UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________
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`PNY Technologies, Inc.,
`Petitioner
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`v.
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`Phison Electronics Corp.,
`Patent Owner
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`____________________________________
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`Case IPR2014-00150
`Patent 7,518,879
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`____________________________________
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`JOINT MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. § 42.122(b)
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`____________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________
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`PNY Technologies, Inc.,
`Petitioner
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`v.
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`Phison Electronics Corp.,
`Patent Owner
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`____________________________________
`
`Case IPR2014-00150
`Patent 7,518,879
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`____________________________________
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`JOINT MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. § 42.122(b)
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`I.
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`Attorney Docket No. 23490-0010IP1
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`IPR2014-00150
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Phison Electronics Corp. (“Patent Owner”) and PNY Technologies, Inc.
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`(“Petitioner”) file this Joint Motion for Joinder of the petition for inter partes
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`review of U.S. Patent No. 7,518,879 (“the ’879 patent”) filed by Petitioner on
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`November 14, 2013 (“the Petition”) with the instituted inter partes review
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`proceeding on the ’879 patent (“the Pending IPR”). Patent Owner and Petitioner
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`(“the Parties”) assert that such joinder will promote the “just, speedy, and
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`inexpensive resolution” of both proceedings without prejudice to the Parties. 37
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`C.F.R. § 42.1(b).
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`II.
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`STATEMENT OF MATERIAL FACTS
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`On July 29, 2013, Petitioner filed a first petition for inter partes review of
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`the ’879 patent, which is assigned to Patent Owner. See Case IPR2013-00472,
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`Paper 2. The Board instituted the Pending IPR based on this first petition on
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`February 4, 2014. See id., Paper 10.
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`On November, 14, 2013, Petitioner filed a second petition for inter partes
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`review of the ’879 patent (the Petition).
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`On February 25, the Board authorized the parties to file a joint motion for
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`joinder with IPR2014-00150, and indicated that such joint motion may be
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`accompanied by a proposed revised scheduling order. See id., Paper 14. The
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`proposed schedule included herein is based on these indications.
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`1
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`III. DISCUSSION
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`A. Joinder
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`Attorney Docket No. 23490-0010IP1
`IPR2014-00150
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`The Board has authority under 35 U.S.C. § 315(c) to join a second inter
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`partes review petition to an already instituted inter partes review proceeding.
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`While the decision to grant joinder is discretionary, the rules for joinder should be
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`“construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” 37 C.F.R. § 42.1(b).
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`Granting joinder in the present instance would promote “just, speedy, and
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`inexpensive resolution” of both the Petition and the Pending IPR without prejudice
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`to the Parties. By allowing common issues across both proceedings to be briefed
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`and considered together, both proceedings can be resolved efficiently and quickly,
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`while providing significant cost and time savings to the Parties and the Board by
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`avoiding the need to revisit the same issues multiple times in separate proceedings.
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`Further, the Patent Owner has indicated their intent to rely on the same expert in
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`both proceedings. Accordingly, granting joinder will allow significant time and
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`cost savings during discovery through consolidation of the expert depositions.
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`B. Proposed Schedule
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`The Parties have developed and agreed to the following proposed schedule
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`for a proceeding joining the Pending IPR and the Petition. Additionally, the
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`Parties have agreed to reset Deadline 1 and Deadline 2 in IPR2013-00472 to allow
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`2
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`Attorney Docket No. 23490-0010IP1
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`IPR2014-00150
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`the Board time to act on this motion. The table below shows the current schedule
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`for the Pending IPR, as well as the proposed schedule for the joined proceeding.
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`The proposed schedule is contingent upon the Board ruling on this Motion for
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`Joinder and the Petition in IPR2014-00150 by April 7, 2014, one month before
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`Deadline 1 proposed below. Notably, the Parties and the proposed schedule take
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`into account the unavailability of Patent Owner’s expert, who will be traveling
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`abroad from April 27, 2014 through June 3, 2014.
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`Date
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`DATE 1 – Patent Owner response /
`motion to amend
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`DATE 2 – Petitioner reply /
`opposition
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`DATE 3 – Patent Owner reply to
`opposition
`DATE 4 – Petitioner motion for
`observation / exclude evidence /
`request for oral argument
`DATE 5 – Patent Owner response to
`observation / opposition to motion to
`exclude
`DATE 6 – Petitioner reply to
`opposition to motion to exclude
`DATE 7 – Oral argument
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`Current Schedule
`For IPR2013-
`00472
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`April 4, 2014,
`moved to May 5,
`2014 by agreement
`June 4, 2014,
`moved to July 7,
`2014 by agreement
`July 7, 2014
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`Proposed Schedule
`for Joined
`IPR2013-00472 and
`IPR2014-00150
`May 5, 2014
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`July 7, 2014
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`August 8, 2014
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`July 25, 2014
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`August 25, 2014
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`August 8, 2014
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`September 8, 2014
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`August 15, 2014
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`September 15, 2014
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`September 8, 2014
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`October 3, 2014
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`3
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`Attorney Docket No. 23490-0010IP1
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`IPR2014-00150
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`If the Board is unable to rule on the joint motion by April 7, 2014, the Parties
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`request the opportunity to negotiate and submit a new proposed stipulated
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`schedule.
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`IV. CONCLUSION
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`Accordingly, joining the Pending IPR with the Petition would promote “just,
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`speedy, and inexpensive resolution” of both proceedings without prejudice to the
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`Parties. Thus, for at least the reasons presented, the Parties requests joinder of the
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`Pending IPR with the Petition.
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`Dated: 3/19/2014
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`Dated: 3/19/2014
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`Respectfully submitted,
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`/Joshua A. Griswold/
`Joshua A. Griswold
`Reg. No. 46,310
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`Counsel for Patent Owner
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`FISH & RICHARDSON, P.C.
`3200 RBC Plaza
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`60 South Sixth Street
`Minneapolis, MN 55440-1022
`T: 214-292-4034
`F: 877-769-7945
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`/Mark E. Nikolsky/
`Mark E. Nikolsky
`Reg. No. 48,319
`Counsel for Petitioner
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`MCCARTER & ENGLISH, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
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`Attorney Docket No. 23490-0010IP1
`IPR2014-00150
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned
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`certifies that on March 19, 2014, a complete and entire copy of this Patent
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`Owner Phison Electronics Corp’s Joint Motion for Joinder was provided via
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`email to the Petitioner by serving the correspondence email address of
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`record as follows:
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`Mark E. Nikolsky
`MCCARTER & ENGLISH, LLP
`Four Gateway Center
`100 Mulberry Street
`Newark, New Jersey 07102
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`Email: mnikolsky@mccarter.com
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`schokshi@mccarter.com
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` /Susan Johnson/
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`Susan Johnson
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`Fish & Richardson P.C.
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`60 South Sixth Street, Suite 3200
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`Minneapolis, MN 55402
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`(214) 292-4086
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`5
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