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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`KINGSTON TECHNOLOGY COMPANY, INC.
`Petitioner
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`v.
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`SPEX TECHNOLOGIES, INC.
`Patent Owner
`______________________
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`Case IPR2018-01003
`Patent 6,088,802
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`______________________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b) OR, IN THE
`ALTERNATIVE, FOR COORDINATION OF SCHEDULE, AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Attorney Docket No. 37307-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`I.
`RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b), Kingston
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`Technology Company, Inc. (“Petitioner”) hereby moves for joinder of any
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`proceeding resulting from its new Petition for Inter Partes Review (“IPR”) of
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`United States Patent No. 6,088,802 (“the ’802 Patent”) — filed concurrently with
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`this Motion—with the recently instituted IPR for the ’802 Patent, IPR2018-00082,
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`naming Western Digital Corp. as petitioner.
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`In conjunction with this request for joinder or coordination, Petitioner
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`respectfully requests that the Board specify a shortened response period in which
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`Patent Owner SPEX Technologies, Inc. (“Patent Owner”) may file a Preliminary
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`Response to this new Petition. The new Petition includes only the grounds
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`instituted in IPR2018-00082 and is substantively identical on those grounds.1
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`Given the identity of issues presented by this new Petition and those raised by
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`Western Digital Corp. in the prior co-pending proceeding, the proposal for a
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`shortened response period does not impose an undue burden on Patent Owner.
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`1 The petitions, of course, are not wholly identical. The present Petition has been
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`updated to account for the formalities of a different Petitioner and real parties in
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`interest, the related matters have been updated, and there are nominal clerical
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`changes.
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`1
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`Moreover, in establishing a shortened deadline, the Board will provide itself with
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`more time before the institution decision is due to consider any additional
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`information furnished by Patent Owner in its Preliminary Responses to the new
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`Petition, if any are raised.
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`Even if the Board declines to establish the proposed shortened response
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`deadline for the Preliminary Response, Petitioner nevertheless maintains its motion
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`for joinder.
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`II.
`1.
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`STATEMENT OF MATERIAL FACTS
`On October 16, 2017, Western Digital Corp. filed a Petition for Inter
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`Partes Review of U.S. Patent No. 6,088,802, challenging claims 1, 2, 6, 7, 11, 12,
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`23-25, 38, and 39 under §103(a) (IPR2018-00082). On January 26, 2018, Patent
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`Owner filed its Preliminary Response in IPR2018-00082. On April 25, 2018, the
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`Board issued an institution decision and scheduling order in IPR2018-00082.
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`2.
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`On May 2, 2018, Petitioner filed this Petition for Inter Partes Review
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`(“IPR”) of US Patent No. 6,088,802, challenging claims 1, 2, 6, 7, 11, 12, 23-25,
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`38, and 39 under §103(a).
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`3.
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`This new Petition for IPR challenges the same claims of the ‘802
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`Patent using the same grounds as Western Digital Corp.’s previous Petition for IPR
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`of the ‘802 Patent (i.e., IPR2018-00082). Moreover, as noted above, this new
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`Petition is substantively identical as to those grounds, and presents no new issues.
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`2
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`4.
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`It should be noted that Petitioner previously filed a Petition for IPR of
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`claims 1-3, 6-8, 11-15, 23-28, and 36-39 of the ’802 Patent, asserting wholly
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`different prior art under §103(a) (IPR2017-00824). Institution was denied on
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`August 17, 2017.
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`III. DISCUSSION
`The requested joinder will serve to secure the just, speedy, and inexpensive
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`resolution of these proceedings. Under 35 U.S.C. § 325(c):
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`If more than 1 petition for a post-grant [or covered business method]
`review under this chapter is properly filed against the same patent and
`the Director determines that more than 1 of these petitions warrants
`the institution of a post-grant review under section 324, the Director
`may consolidate such reviews into a single post-grant [or covered
`business method] review.
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`In addition, 37 C.F.R. § 42.222(b) provides that “[j]oinder may be requested
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`by a patent owner or petitioner. Any request for joinder must be filed, as a motion
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`under § 42.22, no later than one month after the institution date of any post-grant
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`[or covered business method] review for which joinder is requested.”
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`This Motion is timely under § 42.222(b) because Western Digital Corp.’s
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`Petition for IPR was instituted on April 25, 2018. Moreover, at the time of this
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`filing, IPR2018-00082 is pending.
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`3
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`The Board has further provided that a motion for joinder should: (1) set forth
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`the reasons why joinder is appropriate; (2) identify any new grounds of
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`unpatentability asserted in the petition; (3) explain what impact (if any) joinder
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`would have on the trial schedule of the existing proceeding; and (4) address
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`specifically how briefing and discovery may be simplified. See, e.g., Kyocera
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`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013). Analysis of
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`these factors here warrants the Board’s use of its discretion to grant the requested
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`joinder. See Protection One, Inc. v. MD Security Solutions, LLC, IPR2016-01235,
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`Paper 8 at 4-5 (Oct. 11, 2016).
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`A.
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`Joinder is Appropriate Because Both Proceedings Involve the
`Same Prior Art, the Same Claims, and the Same Grounds of
`Unpatentability – No New Grounds Are Presented
`The challenged claims and grounds of Petitioner’s petition are substantively
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`identical to claims and grounds presented in the petition filed by Western Digital
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`Corp. (IPR2018-00082). The same prior art, and even the same expert declarations
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`and experts, are used in both proceedings. Petitioner proposes no new grounds of
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`unpatentability. This strongly supports application of joinder.
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`Moreover, if joined, Petitioner agrees to take an “understudy” role as
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`petitioners in other similarly joined proceedings have taken. See IPR2015-01353,
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`Decision, Paper 11 at 6 (October 5, 2015), granting institution and joinder where
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`4
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`petitioner requested an “understudy role”. See also, IPR2014-00550, Paper 38 at 5
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`(April 10, 2015).
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`Joinder to or, alternatively, coordination of schedule with proceedings
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`resulting from Western Digital Corp.’s previous Petition simply provides a
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`mechanism for the efficient adjudication of both proceedings, particularly in light
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`of the above-noted commonalities.
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`Accordingly, for at least the reasons outlined in this motion, any proceeding
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`resulting from Petitioner’s new IPR petition should appropriately be joined to or,
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`alternatively, coordinated with any proceeding(s) resulting from Western Digital
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`Corp.’s previous petition for IPR of the ’802 Patent (i.e., IPR2018-00082).
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`B. Given Its Early Stage, Joinder Should Not Have Any Impact on
`the Trial Schedule of the Existing Proceeding
`Western Digital Corp.’s previous IPR petition of the ’802 Patent was just
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`instituted on April 25, 2018. Petitioner hereby expressly consents to the existing
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`trial schedule in IPR2018-00082.
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`Further, since the grounds and prior art are identical to those instituted in
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`IPR2018-00082, there are no new issues for Patent Owner to address. Thus, by
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`shortening the period of Patent Owner’s Preliminary Response in this proceeding,
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`the Board can readily set and administer a common schedule deemed reasonable
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`for adjudicating the issues in both proceedings. In other words, the proposed
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`joinder, or coordination of proceedings, will not have any dilatory impact on the
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`5
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`schedule of the instituted proceeding. Rather, joining, or coordinating, Petitioner’s
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`new petition of the ’802 Patent to the instituted proceeding will promote
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`efficiencies.
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`Moreover, as noted previously, Patent Owner will already be required to
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`address the same grounds of unpatentability in both IPR petitions. In Western
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`Digital Corp.’s IPR petition, Patent Owner’s Response to the Petition (Due Date 1)
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`is July 18, 2018. See IPR2018-00082, Paper 15 at 8. Accordingly, Patent Owner
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`will experience little, if any, prejudice as a result of the accelerated due date of its
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`Preliminary Response to Petitioner’s new Petition, because Patent Owner is
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`addressing the same issues in preparing its Patent Owner Response.
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`C.
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`Joinder Will Simplify Briefing and Discovery Because and a
`Single Oral Hearing Will Improve Efficient Adjudication of
`Complimentary Issues
`Joining or alternatively coordinating the schedules of the two IPR petitions
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`will simplify discovery. The petitions share common experts (Kaliski and Hall-
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`Ellis). Accordingly, joining Petitioner’s new IPR petition of the ’802 Patent to
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`Western Digital Corp.’s IPR petition or, alternatively, coordinating the schedules
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`of the two reviews will allow for common discovery with regard to those experts
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`(e.g., a common date for depositions).
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`Also as noted above, if joined, Petitioner agrees to take an “understudy” role
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`as petitioners in other, similarly joined proceedings have taken. In other words, so
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`6
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`long as Western Digital Corp. maintains its IPR, all filings by Petitioner in the
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`joined proceeding will be consolidated with the filings of Western Digital Corp.,
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`unless a filing solely concerns issues that do not involve Western Digital Corp.;
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`Petitioner will not introduce any argument or discovery not already introduced by
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`Western Digital Corp.; Petitioner agrees to be bound by any agreement between
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`Patent Owner and Western Digital Corp. concerning discovery and/or depositions;
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`and Petitioner shall not receive any direct, cross or redirect time beyond that
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`permitted for Western Digital Corp. Thus, if joined, there will be only one set of
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`briefing on the issues, rather than briefing from both Western Digital Corp. and
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`Petitioner. Petitioner will assume the primary role only if Western Digital Corp.
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`ceases to participate.
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`Moreover, Petitioner has conferred with Western Digital Corp.’s counsel
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`who indicate that Western Digital Corp. will not oppose this motion for joinder or
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`Petitioner’s role as an understudy.
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`D. The Requested Joinder Is Appropriate
`As noted above, this is not Petitioner’s first IPR Petition challenging claims
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`of the ’802 Patent. More than a year ago, Petitioner filed IPR2017-00824,
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`requesting IPR of claims 1-3, 6-8, 11-15, 23-28, and 36-39 based on references that
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`were not relied upon by Western Digital Corp. in its later IPR2018-00082.
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`Institution of IPR2017-00824 was denied on August 17, 2017. Accordingly,
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`7
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`Petitioner will briefly address follow-on issues considered by General Plastic
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 15-19 (PTAB
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`Sept. 6, 2017) (Paper 19) (Section II.B.4.i designated as precedential) (citing
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`NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, slip op. 6-7 (PTAB May 4,
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`2016) (Paper 9)).
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`Petitioner does not claim that it was ignorant of the Harari, Wang, and
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`Dumas references (i.e., those cited in the current petition) when it filed its earlier
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`petition, but such knowledge alone should not be determinative here. Rather, the
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`efficiencies to be gained by the Board and the parties support institution of this
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`second Petition.
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`Petitioner’s new filing is identical in substance to Western Digital’s
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`instituted IPR2018-00082, which is based on wholly different art from that
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`asserted in IPR2017-00824. Thus, there is no shift in position or correction by
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`Petitioner of earlier-asserted arguments from IPR2017-00824. Importantly, there
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`was no coordination between Petitioner and Western Digital in the choice of art to
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`assert in the IPR2017-00824 and IPR2018-00082 or in any other aspect of those
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`filings. In other words, the sort of strategic behavior that counsels against joinder
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`simply is not present here.
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`Moreover, as discussed above, joinder here will not create extra work for the
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`Board and the Patent Owner. IPR2018-00082 has already been instituted. There
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`8
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`will be no new arguments or additional experts or depositions, and there will be no
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`need for additional briefing by any party nor additional decision drafting by the
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`Board. The Board’s final decision will not be delayed. Petitioner will simply be
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`allowed to participate, in an understudy role, in the challenge of the validity of
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`patent claims being asserted against it in district court, and will be subject to any
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`estoppels that might arise therefrom.
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`For the foregoing reasons, the requested joinder is not inequitable, but,
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`rather appropriate.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant joinder of the trial resulting from institution of the new Petition filed
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`concurrently with this Motion, with any trial(s) resulting from institution of
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`Western Digital Corp.’s previously filed Petition for Inter Partes Review of the
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`’802 Patent (ie, IPR2018-00082). In addition, Petitioner respectfully requests a
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`shortened period of six weeks for a Patent Owner Preliminary Response.
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`Respectfully submitted,
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` /David M. Hoffman/
`David M. Hoffman, Reg. No. 54,174
`Fish & Richardson P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`T: 214-292-4034
`F: 877-769-7945
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`Attorney for Petitioner
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`Dated: May 2, 2018
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`Attorney Docket No. 37037-0012IP3
`IPR of U.S. Patent No. 6,088,802
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on May 2, 2018, a complete and entire copy of this Petitioner’s
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`Motion for Joinder was provided via Express Mail, to the Patent Owner by serving
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`the correspondence address of record as follows:
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`Law Office of Robert Rose
`P.O. Box 301272
`Escondido CA 92030-1272
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`/Susan Johnson/
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`Susan Johnson
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(214) 292-4086
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