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 No.: IPR2018-01067
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`Patent No. 6,088,802
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`PETITIONERS’ REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
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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 No.: IPR2018-01067
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`Patent No. 6,088,802
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`PETITIONERS’ REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION FOR JOINDER
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`Petitioners Toshiba Corporation, Toshiba America Electronic Components,
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`IPR2018-01067
`Patent No. 6,088,802
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`Inc., and Apricorn (“Petitioners”) hereby respond to Patent Owner’s Opposition to
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`Petitioners’ Motion for Joinder (“Opposition”). As explained below, the
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`Opposition provides no basis for denying Petitioners’ Motion to Join (“Motion”).
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`Petitioners’ Motion should therefore be granted.
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`I.
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`PATENT OWNER’S ALLEGATIONS OF “ROAD MAPPING” ARE
`ERRONEOUS, MERITLESS, AND IRRELEVANT
`Patent Owner does not contest that IPR2018-00082 filed by Western Digital
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`(“WD IPR”)—which Petitioners seek to join—was timely filed, nor does Patent
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`Owner dispute that Petitioner’s Motion is timely. Accordingly, Patent Owner does
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`not, and cannot, point to anything procedurally improper with Petitioners’ Motion.
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`Instead, Patent Owner references IPR petitions filed by other parties, such as
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`Unified Patents and Kingston, and vaguely insinuates that these petitions
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`demonstrate that Petitioners engaged in what Patent Owner characterizes as
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`“incremental petitioning.” Patent Owner’s allegations of improper and prejudicial
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`conduct have no foundation in fact. Patent Owner does not dispute that these earlier-
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`filed IPR petitions (1) were not filed by Petitioners, (2) were not joined by
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`Petitioners, and (3) relied on different combinations of prior art than the WD IPR,
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`which is the only IPR that Petitioners seek to join. Nor has Patent Owner provided
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`any basis to allege that Petitioners had any involvement with any of the other IPR
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`1
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`petitions.
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`IPR2018-01067
`Patent No. 6,088,802
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`Patent Owner’s attempts to associate Petitioners with the earlier-filed IPR
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`petitions, and to allege that Petitioners have tried to “benefit from SPEX’s prior
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`arguments” in those IPRs, is unsupported. Patent Owner has failed to rebut
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`Petitioners’ showing that joinder with WD’s IPR is warranted.
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`II.
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`PETITIONER’S MOTION AMPLY DEMONSTRATES THAT
`JOINDER IS APPROPRIATE
`Patent Owner’s allegation that “Petitioners fail to identify a legitimate basis
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`to join” the IPR is similarly incorrect. The Board has previously identified the
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`existence of a well-defined “policy preference for joining a party that does not
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`present new issues that might complicate or delay an existing proceeding,” which
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`Petitioners cited in their Motion. Enzymotec Ltd. et al. v. Neptune Techs. &
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`Bioresources, Inc., IPR2014-00556, Paper No. 19 at 6 (July 9, 2014); Dell Inc. v.
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`Network-1 Security Solutions, Inc., IPR2013-00385, Paper No. 17 at 10 (July 29,
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`2013) (The Board should “take into account the 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.”). In its Opposition, Patent Owner acknowledges that Petitioners’ IPR
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`petition does not identify any new arguments or issues. Accordingly, Petitioners’
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`IPR Petition is precisely the type of petition that invokes the Board’s stated policy
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`preference for granting joinder, and the Opposition identifies no basis for the Board
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`2
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`IPR2018-01067
`Patent No. 6,088,802
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`to disregard this policy.1 Because they are accused of infringing the same claims as
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`Western Digital, Petitioners also explained that joinder is appropriate because it
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`would allow the Board to efficiently resolve substantial questions of invalidity that
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`are common to the Petitioners and Western Digital. Accordingly, Petitioners have
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`identified multiple legitimate grounds for joining WD’s IPR.
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`While Patent Owner alleges in a single sentence that joinder would
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`“increase[e] expenses for SPEX,” it has offered nothing to substantiate its allegation
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`of prejudice, nor can it, as Petitioners have expressly agreed: (1) to consolidate
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`filings with Western Digital; (2) not to introduce any argument or discovery not
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`already introduced by Western Digital; (3) to be bound by any agreement between
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`Patent Owner and Western Digital concerning discovery; and (4) not to receive any
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`direct, cross examination, or redirect time beyond that permitted for Western Digital.
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`Patent Owner’s unsupported allegations of added expense thus ring hollow. To the
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`contrary, Petitioners would be substantially prejudiced by denial of the Motion,
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`which would allow Patent Owner to evade the substantial questions of invalidity
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`raised by WD’s IPR in the event that WD settles with the Patent Owner prior to
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`resolution of this proceeding.
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`1 The “Board routinely grants motions for joinder where the party seeking joinder
`introduces identical arguments and the same grounds raised in the existing
`proceeding.”) (internal quotations and citations omitted). Samsung Elecs. Co.,
`Ltd., et al. v. Raytheon Co., IPR2016-00962, Paper 12 at 9 (Aug. 24, 2016)
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`3
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`IPR2018-01067
`Patent No. 6,088,802
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`Finally, Patent Owner’s speculative arguments regarding the alleged impact
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`of its rehearing request in WD’s IPR are moot given that the Board denied Patent
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`Owner’s request on July 10, 2018. IPR2018-00082, Paper 21. In rendering its
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`decision, the Board noted that Patent Owner “failed to specifically identify in its
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`Request any matter Patent Owner believes to have been misapprehended or
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`overlooked in our Decision” and rejected Patent Owner’s arguments that the Board
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`had abused its discretion in instituting WD’s IPR. Id. at 2-4.
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`III. CONCLUSION
`Patent Owner has not rebutted Petitioners’ showing that joinder is appropriate
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`and will have no prejudicial impact on the proceedings in IPR2018-00082.
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`Accordingly, Petitioners respectfully request that the Motion be granted.
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`Date: July 11, 2018
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`Respectfully submitted,
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`/s/ Douglas F. Stewart
`Douglas F. Stewart (Reg. No. 51,060)
`BRACEWELL LLP
`701 Fifth Avenue, Suite 6200
`Seattle, WA 98104
`P: (206) 204-6200; F: (800) 404-3970
`doug.stewart@bracewell.com
`Attorney for Petitioners Toshiba
`Corporation and Toshiba America
`Electronic Components, Inc.
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`4
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`IPR2018-01067
`Patent No. 6,088,802
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`/s/ Hersh H. Mehta
`Hersh H. Mehta (Reg. No. 62, 336)
`MCDERMOTT WILL & EMERY LLP
`444 West Lake Street
`Chicago, IL 60606
`P: (312) 984-7682; F: (312) 984-7700
`hmehta@mwe.com
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`Attorney for Petitioner Apricorn
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`5
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`IPR2018-01067
`Patent No. 6,088,802
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of PETITIONERS’ REPLY TO
`PATENT OWNER’S OPPOSITION TO PETITIONERS’ MOTION FOR
`JOINDER was served on July 11, 2018, to the following counsel of record for the
`Patent Owner:
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`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
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`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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`/s/ Douglas F. Stewart
`Douglas F. Stewart (Reg. No. 51,060)
`BRACEWELL LLP
`701 Fifth Avenue, Suite 6200
`Seattle, WA 98104
`P: (206) 204-6200; F: (800) 404-3970
`doug.stewart@bracewell.com
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`Attorney for Petitioners Toshiba
`Corporation and Toshiba America
`Electronic Components, Inc.
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`6
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