`571-272-7822
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`Paper No. 14
`Entered: October 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOSHIBA CORPORATION, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., and APRICORN
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01067
`Patent 6,088,802
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`IPR2018-01067
`Patent 6,088,802
`
`
`INTRODUCTION
`I.
`Toshiba Corporation, Toshiba America Electronic Components, Inc.,
`and Apricorn (collectively “Toshiba” or “Petitioner”), filed a Petition (Paper
`5, “Pet.”) for inter partes review of claims 1, 2, 6, 7, 11, 12, 23–25, 38, and
`39 of U.S. Patent No. 6,088,802 (“the ’802 patent”) (Ex. 1001) pursuant to
`35 U.S.C. §§ 311–319. A few days after filing the Petition, Petitioner filed a
`Motion for Joinder. Paper 6 (“Joinder Motion” or “Mot.”).
`The Joinder Motion seeks to join Petitioner as parties to Western
`Digital Corp. v. SPEX Technologies, Inc., Case IPR2018-00082 (“the 82
`IPR”). Mot. 1. The Joinder Motion indicates Western Digital Corp.
`(“WDC”), Petitioner in the 82 IPR, does not oppose Toshiba’s request to
`join the 82 IPR. Mot. 3. SPEX Technologies, Inc. (“SPEX” or “Patent
`Owner”) filed an Opposition to the Motion. Paper 10 (“Opp.” or
`“Opposition”). Petitioner filed a Reply to Patent Owner’s Opposition.
`Paper 11 (“Reply”).
`As explained further below, we institute trial in this inter partes
`review on the same grounds as instituted in IPR2018-00082, and we grant
`Petitioner’s Motion for Joinder.
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`IPR2018-01067
`Patent 6,088,802
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`II. DISCUSSION
`A.
`Institution of Trial
`In the 82 IPR, WDC challenged claims 1, 2, 6, 7, 11, 12, 23–25, 38,
`and 39 of the ’802 patent on the following grounds:
`
`References
`Harari1 and Anderson2
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
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`§ 103
`
`Claims challenged
`1, 2, 6, 7, 11, 12, 23–25,
`38, and 39
`1, 2, 11, 12, 23, and 39
`
`1, 2, 11, 12, 23, and 39
`
`1, 2, 11, 12, 23, and 39
`
`Harari, Anderson, and
`Wang3
`Harari, Anderson, and
`Dumas4
`Harari, Anderson, Dumas,
`and Wang
`IPR2018-00082 Paper 1, 2. After considering the Petition and the Patent
`Owner’s Preliminary Response in the 82 IPR, we instituted trial for the
`above-identified grounds of unpatentability. See IPR2018-00082 Paper 11,
`2, 43.
`Prior to the 82 IPR, Kingston Technology Company, Inc. filed a
`petition in IPR2017-00824 and Unified Patents Inc. filed a petition in
`IPR2017-01021 challenging at least the same claims (1, 2, 6, 7, 11, 12, 23–
`25, 38, and 39) of the ’802 patent although applying different references in
`those challenges. We denied institution of a trial in both IPR2017-00824
`and IPR2017-00430.
`
`
`1 U.S. Patent No. 5,887,145 (“Harari,” Ex. 1004).
`2 Don Anderson, PCMCIA System Architecture 16-Bit PC Cards, Second
`Edition, 1995 (“Anderson,” Ex. 1006).
`3 U.S. Patent No. 5,765,027 (“Wang,” Ex. 1019).
`4 U.S. Patent No. 6,199,163 B1 (“Dumas,” Ex. 1005).
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`Patent 6,088,802
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`After we instituted trial in the 82 IPR, Kingston Technology
`Company, Inc. filed a petition in IPR2018-01003 and a motion for joinder as
`a petitioner in the 82 IPR. We instituted trial in Case IPR2018-01003 and
`granted the motion for joinder for Kingston Technology Company, Inc. to be
`joined as a party in the 82 IPR. Case IPR2018-01003, Paper 12.
`Petitioner here (Toshiba Corporation, Toshiba America Electronic
`Components, Inc., and Apricorn) represents that this Petition is substantially
`identical to WDC’s Petition in IPR2018-00082 and challenges the same
`claims based on the same grounds. Mot. 1. We have considered the relevant
`Petitions and we agree with Petitioner’s representation that this Petition is
`substantially identical to the Petition in IPR2018-00082. Compare Pet., with
`IPR2018-00082 Paper 1. Patent Owner did not file a Preliminary Response
`to this Petition.
`Accordingly, for essentially the same reasons stated in our Decision to
`Institute in IPR2018-00082, we conclude Petitioner has established a
`reasonable likelihood of prevailing with respect to at least one challenged
`claim, and we institute trial in this proceeding for claims 1, 2, 6, 7, 11, 12,
`23–25, 38, and 39 on the same grounds as in IPR2018-00082.
`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join a petitioner for inter partes review to a previously instituted inter
`partes review. 35 U.S.C. § 315(c). Section 315(c) provides, in relevant
`part, that “[i]f 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 properly files a petition under section 311.” Id. Furthermore,
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`IPR2018-01067
`Patent 6,088,802
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`subsection 315(b) explains that the one year time bar thereof “shall not apply
`to a request for joinder under subsection (c).”
`Petitioner here argues good cause exists to join Petitioner in the 82
`IPR because: (1) the Petition is substantially identical to the petition in the
`82 IPR “so that the Board can efficiently resolve the common grounds”
`(Mot. 6), (2) the Petition presents no new grounds (id. at 7), (3) the 82 IPR is
`in early stages of the trial and Petitioner will participate in an “understudy
`role,” therefore, joining Petitioner will not impact the schedule of the 82 IPR
`(id.), and (4) joining Petitioner will simplify discovery and briefing in the 82
`IPR (id. at 8–9).
`Patent Owner opposes the present Motion arguing:
`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.
`Opp. 3. Patent Owner further contends a “joint defense group,” presumably
`including Toshiba, “has engaged in incremental petitioning which has
`allowed it to impermissibly benefit from SPEX’s prior arguments and the
`Board’s prior decisions” and, therefore, no efficiencies are gained by
`allowing the requested joinder. Opp. 3–4.
`We are persuaded that there is efficiency in joining Petitioner as
`parties in the 82 IPR. We are not persuaded there is any prejudice to Patent
`Owner by granting Petitioner’s motion for joinder. Patent Owner’s
`arguments regarding incremental petitioning were essentially addressed in
`our Decision on Institution in the 82 IPR. Paper 11, 16–20 (addressing
`Patent Owner’s arguments concerning exercising our discretion based on the
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`IPR2018-01067
`Patent 6,088,802
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`General Plastic factors). We were not persuaded by Patent Owner’s
`arguments in that Decision on Institution and we remain unpersuaded now.
`Accordingly, we grant Petitioner’s Motion for Joinder with the 82
`IPR, subject to the condition that:
`Petitioner here (i.e., Toshiba Corporation, Toshiba
`America Electronic Components, Inc., and Apricorn) will be
`bound by all
`substantive and procedural
`filings and
`representations of current Petitioner in IPR2018-00082 (i.e.,
`Western Digital Corporation and Kingston Technology
`Company, Inc.), without a separate opportunity to be heard,
`whether orally or in writing, unless and until the proceeding is
`terminated with respect to Western Digital Corporation and
`Kingston Technology Company, Inc.
`In view of the foregoing, we determine that joinder based upon the
`above-noted condition will have little or no impact on the timing, cost, or
`presentation of the trial on the instituted grounds. Moreover, discovery and
`briefing will be simplified if Petitioner is joined as a party to the 82 IPR.
`
`III. ORDERS
`After due consideration of the record before us, and for the foregoing
`
`reasons, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted for claims of the ’802 Patent as follows: (1) claims 1, 2, 6,
`7, 11, 12, 23–25, 38, and 39 as obvious under 35 U.S.C. § 103(a) over Harari
`and Anderson, (2) claims 1, 2, 11, 12, 23, and 39 as obvious under 35 U.S.C.
`§ 103(a) over Harari, Anderson, and Wang, (3) claims 1, 2, 11, 12, 23, and
`39 as obvious under 35 U.S.C. § 103(a) over Harari, Anderson, and Dumas,
`and (4) claims 1, 2, 11, 12, 23, and 39 as obvious under 35 U.S.C. § 103(a)
`over Harari, Anderson, Dumas, and Wang;
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`IPR2018-01067
`Patent 6,088,802
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2018-00082 is granted, and Toshiba Corporation, Toshiba America
`Electronic Components, Inc., and Apricorn are joined as petitioners in
`IPR2018-00082;
`FURTHER ORDERED that the grounds on which an inter partes
`review was instituted in Case IPR2018-00082 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Toshiba Corporation, Toshiba America
`Electronic Components, Inc., and Apricorn will be bound by all substantive
`and procedural filings and representations of current Petitioner in IPR2018-
`00082 (i.e., Western Digital Corporation and Kingston Technology
`Company, Inc.), without a separate opportunity to be heard, whether orally
`or in writing, unless and until the proceeding is terminated with respect to
`Western Digital Corporation and Kingston Technology Company, Inc.;
`FURTHER ORDERED that the schedule for this proceeding shall be
`governed by the current schedule and any changes in the schedule for
`IPR2018-00082;
`FURTHER ORDERED that IPR2018-01067 is terminated under
`37 C.F.R. § 42.72, and that all future filings are to be made only in IPR2018-
`00082;
`FURTHER ORDERED that the case caption in IPR2018-00082 for all
`further submissions shall be changed to add Toshiba Corporation, Toshiba
`America Electronic Components, Inc., and Apricorn as named Petitioners,
`and to indicate by footnote the joinder of Toshiba Corporation, Toshiba
`America Electronic Components, Inc., and Apricorn to that proceeding, as
`indicated in the attached sample case caption; and
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`IPR2018-01067
`Patent 6,088,802
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`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-00082.
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`PETITIONER:
`Douglas Stewart
`Jared Schuettenhelm
`Patrick Connolly
`doug.stewart@bracewell.com
`jared.schuettenhelm@bracewell.com
`patrick.connolly@bracewell.com
`
`
`Hersh H. Mehta
`Mark I. Bently
`MCDERMOTT WILL & EMERY LLP
`hmehta@mwe.com
`mbentley@mwe.com
`
`PATENT OWNER:
`Peter Lambrianakos
`Vincent J. Rubino
`Enrique W. Iturralde
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`KINGSTON TECHNOLOGY COMPANY, INC.,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-000825
`Patent 6,088,802
`
`
`
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`5 Kingston Technology Company, Inc., which filed a Petition in Case
`IPR2018-01003, has been joined as a petitioner in this proceeding. Toshiba
`Corporation, Toshiba America Electronic Components, Inc., and Apricorn,
`which filed a Petition in Case IPR2018-01067, have been joined as
`petitioners in this proceeding.
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`