IPR2018-01067
`PATENT NO. 6,088,802
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`
`TOSHIBA CORPORATION, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., AND APRICORN,
`Petitioners,
`
`
`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
`
`
`
`
`_________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`
`Case No. IPR2018-01067
`
`
`
`
`PATENT NO. 6,088,802
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`
`TOSHIBA CORPORATION, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., AND APRICORN,
`Petitioners,
`
`
`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
`
`
`
`
`_________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
`
`Case No. IPR2018-01067
`
`
`
`
`
`IPR2018-01067
`PATENT NO. 6,088,802
`
`
`I.
`
`Legal Standard
`
`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.
`
`II. 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 the Joinder
`
`Petitioners. 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
`
`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,
`
`
`
`2
`
`
`
`IPR2018-01067
`PATENT NO. 6,088,802
`
`
`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
`
`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. The joint defense group has
`
`engaged in incremental petitioning which has allowed it to impermissibly benefit
`
`
`
`3
`
`
`
`IPR2018-01067
`PATENT NO. 6,088,802
`
`
`from SPEX’s prior arguments and the Board’s prior decisions. No efficiencies will
`
`be gained by allowing otherwise time-barred Petitioners (or any other co-defendant
`
`who received a complaint in September 2016) to insert themselves 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.1
`
`III. Petitioners Are Otherwise Time-Barred Petitioners and Have Identified
`No Legitimate Reason for Joinder
`
`Joinder should be denied because Petitioners fail to identify a legitimate
`
`basis to join the 1067-IPR to the 82-IPR. First, Petitioners incorrectly identify
`
`timeliness, a statutory prerequisite, as sufficient basis. Second, Petitioners identify
`
`overall commonality (i.e., substantially identical) as their basis for joinder,
`
`conceding that the 1067-IPR involves redundant grounds on the same prior art and
`
`same claims. Neither timeliness nor commonality constitutes a legitimate reason
`
`for joinder.
`
`Petitioners have the burden of establishing entitlement to joinder and
`
`articulating a reason to join the proceeding. In Kyocera, the joining party
`
`expressed its 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
`
`1 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 15, 2018.
`
`
`
`4
`
`
`
`IPR2018-01067
`PATENT NO. 6,088,802
`
`
`in any cross-examination of its expert. IPR2013-00004, Paper 15 at 2-3.
`
`Here, Petitioners present no such rationale. Petitioners do not allege
`
`ignorance of the 82-IPR prior art, including Harari, during their one-year statutory
`
`period. Petitioners identify no reason why it could not file this petition within a
`
`year of being served process in the district court case. Instead, Petitioners concede
`
`to sitting on their hands and engaging in a wait-and-see strategy. Petitioners do not
`
`identify any new arguments, testimony, evidence, and/or issues, admitting that they
`
`will not introduce any argument or discovery not already introduced by Western
`
`Digital.
`
`Petitioners present no reason why they are entitled to joinder. Petitioners
`
`identify commonality between the 82-IPR and the 1067-IPR as the sole basis for
`
`meeting each of the four factors required in a motion for joinder. Commonality
`
`alone must not compel automatic joinder. And reapplying commonality to satisfy
`
`each independent factor renders Factor 1 meaningless. Other than increasing
`
`expenses for SPEX, Petitioners have identified no legitimate reason to join this
`
`proceeding. Without reason, Petitioners fail to show entitlement to the requested
`
`relief.
`
`Moreover, as explained in Section II 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
`
`
`
`5
`
`
`
`IPR2018-01067
`PATENT NO. 6,088,802
`
`
`rehearing request and denies institution on the 82-IPR, there are no efficiencies to
`
`be gained by joining the 1067-IPR to a non-instituted proceeding. Moreover, if the
`
`Board denies institution on the 82-IPR, the 1067-IPR should be denied for the
`
`same reasons because Petitioners admit that the 82-IPR and the 1067-IPR are
`
`substantially the same and involve the same challenged grounds and prior art.
`
`Without any legitimate reason to join the proceeding (and potentially no
`
`proceeding to join), the Board should exercise its discretion to deny this motion
`
`and deny institution of the petition.
`
`IV. 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 11, 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
`
`
`
`
`6
`
`
`
`IPR2018-01067
`PATENT NO. 6,088,802
`
`
`CERTIFICATE OF SERVICE
`
`A copy of PATENT OWNER’S OPPOSITION TO PETITIONERS’
`
`MOTION FOR JOINDER has been served on Petitioners’ counsel of record as
`
`follows:
`
`Douglas Stewart (Reg. No. 51,060)
`Jared Schuettenhelm (Reg. No. 59,539)
`Patrick Connolly (Reg. No. 69,570)
`Bracewell LLP
`701 Fifth Avenue, Suite 6200
`Seattle, WA 98104
`Email: doug.stewart@bracewell.com
`Email: jared.schuettenhelm@bracewell.com
`Email: patrick.connolly@bracewell.com
`
`Hersh H. Mehta (Reg. No. 62,336)
`McDermott Will & Emery LLP
`444 West Lake St.
`Chicago, IL 60606-0029
`Email: hmehta@mwe.com
`
`Mark I. Bentley (Reg. No. 60,460)
`McDermott Will & Emery LLP
`4 Park Plaza, Suite 1700
`Irvine, CA 92614
`Email: mbentley@mwe.com
`
`
`June 11, 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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