Trials@uspto.gov
`571-272-7822
`
` Paper 15
`Entered: August 13, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MACRONIX INTERNATIONAL CO., LTD.,
`MACRONIX ASIA LIMITED, MACRONIX (HONG KONG) CO., LTD.,
`and MACRONIX AMERICA, INC.,
`Petitioner,
`
`v.
`
`SPANSION LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00898
`Patent 7,151,027 B1
`
`
`Before DEBRA K. STEPHENS, JUSTIN T. ARBES, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`571-272-7822
`
` Paper 15
`Entered: August 13, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MACRONIX INTERNATIONAL CO., LTD.,
`MACRONIX ASIA LIMITED, MACRONIX (HONG KONG) CO., LTD.,
`and MACRONIX AMERICA, INC.,
`Petitioner,
`
`v.
`
`SPANSION LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00898
`Patent 7,151,027 B1
`
`
`Before DEBRA K. STEPHENS, JUSTIN T. ARBES, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`IPR2014-00898
`Patent 7,151,027 B1
`
`
`Introduction
`Macronix International Co., Ltd., Macronix Asia Limited, Macronix
`(Hong Kong) Co., Ltd., and Macronix America, Inc. (collectively
`“Petitioner”) filed a Petition (Paper 2) and a Corrected Petition (Paper 6) to
`institute an inter partes review of claims 7 and 14 of U.S. Patent No.
`7,151,027 B1 (Ex. 1001, “the ’027 patent”) pursuant to 35 U.S.C. §§ 311-
`319 and a motion for joinder with Case IPR2014-00108 (Paper 3) (“Mot.”).
`Patent Owner Spansion LLC (“Patent Owner”) filed an opposition (Paper
`10) (“Opp.”) to Petitioner’s motion. For the reasons that follow, Petitioner’s
`motion is denied.1
`
`
`Related Case IPR2014-00108
`On November 8, 2013, Petitioner filed a petition to institute an inter
`partes review of claims 1-14 of the ’027 patent. IPR2014-00108, Paper 1.
`On May 8, 2014, we granted the petition and instituted an inter partes
`review of claims 1-6 and 8-13. IPR2014-00108, Paper 16, 2. Petitioner
`subsequently filed its Petition and motion for joinder (Paper 3) in the instant
`proceeding challenging claims 7 and 14 on June 4, 2014, and filed its
`Corrected Petition on June 13, 2014. Petitioner also filed in Case IPR2014-
`00108, a proposed revised schedule, should its motion for joinder be
`granted. IPR2014-00108, Paper 21.
`
`
`
`1 In a decision entered concurrently, the Petition is granted, and an inter
`partes review is instituted, on a single ground of unpatentability.
`
`
`
`2
`
`
`
`IPR2014-00898
`Patent 7,151,027 B1
`
`
`Analysis
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (AIA), created new administrative trial proceedings, including
`inter partes review, as an efficient, streamlined, and cost-effective
`alternative to district court litigation. The AIA permits the joinder of like
`proceedings. The Board, acting on behalf of the Director, has the discretion
`to join an inter partes review with another inter partes review. 35 U.S.C.
`§ 315. Section 315(c) provides (emphasis added):
`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 partes review under section 314.
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The
`Board will determine whether to grant joinder on a case-by-case basis,
`taking into account the particular facts of each case, substantive and
`procedural issues, and other considerations. See 157 CONG. REC. S1376
`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether
`and when to allow joinder, the Office may consider factors including “the
`breadth or unusualness of the claim scope” and claim construction issues).
`When exercising its discretion, the Board is mindful that patent trial
`regulations, including the rules for joinder, must be construed to secure the
`just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C.
`§ 316(b); 37 C.F.R. § 42.1(b). As such, any motion for joinder must be filed
`“no later than one month after the institution date of any inter partes review
`
`
`
`3
`
`
`
`IPR2014-00898
`Patent 7,151,027 B1
`
`for which joinder is requested.” 37 C.F.R. § 42.122(b).
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
`motion for joinder should: (1) set forth the 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 Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15, 4 (Apr. 24, 2013); Frequently Asked Question
`H5 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`Petitioner contends that joining this case with Case IPR2014-00108
`would assist in securing the just, speedy, and inexpensive resolution of both
`cases. Mot. 5. Petitioner essentially argues that joining the cases would
`have only a minimal impact on Patent Owner, because in this case Petitioner
`relies on the same declarant as in Case IPR2014-00108, adopts the same
`primary prior art reference (Yuzuriha2) as in Case IPR2014-00108, and
`asserts only a few additional references. Id. at 4-5. Petitioner further argues
`that Patent Owner should have considered, already, the combination of
`Yuzuriha and Tsukamoto,3 because those references have been asserted
`against Patent Owner in a co-pending International Trade Commission (ITC)
`investigation. Id. at 5. Petitioner further argues that its proposed revised
`schedule would add only seven weeks to each of the Due Dates under the
`existing Schedule, for example, extending Due Date 7 from January 13,
`2015, to March 3, 2015. IPR2014-00108, Paper 21, 2-3.
`
`
`2 US 6,458,655 B1.
`3 US 2003/0042520 A1.
`
`
`
`4
`
`
`
`IPR2014-00898
`Patent 7,151,027 B1
`
`
`Patent Owner opposes Petitioner’s motion. Paper 10. In particular,
`Patent Owner argues that the Corrected Petition in the instant proceeding
`raises numerous substantive issues that are not present in Case IPR2014-
`00108 and that Patent Owner would be prejudiced by Petitioner’s proposed
`revised schedule. Id. at 1-10. Patent Owner contends that the existing
`schedule should be extended by at least 12 weeks in the event we decide to
`join the cases. Id. at 8-9. Patent Owner’s proposal would extend Due
`Date 7, for example, to April 7, 2015. Id. at 9. Petitioner further contends
`that the same extended schedule be adopted for related Case IPR2014-
`00105, at least through Due Date 3. Id. at 10.
`Under either of the parties’ proposed schedules, joinder would have a
`significant adverse impact on our ability to complete the existing proceeding
`in a timely manner, which weighs against granting the motion for joinder.
`The Board is charged with securing the just, speedy, and inexpensive
`resolution of every proceeding, and has the discretion to join or not join
`proceedings to ensure that objective is met. 37 C.F.R. §§ 42.1(b), 42.122.
`Case IPR2014-00108 was filed more than eight months ago and is already
`well underway, with Patent Owner having cross-examined Petitioner’s
`Declarant and filed its response, and Petitioner’s reply being due on October
`6, 2014. See IPR2014-00108, Paper 17. Joinder at this stage would require
`a lengthy delay in the ongoing review. Further, Patent Owner objects to
`Petitioner’s proposed revised schedule if joinder is permitted. See Paper 10.
`Nevertheless, while this proceeding is not being joined with Case IPR2014-
`00108, we will attempt to schedule both proceedings to maximize
`efficiencies and to complete both in a timely manner.
`
`
`
`5
`
`
`
`IPR2014-00898
`Patent 7,151,027 B1
`
`
`Petitioner has not shown that the patentability issues raised in the
`instant Corrected Petition can be resolved in a joined proceeding without
`substantially affecting the schedule in Case IPR2014-00108. Petitioner,
`therefore, has not satisfied its burden of proof in showing entitlement to the
`requested relief—namely, joinder with Case IPR2014-00108. Accordingly,
`we decline to exercise our discretion under 35 U.S.C. § 315(c) to authorize
`joinder, and deny Petitioner’s motion.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s motion for joinder is denied.
`
`
`
`6
`
`
`
`IPR2014-00898
`Patent 7,151,027 B1
`
`PETITIONER:
`
`Michael M. Murray
`Andrew R. Sommer
`mmurray@winston.com
`asommer@winston.com
`
`
`PATENT OWNER:
`
`J. Steven Baughman
`Gabrielle E. Higgins
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`
`
`
`
`
`7
`
`
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