throbber
Trials@uspto.gov
`Tel: 571-272-7822
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` Paper: 25
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` Entered: February 16, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`OYSTER OPTICS, LLC,
`Patent Owner.
`____________
`
`IPR2020–01347
`Patent 6,665,500 B2
`____________
`
`
`
`Before JAMESON LEE, PATRICK M. BOUCHER, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`DECISION
`
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`Granting Motion for Joinder
`35 U.S.C. § 315(c)
`
`
`
`

`

`IPR2020-01347
`Patent 6,665,500 B2
`
`
`I. INTRODUCTION
`On July 24, 2020, Cisco Systems, Inc. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1, 2, 4–9, and
`17–19 of U.S. Patent No. 6,665,500 B2 (Ex. 1001, “the ’500 patent”).
`Concurrently with the Petition, Petitioner filed a Motion for Joinder (Paper
`3, “Mot.”), requesting joinder with Infinera Corporation v. Oyster Optics,
`LLC, IPR2020-00325 (“’325 IPR”). Oyster Optics, LLC (“Patent Owner”)
`did not file an Opposition to the Motion for Joinder or a Preliminary
`Response. Petitioner indicates that the petitioner in the ’325 IPR, Infinera
`Corporation (“’325 Petitioner”), does not oppose the requested joinder.
`Mot. 3.
`On January 22, 2021, we issued an order seeking clarification of
`Petitioner’s role in the proposed joined proceeding, and authorized
`responses by both Petitioner and Patent Owner. Paper 8. Petitioner filed a
`response. Paper 9 (“Petitioner’s Order Response,” “Pet. Order Resp.”).
`Patent Owner did not.
`For the reasons discussed below, we institute an inter partes review
`and grant Petitioner’s Motion for Joinder.
`II. RELATED PROCEEDING
`In the ’325 IPR, we instituted inter partes review of the ’500 patent
`on the following three grounds:
`
`2
`
`

`

`IPR2020-01347
`Patent 6,665,500 B2
`
`
`Ground
`
`References/Basis
`
`35 U.S.C. §
`
`1
`
`2
`
`3
`
`Barr1 and Hofstetter2
`
`Sasaki4 and Ishii5
`
`103(a)3
`
`103(a)
`
`Sasaki, Ishii, Davarian6
`
`103(a)
`
`Claims
`Challenged
`1, 2, 4, 6–9,
`17–19
`1, 2, 4, 17–
`19
`5
`
`’325 IPR, Paper 12, 6–7, 49.
`III. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding challenges the same claims on
`identical grounds of unpatentability, and relies on the same evidence,
`including the same declarant testimony, as presented in the ’325 IPR.
`Pet. 2; Mot. 3. Because the present Petition is virtually identical to the
`petition in the ’325 IPR, we determine that Petitioner has demonstrated
`
`
`1 U.S. Patent No. 4,763,357, issued Aug. 9, 1988 (Ex. 1005, “Barr”).
`2 U.S. Patent No. 5,903,376, issued May 11, 1999 (Ex. 1006, “Hofstetter”).
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–288 (2011), amended 35 U.S.C. § 103. Because the
`application from which the ’500 patent issued was filed before March 16,
`2013, the effective date of the relevant amendment, the pre-AIA version of
`§ 103 applies.
`4 U.S. Patent No. 6,486,992 B1, issued Nov. 26, 2002 (Ex. 1009, “Sasaki”).
`5 Y. Ishii, K. Tsukamoto, S. Komai, and N. Morinaga, “Coherent Fiber-
`Optic Microcellular Radio Communication System Using a Novel RF to-
`Optic Conversion Scheme,” IEEE Transactions on Microwave Theory and
`Technique, vol. 45, no. 9, pp. 2241-2248, September 1995 (Ex. 1010,
`“Ishii”).
`6 F. Davarian and J. Sumida, “A Multipurpose Digital Modulator,” IEEE
`Communications Magazine, vol. 27, no. 2, pp. 36-45, February1989 (Ex.
`1011, “Davarian”).
`
`3
`
`

`

`IPR2020-01347
`Patent 6,665,500 B2
`
`sufficiently under 35 U.S.C. § 315(c) that the Petition in this case warrants
`the institution of an inter partes review under 35 U.S.C. § 314(a).
`IV. MOTION FOR JOINDER
`A party to an inter partes review may be joined as a party to another
`inter partes review, subject to certain statutory provisions:
`(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 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
`parties review under section 314.
`35 U.S.C. § 315(c) (2018); see also 37 C.F.R. § 42.122 (b) (“Any request
`for joinder must be filed, as a motion under § 42.22, no later than one
`month after the institution date of any inter partes review for which joinder
`is requested.”).
`A motion for joinder should (1) set forth reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (PTAB April 24, 2013). As the moving party,
`Petitioner bears the burden of proving that it is entitled to the requested
`relief. 37 C.F.R. § 42.20(c).
` As an initial matter, the present Motion for Joinder meets the
`requirements of 37 C.F.R. § 42.122(b) because the Motion was filed on July
`24, 2020, which is not later than one month after the ’325 IPR was
`instituted on June 26, 2020.
`
`4
`
`

`

`IPR2020-01347
`Patent 6,665,500 B2
`
`Further, Petitioner contends that joinder will not affect the schedule
`in the ’325 IPR and agrees to assume an “understudy” role with the
`following conditions that would apply as long as the ’325 Petitioner
`remains an active party:
`(a) all substantive filings by Petitioner in the joined
`proceeding be consolidated with the substantive filings of the
`’325 Petitioner, unless a filing concerns Cisco’s individual
`status in the proceeding (e.g., a motion to terminate);
`(b) Petitioner will not materially participate in calls with
`the Board, depositions, or any oral hearing;
`(c) Petitioner shall be bound by any agreement between
`Patent Owner and the ’325 Petitioner concerning discovery
`and/or depositions; and
`(d) Petitioner at deposition shall not receive any direct,
`cross examination or redirect time beyond that permitted for the
`’325 Petitioner alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and the ’325 Petitioner.
`Mot. 10–12.
` In its Order Response, Petitioner further clarifies that as an
`understudy:
`so long as the ’325 Petitioner remains an active participant in
`the proceeding, (i) Cisco [Petitioner] will not make any
`substantive filings or take any discovery in the joined
`proceeding and (ii) Cisco will be bound by the substantive
`filings, representations to the Board, and discovery that the ’325
`Petitioner makes or has made, except those non-substantive
`matters which clearly relate to the ’325 Petitioner alone.
`Pet. Order. Resp. 2.
`Based on the facts and circumstances discussed above, we determine
`that Petitioner has established good cause for joining the ’325 IPR as a
`party. Specifically, we determine that the joinder of Petitioner to the ’325
`
`5
`
`

`

`IPR2020-01347
`Patent 6,665,500 B2
`
`IPR would be unlikely to require any delay or modification to the
`scheduling order already in place for the ’325 IPR. We also determine that
`Patent Owner will not be prejudiced unduly by this joinder. Thus, granting
`the Motion for Joinder, under these circumstances, would help “secure the
`just, speedy, and inexpensive resolution” of these proceedings. See 37
`C.F.R. § 42.1(b). For the above reasons, we grant the Motion for Joinder.
`V. ORDER
`
`It is:
` ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1, 2, 4–9, and 17–19 of the ’500
`patent on each ground of unpatentability presented in the Petition as applied
`to the corresponding claims;
` FURTHER ORDERED that Petitioner’s Motion for Joinder is
`granted, and Petitioner is joined as a petitioner in the ’325 IPR;
` FURTHER ORDERED that the claims and grounds of
`unpatentability on which trial was instituted in the ’325 IPR are unchanged;
`FURTHER ORDERED that the Scheduling Order and any of its
`modifications entered in the ’325 IPR will govern the schedule of the ’325
`IPR;
`
`FURTHER ORDERED that Petitioner shall have only an
`“understudy” role in the ’325 IPR under the conditions specified above;
`FURTHER ORDERED that in the ’325 IPR, Petitioner shall make no
`substantive filings and shall be bound by all substantive filings by the ’325
`Petitioner unless Petitioner first receives authorization from the Board to
`make its own substantive filing;
`
`6
`
`

`

`IPR2020-01347
`Patent 6,665,500 B2
`
` FURTHER ORDERED that all further filings shall be made in the
`’325 IPR and that no further filings shall be made in this proceeding;
`FURTHER ORDERED that copies of this Decision be entered into
`the records of the ’325 IPR and this proceeding; and
` FURTHER ORDERED that the case caption in the ’325 IPR be
`modified to reflect the granted joinder in accordance with the attached
`example caption.
`
`
`7
`
`

`

`IPR2020-01347
`Patent 6,665,500 B2
`
`PETITIONER:
`
`Samuel Borodach
`Joseph V. Colaianni
`Gretchen A. DeVries
`borodach@fr.com
`colaianni@fr.com
`devries@fr.com
`IPR21141-0006IP1@fr.com
`PTABInbound@fr.com
`
`
`PATENT OWNER:
`Wayne M. Helge
`James T. Wilson
`Aldo Noto
`whelge@dbjg.com
`jwilson@dbjg.com
`anoto@dbjg.com
`
`
`
`
`8
`
`

`

`IPR2020-01347
`Patent 6,665,500 B2
`
`
`EXAMPLE CAPTION
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INFINERA CORPORATION
`and CISCO SYSTEMS, INC.
`Petitioner,
`
`v.
`
`OYSTER OPTICS, LLC,
`Patent Owner.
`____________
`
`IPR2020–003257
`Patent 6,665,500 B2
`____________
`
`
`
`
`
`7 Cisco Systems, Inc.., which filed a petition in IPR2020-01347, has been
`added as a petitioner in this proceeding.
`
`9
`
`

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