filed a Motion for
`Joinder (Paper 3, “Mot.”), requesting that this proceeding be joined with
`Cisco Systems, Inc. and Oclaro, Inc. v. Oyster Optics, LLC, Case IPR2017-
`02189 (“2189 IPR”). Mot. 1. Oyster Optics, LLC (“Patent Owner”) filed an
`Opposition to the Motion for Joinder (Paper 7, “Opp.”) and confirmed that it
`does not intend to file a Preliminary Response (Ex. 3001). Petitioner filed a
`Reply in Support of Motion for Joinder. Paper 8, “Reply.”
`For the reasons discussed below, we grant Petitioner’s Motion for
`Joinder.
`B. Related Proceedings and Asserted Grounds of Unpatentability
`In the 2189 IPR, we instituted inter partes review of the ’952 patent
`on the following two grounds:
`1. Claims 1–3 and 5 under 35 U.S.C. § 103(a) as unpatentable
`over Kaneda1 and Schneider2; and
`2. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over
`Kaneda, Schneider, and Heflinger.3
`
`
`1 JP Pat. App. Pub. S61-127236 (Original Japanese Unexamined Patent, Ex.
`1005; Declaration Regarding English Translation, Ex. 1006; English
`Translation, Ex. 1007).
`2 U.S. Pat. No. 6,700,907 B2 (Ex. 1026).
`3 U.S. Pat. No. 6,396,605 B1 (Ex. 1025).
`
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`Case IPR2018-00984
`Patent 6,476,952 B1
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`2189 IPR, Paper 9, 34; 2189 IPR, Paper 11, 2.
`The Petition in this proceeding challenges the same claims on
`identical grounds of unpatentability, and relies on the same evidence,
`including the same technical expert testimony, as presented in the 2189 IPR.
`Pet. 1; Mot. 5. Patent Owner confirmed that it did not intend to file a
`Preliminary Response and thus has not presented any arguments regarding
`the merits of the Petition in this case. Ex. 3001.
`
`
`II. ANALYSIS
`An inter partes review may be joined with another inter partes
`review, subject to certain statutory provisions:
`(c) JOINDER.—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
`parties review under section 314.
`35 U.S.C. § 315(c); see also 37 C.F.R. § 42.122 (“Any request for joinder
`must be filed, as a motion under § 42.22, no later than one month after the
`institution date of any inter partes review for which joinder is requested.”).
`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, e.g., Kyocera Corp. v. Softview LLC,
`Case IPR2013-00004, Paper 15 (April 24, 2013). As the moving party,
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`Patent 6,476,952 B1
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`Petitioner bears the burden of proving that it is entitled to the requested
`relief. 37 C.F.R. § 42.20(c).
`As an initial matter, the present Motion for Joinder meets the
`requirements of 37 C.F.R. § 42.122(b) because the Motion was filed on
`April 27, 2018, which is not later than one month after the 2189 IPR was
`instituted on March 28, 2018.
`In addition and as noted above, the present Petition challenges the
`same claims on the same grounds of unpatentability, and relies on the same
`evidence, including the same technical expert testimony, as presented in the
`2189 IPR. Pet. 1; Mot. 5. Patent Owner has not presented any arguments
`regarding the merits of the Petition in this case. Ex. 3001.
`For the above reasons, and in particular the fact that the present
`Petition is virtually identical to the petition in the 2189 IPR, we determine
`Petitioner has demonstrated sufficiently under 35 U.S.C. § 315(c) that its
`Petition in this case warrants the institution of an inter partes review under
`35 U.S.C. § 314(a).
`Petitioner further contends joinder will not affect the schedule in the
`2189 IPR, agrees to assume an “understudy” role, and provides the
`following conditions that would apply as long as Cisco and Oclaro (“the
`2189 Petitioners”) remain active parties:
`(a) all filings by Petitioner in the joined proceeding be
`consolidated with the filings of Cisco and Oclaro, unless a
`filing solely concerns issues that do not involve Cisco or
`Oclaro;
`(b) Petitioner shall not be permitted to raise any new grounds
`not already instituted by the Board, or introduce any argument
`or discovery not already introduced by Cisco or Oclaro;
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`Case IPR2018-00984
`Patent 6,476,952 B1
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`(c) Petitioner shall be bound by any agreement between Patent
`Owner and Cisco or Oclaro concerning discovery and/or
`depositions; and
`(d) Petitioner at deposition shall not receive any direct, cross
`examination or redirect time beyond that permitted for Cisco or
`Oclaro in this proceeding alone under either 37 C.F.R. § 42.53
`or any agreement between Patent Owner and Cisco or Oclaro.
`Mot. 5–7. Based on these conditions, Petitioner contends “joinder with this
`IPR proceeding will not introduce any additional arguments, briefing, or
`need for discovery.” Id. at 7.
`Patent Owner opposes the Motion for Joinder. In particular, Patent
`Owner contends that the “concessions” proposed by Petitioner for its
`“understudy” role actually permit Petitioner “to take a much more active role
`in the proceedings without first seeking and receiving Board approval.”
`Opp. 1. Specifically, Patent Owner points to the concession above in which
`“all filings by Petitioner [] in the joined proceeding be consolidated with the
`filings of [the 2189 Petitioners], unless a filing solely concerns issues that do
`not involve [the 2189 Petitioners].” Id. at 2. Patent Owner expresses the
`concern that this concession would allow Petitioner to have the consolidated
`filing plus Petitioner’s own substantive submission. Id.4 Thus, Patent
`Owner contends that the Board should (1) deny joinder and dismiss the
`Petition without institution, or (2) if joinder is granted, relegate Petitioner to
`“a true ‘understudy’ role in IPR2017-02189 and [permit Petitioner] to
`submit any filing only after first seeking (and receiving) authorization from
`
`
`4 Patent Owner also notes that joinder will not avoid redundant submissions
`as Petitioner argues because Petitioner is time barred under 35 U.S.C.
`§ 315(b). Id. at 5–6.
`
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`Case IPR2018-00984
`Patent 6,476,952 B1
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`the Board, upon a showing that [Petitioner’s] intended filing involves an
`issue unique to [Petitioner] or states a point of disagreement related to the
`consolidated petitioners’ filing.” Id. at 6.
`In reply, Petitioner clarifies that it “did not intend to carve out any
`exceptions from its role as an understudy to” the 2189 Petitioners. Reply 1.
`Petitioner further states that it would not make any submissions “without
`first seeking (and receiving) authorization from the Board.” Id. at 2.
`Based on the facts and circumstances discussed above, we determine
`Petitioner has established good cause for joining this proceeding with the
`2189 IPR. Specifically, we find that joinder of this proceeding with the
`2189 IPR is unlikely to require any delay or modification to the scheduling
`order already in place for the 2189 IPR. We also determine that Patent
`Owner will not be prejudiced unduly by the joinder of this proceeding. We
`accept Petitioner’s representation that it did not intend to suggest it could file
`its own substantive papers in the joined case without seeking authorization
`from the Board. See Reply 1–2. Thus, we determine that granting the
`Motion for Joinder under these circumstances would help “secure the just,
`speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R.
`§ 42.1(b). For the above reasons, we conclude that the Motion for Joinder
`should be granted.
`
`
`III. ORDER
`For the reasons given, it is
`ORDERED that Petitioner’s Motion for Joinder is granted, and
`Petitioner is joined as a petitioner in IPR2017-02189;
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`Case IPR2018-00984
`Patent 6,476,952 B1
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`FURTHER ORDERED that IPR2018-00984 is hereby joined with
`IPR2017-02189;
`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2017-02189 remain unchanged and remain the
`only grounds on which trial has been instituted;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-02189 (2189 IPR, Paper 10) as modified by the parties’ Joint
`Stipulation (2189 IPR, Paper 12), shall remain unchanged and shall govern
`the joined proceeding;
`FURTHER ORDERED that Petitioner shall have an “understudy” role
`in the 2189 IPR under the conditions reproduced above (Mot. 5–7);
`FURTHER ORDERED that Petitioner and 2189 Petitioners shall file
`all papers jointly unless Petitioner first receives authorization from the
`Board to make a separate filing; such authorization shall require a showing
`that Petitioner’s intended filing involves an issue unique to Petitioner or
`states a point of disagreement related to the 2189 Petitioners’ filing;
`FURTHER ORDERED that IPR2018-00984 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceeding shall be
`made in IPR2017-02189;
`FURTHER ORDERED that copies of this Decision be entered into
`the records of IPR2017-02189 and IPR2018-00984; and
`FURTHER ORDERED that the case caption in IPR2017-02189 be
`modified to reflect the joinder of this proceeding with IPR2017-02189 in
`accordance with the attached example.
`
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`Case IPR2018-00984
`Patent 6,476,952 B1
`
`PETITIONER:
`Benjamin Pleune
`ben.pleune@alston.com
`
`Scott Stevens
`scott.stevens@alston.com
`
`John Haynes
`john.haynes@alston.com
`
`PATENT OWNER:
`
`Wayne Helge
`whelge@dbjg.com
`
`James Wilson
`jwilson@dbjg.com
`
`Aldo Noto
`anoto@davidsonberquist.com
`
`
`
`
`
`
`
`
`
`8
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`Trials@uspto.gov
`571.272.7822
`
`
`
`Example Case Caption for Joined Proceeding
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CISCO SYSTEMS, INC., OCLARO, INC., and
`NOKIA OF AMERICA CORPORATION,
`Petitioner,
`
`v.
`
`OYSTER OPTICS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-021891
`
`Patent 6,476,952 B1
`_______________
`
`
`
`
`1 Case IPR2018-00984 has been joined with Case IPR2017-02189.
`
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