IPR2018-01003
`PATENT NO. 6,088,802
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`
`v.
`
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`
`
`Patent No. 6,088,802
`Filing Date: June 4, 1997
`Issue Date: July 11, 2000
`Title: PERIPHERAL DEVICE WITH
`INTEGRATED SECURITY FUNCTIONALITY
`
`
`__________________________________________________________________
`
`SPEX TECHNOLOGIES, INC.’S OPPOSITION TO PETITIONER’S
`MOTION FOR JOINDER, COORDINATION, AND A SHORTENED TIME
`TO FILE A PRELIMINARY RESPONSE
`
`Case No. IPR2018-01003
`__________________________________________________________________
`
`
`
`
`
`
`PATENT NO. 6,088,802
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`
`v.
`
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`
`
`Patent No. 6,088,802
`Filing Date: June 4, 1997
`Issue Date: July 11, 2000
`Title: PERIPHERAL DEVICE WITH
`INTEGRATED SECURITY FUNCTIONALITY
`
`
`__________________________________________________________________
`
`SPEX TECHNOLOGIES, INC.’S OPPOSITION TO PETITIONER’S
`MOTION FOR JOINDER, COORDINATION, AND A SHORTENED TIME
`TO FILE A PRELIMINARY RESPONSE
`
`Case No. IPR2018-01003
`__________________________________________________________________
`
`
`
`
`
`
`
`IPR2018-01003
`PATENT NO. 6,088,802
`
`I.
`
`Introduction
`
`Petitioner Kingston’s motion exceeds the scope of a request for joinder and
`
`requests relief for which the rules expressly require prior authorization. Absent
`
`authorization, which Kingston neither sought nor received, the Board must deny
`
`entry of this omnibus motion. Should the Board grant authorization
`
`notwithstanding the violation of the Board’s rules, the Board should deny each of
`
`Kingston’s three requests. First, the Board should deny Kingston’s request for
`
`coordination of proceedings because Kingston’s petition is time-barred absent
`
`joinder. Second, the Board should deny Kingston’s request for a shortened
`
`preliminary response period because Kingston has not met its burden to show a
`
`sufficient need or any entitlement to impose such an unfairly prejudicial limitation
`
`on SPEX. Third, the Board should exercise its discretion to deny joinder because
`
`Kingston has not identified a legitimate reason why it should be given a second
`
`bite at the ’802 Patent when (a) Kingston’s own challenges to the ’802 Patent have
`
`been denied institution; and (b) Petitioners’ serial challenges to the ’802 Patent
`
`used this Board’s prior institution decisions as a road map to ultimately attain
`
`institution. Thus, for the reasons set forth herein, SPEX respectfully submits that
`
`the motion should be denied in its entirety.
`
`II. Kingston’s Omnibus Motion Must Be Denied Entry
`
`Kingston’s motion must be denied entry in its entirety because it requests
`
`
`
`1
`
`
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`IPR2018-01003
`PATENT NO. 6,088,802
`
`relief for which it did not seek authorization. 37 C.F.R. § 42.20(a)-(b) (“Relief,
`
`other than a petition requesting the institution of trial, must be requested in the
`
`form of a motion. . . . A motion will not be entered without Board authorization.”).
`
`Without obtaining SPEX’s position and the Board’s prior authorization, Kingston
`
`moved for two forms of relief that require prior authorization: a coordination of
`
`parallel proceedings and a shortened preliminary response period. Neither motion
`
`constitutes the kind for which authorization is automatically granted. Seeking
`
`authorization would not have been impractical, because at the time of filing this
`
`petition, Kingston’s counsel was aware of SPEX’s representation by the same
`
`counsel in case numbers IPR2017-00430 (institution denied), IPR2017-00824
`
`(institution denied), IPR2017-00825 (institution denied), IPR2017-01021
`
`(pending), IPR2018-00082 (pending), and IPR2018-00084 (pending), and
`
`Kingston’s counsel knew that the same Panel presided over the preceding pending
`
`IPRs, particularly the IPR to which Kingston seeks to join. The rules are clear:
`
`without prior authorization, this motion will not be entered into the record.
`
`Because Kington’s motion must be denied entry, the Petition must be denied
`
`institution as time-barred under 35 U.S.C. 315(b).
`
`III. Kingston’s Motion to Shorten the Time to File a Preliminary Response
`Is Improper and Should Be Denied
`
`Kingston’s request to shorten the time to file a preliminary response should
`
`be denied because it is improper, and Kingston has failed to meet its burden to
`
`
`
`2
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`
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`IPR2018-01003
`PATENT NO. 6,088,802
`
`show any entitlement to the requested relief. Despite being in regular contact with
`
`SPEX’s counsel in related proceedings (e.g., IPR2017-01021), Kingston did not
`
`seek SPEX’s position or attempt to contact the Panel regarding this request.
`
`Additionally, Kingston cites no authority supporting its request and identifies no
`
`urgency that sufficiently merits deprivation of the full three months typically
`
`prescribed to patent owners under similar circumstances. Petitioner’s arguments
`
`regarding the similarity of petitions are irrelevant. See, e.g., IPR2018-00090,
`
`Paper 12 at 2.
`
`SPEX does not waive any portion of the 3-month period to file a preliminary
`
`response as prescribed by 37 C.F.R. § 42.107(b) and intends to file a preliminary
`
`response1 by August 10, 2018. In addition to addressing whether institution should
`
`be denied under the General Plastic factors, SPEX may file a preliminary response
`
`raising additional arguments responding to the records relating to the ’802 Patent
`
`and presenting additional evidence in the form of expert testimony. Accordingly,
`
`Kingston’s motion places an undue burden and unfairly prejudices SPEX and
`
`should be denied.
`
`IV. Kingston’s Motion for Coordination Is Improper and Should Be Denied
`
`
`
`Kingston’s alternative motion for coordination incorrectly presumes that
`
`institution is proper without joinder to an instituted proceeding. However, absent
`
`
`1 Patent Owner acknowledges the Board’s discretion to deny these motions and to deny institution of the
`accompanying petition prior to the filing of a preliminary response, and Patent Owner would not oppose such action
`by the Board.
`
`
`
`3
`
`
`
`IPR2018-01003
`PATENT NO. 6,088,802
`
`joinder, Kingston’s petition is time-barred under 35 U.C.S. § 315(b), and Kingston
`
`identifies no authority to the contrary. Accordingly, Kingston has not shown any
`
`entitlement to coordination as an alternative form a relief absent joinder, and the
`
`motion should be denied.
`
`V.
`
` Kingston’s Motion for Joinder Should Be Denied
`
`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When
`
`exercising that discretion, the Board construes the relevant authorities to secure the
`
`just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
`
`As shown herein, the circumstances here warrant a denial of joinder.
`
`A. The ’802 Patent’s History at the PTAB Identifies a Clear Trend of
`Improper Road-Mapping at the Expense of Patent Owner and the
`Board
`
`In September 2016, SPEX concurrently filed seven complaints alleging
`
`infringement of the ’802 Patent by certain defendants, including Kingston and
`
`Western Digital. Paper 9 at 2. Shortly thereafter, defendants embarked on what
`
`will amount to a two-and-a-half-year road-mapping campaign against the ’802
`
`Patent before the PTAB.
`
`On December 14, 2016, Unified Patents filed a petition in case number
`
`IPR2017-00430 (“430-IPR”) alleging that claims 1-39 of the ’802 Patent were
`
`unpatentable, in part, over Jones and Harari. 430-IPR, Paper 2 at 3-4. The Board
`
`
`
`4
`
`
`
`IPR2018-01003
`PATENT NO. 6,088,802
`
`denied institution on all grounds. 430-IPR, Paper 8.
`
`On January 31, 2017, Kingston filed a second petition in case number
`
`IPR2017-00824 (“824-IPR”) alleging that claims 1-3. 6-8, 11-15, 23-28, and 36-39
`
`of the ’802 Patent were unpatentable over Jones and other references. 824-IPR,
`
`Paper 2 at 3-4. The Board again denied institution on all grounds. 824-IPR, Paper
`
`8.
`
`On October 16, 2017, after having reviewed two preliminary responses by
`
`SPEX and two institution denials by the PTAB, Western Digital filed a third
`
`petition in case number IPR2018-00082 (“82-IPR”) alleging that claims 1-2, 6-7,
`
`11-12, 23-25, and 38-39 of the ’802 Patent were unpatentable over Harari and
`
`other references. 82-IPR, Paper 1. In compliance with post-SAS procedures, the
`
`Board instituted the 82-IPR while finding that Western Digital failed to establish a
`
`reasonable likelihood that claims 1-2, 6-7, 11-12, and 23-25 were unpatentable.
`
`82-IPR, Paper 11.
`
`On May 9, 2018, SPEX timely requested reconsideration and reversal of
`
`institution of the 82-IPR. 82-IPR, Paper 15. In its rehearing request, SPEX
`
`informed the Board that it no longer asserted claims 38 and 39 in the district court
`
`proceeding, and accordingly, that substantial judicial resources would be spared by
`
`denying a petition in which the petitioner no longer held an interest in the
`
`invalidity of the only two claims that met the institution standard. 82-IPR, Paper
`
`
`
`5
`
`
`
`IPR2018-01003
`PATENT NO. 6,088,802
`
`15 at 2-3. The rehearing request remains pending at this time.
`
`Along the way, defendants have inefficiently consumed the limited
`
`resources of Patent Owner SPEX and the PTAB. Kingston and its joint defense
`
`group have engaged in incremental petitioning which has allowed it to
`
`impermissibly benefit from SPEX’s prior arguments and the Board’s prior
`
`decisions. No efficiencies will be gained by allowing otherwise time-barred
`
`Kingston (or any other co-defendant who received a complaint in September 2016)
`
`to insert itself into this proceeding. SPEX respectfully urges the Board to deny the
`
`request for joinder and the underlying petition before SPEX and the Board waste
`
`additional resources.2
`
`B. Kingston Is an Otherwise Time-Barred Petitioner and Has
`Identified No Legitimate Reason for Joinder
`
`Joinder should be denied because Kingston fails to identify a legitimate basis
`
`for joinder to the 1003-IPR. Instead, Kingston lists boilerplate answers to other
`
`factors (i.e., new grounds, impact, and simplification), conceding that the 1003-
`
`IPR involves redundant grounds on the same prior art and same claims.
`
`In its motion, Kingston relies on a frequently-cited Kyocera case to set forth
`
`the requirements for joinder, including that the petitioner articulate a reason to join
`
`the proceeding. Mot. at 3. In IPR2013-00004, the joining party expressed its
`
`2 As noted herein, Patent Owner intends to submit a preliminary response addressing General Plastic factors and
`additional reasons why the Board should deny institution. However, the Board is well-aware of the record of the 82-
`IPR and the related proceedings. Patent Owner respectfully requests the Board exercise its discretion to deny
`institution before the preliminary response is due on August 10, 2018.
`
`
`
`6
`
`
`
`IPR2018-01003
`PATENT NO. 6,088,802
`
`belief that joinder was the only option to participate in the review of the challenged
`
`patents and that the petitioner’s reliance on the joining party’s expert’s testimony
`
`in the proceeding necessitated the joining party’s participation in any cross-
`
`examination of its expert. IPR2013-00004, Paper 15 at 2-3.
`
`Here, Kingston presents no such rationale. This is not Kingston’s only
`
`chance at review. Kingston admits knowledge of the 82-IPR prior art, including
`
`Harari, when it filed its previous 824-IPR. Mot. at 8. Instead of including the
`
`invalidity arguments raised in the 82-IPR when it filed its previous 824-IPR,
`
`Kingston sat on its hands and engaged in a wait-and-see strategy. Kingston does
`
`not identify any new arguments, testimony, evidence, and/or issues, admitting that
`
`it will not introduce any argument or discovery not already introduced by Western
`
`Digital. Mot. at 8-9. While Kingston’s boilerplate points go to the impact of
`
`joinder and simplification of already-joined proceedings, it presents no reason why
`
`it requests joinder. Other than increasing expenses for SPEX, Kingston has no
`
`legitimate reason to join this proceeding.
`
`As explained in Section V-A above, the Board has already ruled that
`
`Western Digital failed to show a reasonable likelihood that claims 1-2, 6-7, 11-12,
`
`and 23-25 were unpatentable. 82-IPR, Paper 11. If the Board grants SPEX’s
`
`rehearing request and denies institution on the 82-IPR, there are no efficiencies to
`
`be gained by joining the 1002-IPR to a non-instituted proceeding. Moreover, if the
`
`
`
`7
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`
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`IPR2018-01003
`PATENT NO. 6,088,802
`
`Board denies institution on the 82-IPR, the 1002-IPR should be denied for the
`
`same reasons because Kingston admits that the 82-IPR and the 1002-IPR are
`
`substantially the same and involve the same challenged grounds and prior art.
`
`Without any legitimate reason to join a proceeding (and potentially no proceeding
`
`to join), the Board should exercise its discretion to deny this motion and deny
`
`institution of the petition.
`
`VI. Conclusion
`
`
`
`For the reasons stated above, and any additional reasons the Board may
`
`deem relevant to the motion, Patent Owner SPEX respectfully requests denial of
`
`the motion in its entirety and denial of institution.
`
`Dated: June 4, 2018
`
`
`
`By: /Peter Lambrianakos /
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: plambrianakos@brownrudnick.com
`
`
`
`
`
`8
`
`
`
`IPR2018-01003
`PATENT NO. 6,088,802
`
`CERTIFICATE OF SERVICE
`
`A copy of SPEX TECHNOLOGIES, INC.’S OPPOSITION TO
`
`PETITIONER’S MOTION FOR JOINDER, COORDINATION, AND A
`
`SHORTENED TIME TO FILE A PRELIMINARY RESPONSE has been served
`
`on Petitioner’s counsel of record as follows:
`
`David Hoffman (Reg. No. 54,174)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR37307-0012IP3@fr.com
`
`Martha Hopkins (Reg. No. 46,277)
`Law Offices of S. J. Christine Yang
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`IPR@sjclawpc.com
`
`
`
`June 4, 2018
`
`
`
`
`
`By:
`
`/Peter Lambrianakos /
`Peter Lambrianakos (Reg. No. 58,279)
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: plambrianakos@brownrudnick.com
`
`
`
`
`
`
`
`
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