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` 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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`__________________
`
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION
`AND
`ORACLE AMERICA, INC.
`Petitioners
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE
`Patent Owner
`
`________________
`
`
`Case No. IPR2014-00949
`Patent No. 6,978,346
`
`__________________
`
`
`PATENT OWNER’S MOTION FOR JOINDER
`WITH IPR2014-00901
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`SUMMARY OF ARGUMENT ....................................................................... 1
`
`III.
`
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`
`IV. ARGUMENT ................................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`Joinder Would Avoid Waste and the Risk of Inconsistency. ................ 3
`
`Joinder Would Not Add Any New Grounds of Unpatentability. .......... 3
`
`Joinder Would Not Affect the Schedule But Would Reduce
`Costs. ..................................................................................................... 4
`
`D.
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`Joinder Would Simplify Briefing and Discovery. ................................ 4
`
`V.
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`PROPOSED LOGISTICS FOR JOINED PROCEEDINGS ........................... 5
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`VI. CONCLUSION ................................................................................................ 6
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`IPR2014-00949
`
`Joinder Motion
`
`Page ii
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`
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`TABLE OF AUTHORITIES
`
`Cases
`
`Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17
`(July 29, 2013)
`
`Motorola Mobility LLC v. Softview LLC, IPR2013-00257, Paper 10
`(June 20, 2013)
`
`5
`
`3, 5
`
`
`
`Statutes
`
`35 U.S.C. § 315(c) .................................................................................................1, 2
`
`
`
`Regulations
`
`37 C.F.R. § 42.1 ......................................................................................................... 1
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.122(b) ............................................................................................1, 3
`
`37 C.F.R. § 42.22 ....................................................................................................... 1
`
`IPR2014-00949
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`Joinder Motion
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`Page iii
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`
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`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. §§ 42.22 and 42.122(b), the Patent Owner files this
`
`motion asking the Board to exercise its discretion under 35 U.S.C. § 315(c) to join
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`this inter partes review with identical IPR2014-00901 directed at the same ’346
`
`patent under review. This motion is timely filed pursuant to the Board’s January
`
`12, 2015 e-mail authorizing the Patent Owner to file this motion by January 16,
`
`2015. None of the collective petitioners (VMware, IBM, and Oracle) oppose
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`joinder of this case (IPR2014-00949) with IPR2014-00901.
`
`II.
`
`SUMMARY OF ARGUMENT
`
`Joinder of this pair of cases is appropriate because the two trials involve
`
`identical issues and identical evidence from the petitioners. Joinder would not add
`
`any new patentability issues and would not impact the trial schedule at all. Instead,
`
`joinder would permit the identical patentability issues to be litigated and decided
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`more efficiently and economically in a single joined proceeding, thereby saving the
`
`Board and the parties from having to conduct a duplicative proceeding while also
`
`eliminating the risk of inconsistencies. See 37 C.F.R. § 42.1 (“This part shall be
`
`construed to secure the just, speedy, and inexpensive resolution of every
`
`proceeding.”)
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`IPR2014-00949
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`Joinder Motion
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`Page 1 of 6
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`
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`III. STATEMENT OF MATERIAL FACTS
`
`1.
`
`VMware filed a petition for inter partes review of the ’346 Patent on June 4,
`
`2014. That petition was accompanied by a declaration from Dr. Robert
`
`Horst. That petition was assigned Case No. IPR2014-00901.
`
`2.
`
`On June 13, 2014, IBM and Oracle filed a substantively identical petition,
`
`which was assigned Case No. IPR2014-00949. The petition filed by IBM
`
`and Oracle included copies of all the same exhibits filed with the IPR2014-
`
`00901 petition. It too was supported by Dr. Horst’s declaration.
`
`3.
`
`On December 11, 2014, the Board instituted an IPR trial in the IPR2014-
`
`00901 case on challenge 1, whether Hathorn in view of Mylex renders
`
`obvious claims 1-9 of the ’346 Patent.
`
`4.
`
`On December 11, 2014, the Board also instituted an IPR trial in the
`
`IPR2014-00949 case on challenge 1, whether Hathorn in view of Mylex
`
`renders obvious claims 1-9 of the ’346 Patent.
`
`5.
`
`The decisions instituting IPR trials in Case Nos. i IPR2014-00901 and
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`IPR2014-00949 were each accompanied by identical scheduling orders.
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`IV. ARGUMENT
`
`The Board has discretion under 35 U.S.C. § 315(c) to “join as a party to [an
`
`instituted] inter partes review any person who properly files a petition under
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`IPR2014-00949
`
`Joinder Motion
`
`Page 2 of 6
`
`
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`section 311 [that] warrants institution of an inter partes review.” Any party,
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`including the patent owner, may request joinder. 37 C.F.R. § 42.122(b). The
`
`Board has explained that a motion for joinder must (1) explain the reasons why
`
`joinder is appropriate, (2) identify any new ground of unpatentability in the
`
`proceeding sought to be joined, (3) explain how impact of the joinder on schedule
`
`and costs would be minimized, and (4) explain how briefing and/or discovery
`
`could be simplified via joinder. Motorola Mobility LLC v. Softview LLC,
`
`IPR2013-00257, Paper 10 at 2-3 (June 20, 2013). All four factors favor joinder in
`
`this case, as the following subsections explain.
`
`A.
`
`Joinder Would Avoid Waste and the Risk of Inconsistency.
`
`Joinder of these identical cases is appropriate because joinder would
`
`enhance efficiency by consolidating the identical patentability issue and any other
`
`subsidiary or procedural issues that may arise, avoid duplicative efforts by the
`
`parties and the Board, and prevent inconsistencies among the two proceedings,
`
`without delaying the schedule of either case and without prejudicing any
`
`petitioner. Joinder is amply justified in these circumstances.
`
`B.
`
`Joinder Would Not Add Any New Grounds of Unpatentability.
`
`A typical concern with joinder is the complication arising from the addition
`
`of new patentability issues. That is not a concern at all in this case, as the only
`
`IPR2014-00949
`
`Joinder Motion
`
`Page 3 of 6
`
`
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`patentability challenge in each trial is exactly the same. Not only is the
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`patentability challenge the same, the petitioners’ evidence is also exactly the same.
`
`C.
`
`Joinder Would Not Affect the Schedule But Would Reduce Costs.
`
`A joined trial can be conducted according to the same schedule that has been
`
`set for each individual trial. Joinder would have no impact on the schedule.
`
`Joinder would also reduce costs for the Board and the parties by consolidating
`
`discovery, filings, and argument in a single proceeding, thereby easing the
`
`administrative burden of maintaining separate proceedings.
`
`D.
`
`Joinder Would Simplify Briefing and Discovery.
`
`As noted above, joinder would simplify briefing and discovery. In the
`
`absence of joinder, the Patent Owner expects to file substantively identical papers
`
`and evidence in both cases. Similarly, the Patent Owner would expect to provide
`
`and seek the same discovery in both cases, in the absence of joinder. Thus, from
`
`the Patent Owner’s perspective, conducting the same briefing and discovery once,
`
`rather than twice, would be more efficient and less expensive.
`
`Likewise, the petitioners can reasonably be expected to offer briefing and to
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`seek and offer discovery that is the same or largely the same. Thus, to the extent
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`that the petitioners’ activities would not prejudice the Patent Owner, the petitioners
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`IPR2014-00949
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`Joinder Motion
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`Page 4 of 6
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`
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`would also realize more efficient and less expensive briefing and discovery
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`through consolidated briefing and discovery.
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`V.
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`PROPOSED LOGISTICS FOR JOINED PROCEEDINGS
`
`The Patent Owner respectfully submits that all petitioners in the joined
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`proceeding (1) collectively file consolidated papers subject to the regular page
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`limits, unless the Board grants a motion for additional pages, (2) share deposition
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`time and not separately examine or cross-examiner witnesses in deposition, and (3)
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`share oral argument time, just as joint petitioners usually do.
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`The petitioners have agreed to coordinate filings and discovery to the extent
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`reasonably possible but request that IBM and Oracle be granted leave to file a
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`reasonable number of additional pages—no more than 7—for any filing to address
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`“only points of disagreement with points asserted in [VMware]’s consolidated
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`filing. Any such filing by [IBM and Oracle] must specifically identify and explain
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`each point of disagreement. [IBM and Oracle] may not file separate arguments in
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`support of points made in [VMware]’s consolidated filing.” Motorola Mobility
`
`LLC v. Softview LLC, IPR2013-00256, Paper 10 at 11 (June 20, 2013). Patent
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`Owner would have a corresponding number of additional pages for its responsive
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`briefing “limited to the issues raised in the [IBM and Oracle] filing.” Id. IBM and
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`Oracle further request they be granted the opportunity for non-duplicative
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`IPR2014-00949
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`Joinder Motion
`
`Page 5 of 6
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`
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`questioning of any witness at deposition or trial in the allotted time. Dell Inc. v.
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`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17 at 9 (July 29, 2013).
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`VI. CONCLUSION
`
`For at least the foregoing reasons, the Patent Owner respectfully requests
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`that the Board join this inter partes review with IPR2014-00901.
`
`Respectfully submitted,
`
`Date: 2015 Jan. 16
`
`By: / M.C. Phillips /
`
`Alexander C.D. Giza
`Reg. No. 51,740
`Backup Counsel for Patent Owner
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
`agiza@raklaw.com
`
`
`Matthew C. Phillips
`Reg. No. 43,403
`Lead Counsel for Patent Owner
`Renaissance IP Law Group LLP
`9600 SW Oak Street, Suite 560
`Portland, Oregon 97223
`Telephone: (503) 964-1129
`Facsimile: (503) 517-9919
`matthew.phillips@renaissanceiplaw.com
`Derek Meeker
`Reg. No. 53,313
`Backup Counsel for Patent Owner
`Renaissance IP Law Group LLP
`9600 SW Oak Street, Suite 560
`Portland, Oregon 97223
`Telephone: (360) 606-8922
`Facsimile: (503) 517-9919
`derek.meeker@renaissanceiplaw.com
`
`IPR2014-00949
`
`Joinder Motion
`
`Page 6 of 6
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`
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`CERTIFICATE OF SERVICE
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`I certify that on January 16, 2015, the foregoing PATENT OWNER’S
`
`MOTION FOR JOINDER WITH IPR2014-00901, including all attached papers
`
`filed therewith, have been served on the petitioner’s counsel of record via email, as
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`agreed to by counsel, at the following email addresses:
`
`Todd M. Friedman: IBM-Safe-Storage-KEService@kirkland.com
`
`Gregory S. Arovas: IBM-Safe-Storage-KEService@kirkland.com
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`with a courtesy copy to the IPR2014-00901 petitioner’s counsel of record via
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`email, as agreed to by counsel, at the following email addresses:
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`Katherine Kelly Lutton: IPR27450-0011IP1@fr.com
`
`Timothy W. Riffe: IPR27450-0011IP1@fr.com
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Reg. No. 43,403
`
`
`
`IPR2014-00949
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`Joinder Motion COS
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`Page 1 of 1
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