UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` TOSHIBA CORPORATION, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., AND APRICORN,
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`Petitioners
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`v.
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`SPEX TECHNOLOGIES, INC.,
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`Patent Owner
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`Case IPR2018-01067
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`Patent No. 6,088,802
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(C) AND
`37 C.F.R. §§ 42.22, 42.122(B)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` TOSHIBA CORPORATION, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., AND APRICORN,
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`Petitioners
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`v.
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`SPEX TECHNOLOGIES, INC.,
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`Patent Owner
`
`Case IPR2018-01067
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`Patent No. 6,088,802
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(C) AND
`37 C.F.R. §§ 42.22, 42.122(B)
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Petitioners Toshiba Corporation, Toshiba America Electronic Components,
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`Inc., and Apricorn (“Joinder Petitioners”) respectfully request joinder1 pursuant to
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`35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) of the above-captioned
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`petition for inter partes review (“Joinder Petition”)—filed contemporaneously with
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`this Motion—with the pending inter partes review concerning the same claims of
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`the same patent, captioned Western Digital Corporation v. SPEX Technologies,
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`Inc., Case No. IPR2018-00082, which was recently instituted on April 25, 2018.
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`See IPR2018-00082, Paper No. 11.
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`The Joinder Petition is substantially identical to the petition in IPR2018-
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`00082, and relies on the same grounds for which that IPR was instituted.2
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`Moreover, Joinder Petitioners expressly agree to adhere to the schedule in
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`IPR2018-00082 and take an “understudy” role in the proceedings. Accordingly,
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`1 Permission to file a motion for joinder is automatically granted by Rule
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`42.122(b). Samsung Electronics Co., Ltd v. Fujinomaki, IPR2017-01017, Paper 12
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`at 4 (May 26, 2017).
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`2 While the petitions are not verbatim, they differ only in non-substantive respects.
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`Specifically, the Joinder Petition has been updated to reflect the formalities of
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`different petitioners and real parties in interest, and the related matters have been
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`updated.
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`1
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`joinder is appropriate because it will promote efficient resolution of the validity of
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`the involved patent, will not cause any undue delay, and will not prejudice or
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`burden the parties in IPR2018-00082.
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`This Motion for Joinder is timely filed under 37 C.F.R. §§ 42.22 and
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`42.122(b) as it is submitted within (and no later than) one month after the April 25,
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`2018 institution date of IPR2018-00082.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`On October 16, 2017, Petitioner Western Digital Corporation (“WD” or
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`“Original Petitioner”) requested inter partes review of claims 1-2, 6-7, 11-12, 23-
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`25, and 38-39 of U.S. Patent No. 6,088,802 (“the ‘802 patent”), citing four grounds
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`of unpatentability.
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` IPR2018-00082, Paper No. 1. Patent Owner, SPEX
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`Technologies, Inc. (“SPEX” or “Patent Owner”), submitted a preliminary response
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`on January 26, 2018, and WD submitted a reply to SPEX’s preliminary response
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`on February 20, 2018. IPR2018-00082, Paper Nos. 6 and 9. SPEX submitted a
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`sur-reply on February 26, 2018. IPR2018-00082, Paper No. 10.
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` On April 25, 2018, the Board issued an institution decision and scheduling
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`order in IPR2018-00082. IPR2018-00082, Paper Nos. 11 and 12. In accordance
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`with the Supreme Court’s recent decision in SAS Institute, Inc. v. Iancu, No. 16-
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`969, 584 U.S. __ (2018), because WD showed a reasonable likelihood of success
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`in proving at least claims 38 and 39 unpatentable over the prior art, the Board
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`2
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`instituted IPR2018-00082 on all challenged claims (claims 1-2, 6-7, 11-12, 23-25,
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`and 38-39) “with respect to all grounds set forth in the Petition.” IPR2018-00082,
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`Paper No. 11, at 43.
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`The Joinder Petition that accompanies the present Motion for Joinder
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`challenges the same claims on the same grounds as the petition in IPR2018-00082.
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`Compare Joinder Petition at 1-68 with Petition in IPR2018-00082, Paper No. 1, at
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`1-67. Accordingly, as noted above, the Joinder Petition is substantially identical to
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`WD’s petition in IPR2018-00082 and presents no new issues.
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`Original Petitioner WD has indicated that it does not oppose the joinder.
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`Petitioners indicated to Patent Owner that Petitioners intended to file the instant
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`motion on Monday, April 30, 2018, and contacted Patent Owner on Thursday, May
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`10, 2018 to determine Patent Owner’s position on the instant motion. As of
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`Friday, May 2, 2018 at 3:00 PM PDT, Patent Owner has yet to respond.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A. LEGAL STANDARD
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`The Leahy-Smith America Invents Act (“AIA”) explicitly provides for
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`joinder of inter partes review (“IPR”) proceedings. The statutory provision
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`governing joinder of IPR proceedings is 35 U.S.C. § 315(c) that reads as follows:
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`(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
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`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
`partes review under section 314.
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`“Any request for joinder must be filed, as a motion under § 42.22, no later than one
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`month after the institution date of any inter partes review for which joinder is
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`requested.” 37 C.F.R. § 42.122(b).
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`In exercising its discretion to grant joinder, the Board considers the impact
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`of substantive and procedural issues on the proceedings, as well as other
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`considerations, while being “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” See Dell Inc. v. Network-1 Security Solutions,
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`Inc., Case IPR2013-00385, Paper No. 17, July 29, 2013 at 3. The Board should
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`“also take into account the policy preference for joining a party that does not
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`present new issues that might complicate or delay an existing proceeding.” Id. at
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`10.3 Under this framework, joinder of the present IPR with IPR2018-00082 is
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`3 Citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)
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`(“The Office anticipates that joinder will be allowed as of right – if an inter partes
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`review is instituted on the basis of a petition, for example, a party that files an
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`appropriate.
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`“A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified.” Id. at 4. Each of these four factors is addressed in turn below.
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`B.
`FACTOR 1: JOINDER IS APPROPRIATE IN ACCORDANCE
`WITH THE STATUTORY FRAMEWORK
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`The present Motion for Joinder is timely under 37 C.F.R. § 42.122(b)
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`because it is filed within one month of the April 25, 2018, institution decision of
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`IPR2018-00082 and, at the time of filing, IPR2018-00082 is pending. Moreover,
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`the one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply to the Joinder
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`Petition because the Joinder Petition is filed concurrently with this Motion for
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`Joinder. See 37 C.F.R. § 42.122(b).
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`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. et al. v. Raytheon Co., Case IPR2016-00962, Paper
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`12 at 9 (Aug. 24, 2016) (internal quotations and citations omitted); Enzymotec Ltd.
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`identical petition will be joined to that proceeding, and thus allowed to file its own
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`briefs and make its own arguments.”) (emphasis added).
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`5
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`et al. v. Neptune Techs. & Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6
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`(July 9, 2014) (The Board is “mindful of a policy preference for joining a party
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`that does not present new issues that might complicate or delay an existing
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`proceeding.”). Here, joinder is appropriate with IPR2018-00082 because the
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`Joinder Petition relies on identical arguments and the same grounds raised in the
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`existing proceeding. Specifically, the Joinder Petition involves the same patent,
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`the same claims, the same prior art, the same exhibits, the same declarations from
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`the same experts, and the same grounds that were instituted in IPR2018-00082.
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`Compare Joinder Petition at 1-68 with IPR2018-0082 IPR Petition, Paper No. 6, at
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`1-67. The only differences between the Joinder Petition and the IPR Petition in
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`IPR2018-00082 involve updates to the petitioners, real parties in interest, related
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`matters, and the like.
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`Accordingly, because the Joinder Petition and the petition in IPR2018-00082
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`are substantially identical, good cause exists for joining the proceedings so that the
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`Board can efficiently resolve the common grounds in both. Joinder is also
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`appropriate because the Joinder Petition does not present any new issues that
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`would complicate or delay the proceeding. Finally, joinder is appropriate because
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`the substantial questions of invalidity raised in IPR2018-00082 affect the Joinder
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`Petitioners given that they are accused of infringing the same claims.
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`6
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`C.
`FACTOR 2: NO NEW GROUNDS OF UNPATENTABILITY
`ARE ASSERTED
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`As noted above with respect to Factor 1, the Joinder Petition is substantially
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`identical to the petition in IPR2018-00082, and involves the same patent, the same
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`claims, the same prior art, and the same grounds as IPR2018-00082. Accordingly,
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`the Joinder Petition does not present any new grounds of unpatentability.
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`D.
`FACTOR 3: JOINDER WOULD HAVE NO DISCERNIBLE
`IMPACT ON THE TRIAL SCHEDULE FOR IPR2018-00082
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`Given that the Joinder Petition is substantially identical to the petition in
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`IPR2018-00082, there are no new issues for the Patent Owner to address, nor will
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`Patent Owner be required to present any additional responses. Moreover,
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`IPR2018-00082 was only recently instituted on April 25, 2018, and Petitioners
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`hereby expressly consent to the existing trial schedule in IPR20108-00082. As
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`noted below, Petitioners also agree to take an “understudy” role in IPR2018-00082
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`as long as the Original Petitioner remains an active party to the proceedings. And
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`because the Joinder Petition relies on the same expert declarations, no additional
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`depositions will be needed for the proposed joined proceeding. Accordingly,
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`joinder will have little or no impact on the trial schedule and proceedings in
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`IPR2018-00082.
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`E.
`FACTOR 4: PROCEDURES TO SIMPLIFY BRIEFING AND
`DISCOVERY
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`Joining the IPR petitions will simplify discovery. As explained above, the
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`7
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`Joinder Petition relies on the same grounds and expert declarations, and Joinder
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`Petitioners expressly agree to the existing trial schedule in IPR2018-00082.
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`Joinder Petitioners further agree that, so long as the Original Petitioner remains an
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`active party to the proceeding, the following conditions—as previously approved
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`by the Board in similar circumstances—shall apply:
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`a. All filings by the Joinder Petitioners in the joined proceedings shall be
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`consolidated with the filings of the Original Petitioner, unless a filing
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`solely concerns issues that do not involve the Original Petitioner;
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`b. The Joinder Petitioners shall not be permitted to raise any new
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`grounds not already instituted by the Board, or introduce any
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`argument or discovery not already introduced by the Original
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`Petitioner;
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`c. Joinder Petitioners shall be bound by any agreement between Patent
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`Owner and the Original Petitioner concerning discovery and/or
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`depositions; and
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`d. Joinder Petitioners at deposition shall not receive any direct, cross
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`examination or redirect time beyond that permitted for the Original
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`Petitioner in this proceeding alone under either 37 C.F.R. § 42.53 or
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`any agreement between Patent Owner and the Original Petitioner.
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`See Mylan Pharms. Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5 (PTAB
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`8
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`Apr. 10, 2015); Samsung Elecs., Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`12 at 6 (Aug. 24, 2016); Nidec Corp. v. Intellectual Ventures II LLC, IPR2018-
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`00598 Paper 10 at 5-6 (Apr. 26, 2018).
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`Finally, Patent Owner will not be prejudiced by the Board’s grant of this
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`Motion because Joinder Petitioners expressly agree to take a support or
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`“understudy” role. Therefore, there would be no additional procedural complexity
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`as Joinder Petitioners would only take the primary role if Original Petitioner ceases
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`to participate in the IPR. See, e.g. Teva Pharmaceuticals USA, Inc. v. Allergan,
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`Inc., IPR2017-00579, Paper No. 9 at 5 (granting motion for joinder over a year
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`after a complaint was filed but within one month of when an IPR was instituted,
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`based on party’s supporting role); Mylan Pharmaceuticals Inc. v. Novartis AG et
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`al., IPR2015-00268, Paper No. 17 at 5 (granting motion for joinder based on
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`party’s supporting role).
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`IV. CONCLUSION
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`For the foregoing reasons, Joinder Petitioners respectfully request that their
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`Petition for Inter Partes Review of the ‘802 patent be instituted, and that the
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`proceeding be joined with Western Digital Corporation v. SPEX Technologies,
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`Inc., Case No. IPR2018-00082.
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`9
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`Date: May 11, 2018
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`Respectfully submitted,
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`/Douglas Stewart/
`Douglas Stewart (Reg. No. 51,060)
`BRACEWELL LLP
`701 Fifth Avenue, Suite 6200
`Seattle, WA 98104
`(206) 204-6200
`doug.stewart@bracewell.com
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`Attorney for Petitioners Toshiba
`Corporation and Toshiba America
`Electronic Components, Inc.
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`
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`/Hersh H. Mehta/
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`Hersh H. Mehta (Reg. No. 62,336)
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street
`Chicago, IL 60606-0029
`Phone: (312) 984-7682
`Fax: (312) 984-7700
`hmehta@mwe.com
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`Attorney for Petitioner Apricorn
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`10
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing MOTION
`FOR JOINDER UNDER 35 U.S.C. § 315(C) AND 37 C.F.R. §§ 42.22, 42.122(B),
`was served on May 11, 2018, by Express Mail to the attorney of record for the
`Patent Owner at the following address:
`
`
`Law Office of Robert Rose
`PO Box 301272
`Escondido CA 92030-1272
`
`
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`
`Peter Lambrianakos (Reg. No. 58,279)
`plambrianakos@brownrudnick.com
`Alfred R. Fabricant
`afabricant@brownrudnick.com
`Vincent J. Rubino, III (Reg. No. 68,594)
`vrubino@brownrudnick.com
`Enrique W. Iturralde (Reg. No. 72,883)
`eiturralde@brownrudnick.com
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`Attorneys for Patent Owner
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`/Hersh H. Mehta/
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`Hersh H. Mehta
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`11
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