Paper No.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`DELL INC., HEWLETT-PACKARD COMPANY, and NETAPP, INC.,
`Petitioners,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE,
`Patent Owner.
`
`Case IPR2015-00549
`Patent No. 6,978,346
`
`__________________________________________________________________
`
`MOTION FOR JOINDER
`PURSUANT TO 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`DELL INC., HEWLETT-PACKARD COMPANY, and NETAPP, INC.,
`Petitioners,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE,
`Patent Owner.
`
`Case IPR2015-00549
`Patent No. 6,978,346
`
`__________________________________________________________________
`
`MOTION FOR JOINDER
`PURSUANT TO 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`Petitioners Dell Inc., Hewlett-Packard Company, and NetApp, Inc.
`
`(“Petitioners”) file this Motion for Joinder of their petition for inter partes review
`
`of claims 1-9 of U.S. Patent No. 6,978,346 (the “Joinder Petition”), with the
`
`instituted inter partes review, VMware, Inc., v. Electronics and
`
`Telecommunications Research Institute, Case IPR2014-00901 (the “VMware
`
`IPR”), pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b). No
`
`fee is required for this motion.1
`
`I.
`
`APPLICABLE RULES
`
`37 C.F.R. § 42.122(b) states:
`
`Request for joinder. Joinder may be requested by a patent owner or
`petitioner. 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. The time period set forth in
`§ 42.101(b) shall not apply when the petition is accompanied by a request
`for joinder.
`
`II.
`
`RELIEF REQUESTED
`
`1 It is Petitioners’ understanding that the parties to the VMware IPR have requested
`a conference call with the Board to seek approval to file a motion for joinder of the
`VMware IPR with IPR2014-00949 (the “IBM/Oracle IPR”). Should the Board
`merge the VMware IPR and the IBM/Oracle IPR, Petitioners alternatively request
`that the Joinder Petition be merged with the proceeding that results from the
`merger of the VMware IPR and the IBM/Oracle IPR. The Petitioners in the
`IBM/Oracle IPR, specifically International Business Machines Corp. (“IBM”) and
`Oracle America, Inc. (“Oracle”), do not oppose such joinder.
`
`2
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`In this motion, Petitioners request that the Joinder Petition be joined with the
`
`VMware IPR.
`
`III.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On November 30, 2012, Safe Storage, LLC, the purported exclusive
`
`licensee of Electronics and Telecommunications Research Institute (“ETRI” or
`
`“Patent Owner”), filed suit against Petitioners in the District of Delaware, alleging
`
`infringement of U.S. Patent No. 6,978,346 (the “’346 Patent”). Safe Storage LLC
`
`v. Dell Inc., 1:12-cv-01624-GMS, Safe Storage LLC v. Hewlett-Packard Co. and
`
`3PAR Inc., 1:12-cv-01626-GMS, Safe Storage LLC v. NetApp, Inc., 1:12-cv-
`
`01628-GMS (the “Concurrent Litigation”).
`
`2.
`
`On May 23, 2013, Safe Storage, LLC filed suit against VMware, Inc.
`
`(“VMware”) in the district of Delaware, alleging infringement of the ’346 Patent.
`
`Safe Storage LLC v. VMware Inc., 1:13-cv-00928-GMS.
`
`3.
`
`On September 27, 2013, Petitioners filed IPR2013-00635 (the “DHPN
`
`IPR”) requesting review of claims 1-9 of the ’346 Patent.
`
`4.
`
`On March 20, 2014, the Patent Trial and Appeal Board (“Board”)
`
`entered its decision authorizing an inter partes review to be instituted in the DHPN
`
`IPR for claims 1-3 and 5-8 of the ’346 Patent as being anticipated under 35 U.S.C.
`
`§ 102(e) by Hathorn.
`
`3
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`5.
`
`On June 4, 2014, Petitioner VMware was granted a filing date for the
`
`the VMware IPR petition requesting review of claims 1-9 of the ’346 Patent.
`
`6.
`
`On December 11, 2014, the Board entered its decision authorizing an
`
`inter partes review to be instituted in the VMware IPR for claims 1-9 of the ’346
`
`Patent as being obvious under 35 U.S.C. § 103 over Mylex in view of Hathorn.
`
`7.
`
`The ’346 patent is also the subject of the IBM/Oracle IPR (instituted
`
`December 11, 2014), the petition for which was substantively identical to the
`
`petition for the VMWare IPR.
`
`8.
`
`Concurrently with this Motion, Petitioners are filing the Joinder
`
`Petition for inter partes review that is substantively identical to the petition for the
`
`VMware IPR, includes the same exhibits, and challenges claims 1-9 of the ’346
`
`Patent as obvious under 35 U.S.C. § 103 over Mylex in view of Hathorn. The
`
`Joinder Petition further requests that institution be granted solely as to the grounds
`
`for which institution was granted in the VMware IPR.
`
`9.
`
`Petitioners are filing this Motion and the Joinder Petition within one
`
`month of the institution date of the VMware IPR.
`
`10.
`
`The Petitioners of the VMware IPR do not oppose this Joinder
`
`Petition. Furthermore, The Petitioners of the IBM/Oracle IPR do not object to the
`
`4
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`present Petitioners’ motion to join the VMware IPR (or alternatively any combined
`
`proceeding resulting from joinder of the VMware IPR with the IBM/Oracle IPR).
`
`III. ARGUMENT
`
`The Board has authority under 35 U.S.C. § 315(c) to join a properly-filed
`
`subsequent inter partes review petition to an instituted inter partes review
`
`proceeding. This request for joinder is timely and the time periods set forth in 37
`
`C.F.R. § 42.101(b) do not apply to the Joinder Petition because it is accompanied
`
`by this request for joinder. 37 C.F.R. § 42.122(b). Specifically, even though the
`
`Joinder Petition is filed more than one year after the date of the Concurrent
`
`Litigation, 37 C.F.R. § 42.122(b) allows for filing of the Joinder Petition and this
`
`request for joinder within one month of institution of the VMware IPR.
`
`According to Frequently Asked Question (“FAQ”) H5 on the Board’s
`
`website at www.uspto.gov/ip/boards/bpai/prps.jsp, a motion for joinder “should [1]
`
`address the reasons why joinder is appropriate, [2] identify any new ground(s) of
`
`unpatentability asserted in the petition, and [3] explain what impact (if any) joinder
`
`would have on the schedule for the existing review.”
`
`As set forth in detail below, the Board should institute inter partes review
`
`based on the Joinder Petition, and this Motion for Joinder should be granted
`
`because it (1) furthers the policy goals of inter partes review; (2) adds no new
`
`5
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`grounds of unpatentability; (3) does not impact the trial schedule; and (4) does not
`
`prejudice the Patent Owner. Further, Petitioners will agree to consolidated filings
`
`and discovery, and procedural concessions, which the VMware Petitioner does not
`
`oppose.
`
`1. Reasons Why Joinder is Appropriate
`
`This Joinder Petition is timely. The rules specifically contemplate the ability
`
`to seek joinder within one month of the institution decision, even when that is after
`
`the one-year litigation bar. 37 C.F.R. § 42.122(b). See, Target Corporation v.
`
`Destination Maternity Corporation, IPR2014-00508 (PTAB Sept. 25, 2014) (Paper
`
`18) (“[T]he one year time bar under § 315(b) does not prevent the Board from
`
`considering a person’s request to join an instituted inter partes review ‘as a
`
`party.’”). Although joinder is discretionary, it is appropriate here as a way to
`
`secure the just, speedy, and inexpensive resolution of the Concurrent Litigation.
`
`The facts of other cases where the Board has chosen not to exercise its discretion
`
`do not apply here. No new grounds are added; the schedule will not be affected;
`
`no additional discovery will be required; and no additional burdens will be placed
`
`on the Board or the Patent Owner.
`
`Public policy concerns weigh in favor of instituting inter partes review
`
`based on the Joinder Petition and granting this Motion for Joinder. Congress
`
`6
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`believes “[a] process for challenging patent validity and its clear procedures for
`
`submission of art will make the patent system more efficient and improve the
`
`quality of patents and the patent system.” H.R. Rep. No. 112-98, Pt. 1, at 48
`
`(2011). Thus, the law invites anyone, other than the owner of the patent at issue, to
`
`file an IPR. See 35 U.S.C. § 311(a). Similarly, 37 C.F.R. § 42.122(b) broadly
`
`grants the ability to seek joinder. Instituting an IPR on the Joinder Petition and
`
`granting joinder satisfies those policy goals by ensuring that the validity of claims
`
`1-9 of the ’346 Patent is properly and thoroughly challenged, should VMware (and
`
`IBM and Oracle) decide to settle the case.
`
`2. No New Grounds of Unpatentability
`
`Petitioners represent that the Joinder Petition is identical to the petition in
`
`the VMware IPR in all respects, except for the identity of the petitioners. It
`
`includes identical grounds, analysis, and exhibits and relies upon the same expert
`
`declarant and declaration. Petitioners have also requested that the Joinder Petition
`
`be instituted solely as to the same grounds instituted in the VMware IPR.
`
`3. No Impact on the Trial Schedule
`
`Because the grounds of unpatentability in the Joinder Petition and the
`
`petition in the VMware IPR are the same, the case is amenable to consolidated
`
`filings. Petitioners will agree to consolidated filings for all substantive papers in
`
`7
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`the proceeding (e.g., Reply to the Patent Owner’s Response, Opposition to Motion
`
`to Amend, Motion for Observation on Cross Examination Testimony of a Reply
`
`Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude Evidence
`
`and Reply), according to the schedule set for the VMware IPR. Specifically,
`
`Petitioners will agree to incorporate its filings with those of VMware in a
`
`consolidated filing by VMware, subject to the ordinary rules for one party on page
`
`limits. Petitioners and VMware will be jointly responsible for the consolidated
`
`filings. VMware does not oppose this consolidated filing procedure.
`
`Thus, the difference between the filing date of the IPR based on the Joinder
`
`Petition and the VMware IPR is without consequence should the proceedings be
`
`joined. The trial schedule for the VMware IPR would not need to be delayed to
`
`effect joinder based on Patent Owner’s preliminary response and later-filed Joinder
`
`Petition. The joint proceeding would allow the Board and parties to focus on the
`
`merits in one consolidated proceeding without unnecessary duplication of effort,
`
`and in a timely manner. 2
`
`4. Briefing and Discovery Will Be Simplified
`
`2 IBM and Oracle also do not oppose a consolidated procedure should the VMware
`IPR be joined with the IBM/Oracle IPR, subject to the procedures agreed by the
`parties and/or ordered by the Board with respect to any such joined proceeding.
`Thus, granting of this motion also would not affect the trial schedule of any joined
`proceeding.
`
`8
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`VMware and the Petitioners agree to consolidate all substantive briefing and
`
`discovery pertaining to the merits of the joined IPR for as long as they remain
`
`active participants in the IPR. Consolidated briefing and discovery is appropriate
`
`given that Petitioners and VMware are using the same expert declarant who has
`
`submitted the same, identical declaration in the two proceedings. Petitioners and
`
`VMware will jointly file a single paper in the consolidated proceedings as allowed
`
`by the scheduling order of the VMware IPR. Petitioners and VMware will
`
`designate a single attorney to conduct each cross-examination of any given witness
`
`produced by Patent Owner and the redirect of any given witness produced by
`
`Petitioners or VMware within the timeframe normally allotted by the rules for one
`
`party. Petitioners and VMware will not file any separate briefs, or receive any
`
`separate cross-examination or redirect time. As such, there will be no impact on
`
`briefing and discovery.
`
`It is noted that the consolidated briefing and discovery being proposed in the
`
`present case is more constrictive to the Petitioners than the consolidated briefing
`
`and discovery in Motorola Mobility LLC v. Softview LLC, IPR2013-00256 (PTAB
`
`June 20, 2013) (Paper 10), which allowed the second petitioner to also submit a 7-
`
`page supplemental brief. As discussed above, Petitioners and VMware will engage
`
`9
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`in consolidated filings and discovery and will not provide a supplemental brief,
`
`which will simplify the briefing and discovery process.
`
`5. No Prejudice to Patent Owner
`
`Joinder will not prejudice the Patent Owner because the consolidation of
`
`filings and discovery will not multiply the issues or work required by the Patent
`
`Owner. It is the Petitioners’ desire solely to be in a position to continue the
`
`VMware IPR in the event VMware settles, consistent with the policy goals of inter
`
`partes review, and consistent with the rules permitting joinder after institution that
`
`were contemplated when the rules were written.
`
`IV.
`
`Proposed Order
`
`Petitioners propose a joinder order for consideration by the Board as
`
`follows, which VMware does not oppose:
`
` IPR will be instituted based on the Joinder Petition and will be joined
`
`with the VMware IPR solely on the exact same grounds as instituted
`
`in the VMware IPR.
`
` The scheduling order for the VMware IPR will apply for the joined
`
`proceeding.
`
`10
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
` Throughout the proceeding, VMware and Petitioners will file papers
`
`as consolidated filings, except for motions that do not involve the
`
`other party, in accordance with the Board’s established rules regarding
`
`page limits. So long as they both continue to participate in the merged
`
`proceeding, VMware and Petitioners will identify each such filing as a
`
`Consolidated Filing and will be responsible for completing all
`
`consolidated filings.
`
` VMware and Petitioners will designate an attorney to conduct the
`
`cross examination of any given witness produced by Patent Owner
`
`and the redirect of any given witness produced by VMware or
`
`Petitioners within the timeframe normally allotted by the rules for one
`
`party. VMware and Petitioners will not receive any separate cross-
`
`examination or redirect time.
`
` Patent Owner will conduct any cross-examination of any given
`
`witness jointly produced by VMware or Petitioners and the redirect of
`
`any given witness produced by Patent Owner within the timeframe
`
`normally allotted by the rules for one cross-examination or redirect
`
`examination.
`
`11
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`Petitioners are amenable to other joinder order provisions as the Board
`
`deems appropriate.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons Petitioners respectfully request that the
`
`Board institute inter partes review based on the Joinder Petition, and grant this
`
`Motion for Joinder.
`
`Dated: January 8, 2015
`
`Respectfully submitted,
`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioners
`Registration No. 32,271
`
`HAYNES AND BOONE, LLP
`Customer No. 112792
`Telephone: 214/651-5533
`Facsimile: 214/200-0853
`Attorney Docket No.: 47415.538
`
`12
`
`
`
`Exhibit
`VMWARE-1001.
`
`VMWARE-1002.
`
`VMWARE-1003.
`
`VMWARE-1004.
`
`VMWARE-1005.
`
`VMWARE-1006.
`
`VMWARE-1007.
`
`VMWARE-1008.
`
`VMWARE-1009.
`
`VMWARE-1010.
`
`VMWARE-1011.
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`PETITIONERS’ EXHIBIT LIST
`January 8, 2015
`
`Description
`
`U.S. Patent No. 6,978,346 to Baek et al., foreign
`application priority date 9/19/2000 (“the ’346
`patent”)
`
`Excerpts from the Prosecution History of the
`’346 Patent
`
`Expert Declaration of Dr. Robert Horst
`
`Dr. Robert Horst Curriculum Vitae
`
`U.S. Patent No. 5,574,950 to Hathorn et al.,
`issued 11/12/1996 (“Hathorn”)
`
`Smith, Kevin J., “Storage Area Networks:
`Unclogging LANs and Improving Data
`Accessibility,” Mylex Corporation White
`Paper (published 5/29/1998) (“Mylex paper”)
`
`U.S. Patent No. 6,401,170 to Griffith et al.,
`filed on 8/18/1999 (“Griffith”)
`
`U.S. Patent No. 6,578,158 to Deitz et al.,
`filed on 10/28/1999 (“Deitz”)
`
`Affidavit of Mr. Chris Butler, on behalf of
`Internet Archive
`
`U.S. Patent No. 6,073,218 to DeKoning et al.,
`filed on 12/23/1996 (“DeKoning”)
`
`Clark, “Designing Storage Area
`Networks,” 1st Edition, Addison-Wesley
`Professional (1999)
`
`13
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`Exhibit
`VMWARE-1012.
`
`VMWARE-1013.
`
`VMWARE-1014.
`
`Description
`
`Spainhower, “Design for Fault-Tolerance in
`System ES /9000 Model 900,” IEEE (1992)
`
`IEEE 100: Authoritative Dictionary of IEEE
`Standards Terms, 7th Edition (2000)
`
`Siewiorek, D and Swarz R., “Reliable Computer
`Systems, Design and Evaluation,” Digital Press
`(1992)
`
`14
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`DELL INC., HEWLETT-PACKARD COMPANY, and NETAPP, INC.,
`Petitioners,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE,
`Patent Owner.
`
`Case IPR2015-00549
`Patent No. 6,978,346
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e) (4)
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service January 8, 2015
`
`Manner of service FEDERAL EXPRESS
`
`Documents served MOTION FOR JOINDER
`PURSUANT TO 37 C.F.R. §§ 42.22 and 42.122(b)
`
`Petitioners’ Exhibit List
`
`Persons served Renaissance IP Law Group LLP ( MCP)
`9600 SW Oak Street, Suite 560
`Portland, Oregon 97223
`
`Persons served – Parties associated with IPR2014-00901:
`
`15
`
`
`
`Motion for Joinder
`IPR2015-00549/ USP 6,978,346
`
`Courtesy Copy
`
`Patent Owner’s attorney
`Matthew C. Phillips
`Derek Meeker
`Renaissance IP Law Group LLP
`9600 SW Oak Street, Suite 560
`Portland, Oregon 97223
`
`Alexander C.D. Giza
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, California 90025
`
`Petitioner’s attorney of record
`Katherine Kelly Lutton
`Timothy W. Riffe
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`
`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioners
`Registration No. 32,271
`
`16
`
`
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