Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 26, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC., HEWLETT-PACKARD COMPANY, and NETAPP, INC.
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH,
`INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2015-00549
`Patent 6,978,346 B2
`
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Denial of Institution of Inter Partes Review and
`Denial of Motion for Joinder
`37 C.F.R. § 42.108(b)
`37 C.F.R. § 42.122(a) and (b)
`
`
`
`
`1
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 26, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC., HEWLETT-PACKARD COMPANY, and NETAPP, INC.
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH,
`INSTITUTE,
`Patent Owner.
`____________
`
`Case IPR2015-00549
`Patent 6,978,346 B2
`
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Denial of Institution of Inter Partes Review and
`Denial of Motion for Joinder
`37 C.F.R. § 42.108(b)
`37 C.F.R. § 42.122(a) and (b)
`
`
`
`
`1
`
`
`
`IPR2015-00549
`Patent 6,978,346 B2
`
`
`
`I. INTRODUCTION
`On January 8, 2015, Dell, Inc., Hewlett-Packard Company, and
`NetApp, Inc. (“collectively Petitioner”) filed a Petition (“Pet.”) for inter
`partes review of U.S. Patent No. 6,978,346 B2 (Ex. 1001, “the ’346
`patent”). Paper 1. Patent Owner waived a Preliminary Response and
`concurrently represented it did not oppose joinder. Paper 8. Petitioner filed
`a Motion for Joinder (“Mot.”) to join this proceeding with VMWare, Inc. v.
`Electronics and Telecommunications Research Institute, Case IPR2014-
`00901 (“’901 IPR”).1 Paper 5. We entered a Decision on Institution (“Dec.
`Inst.,” Paper 14) in the ’901 IPR on December 11, 2014. ’901 IPR, Paper
`14. This case and the ’901 IPR both involve the ’346 patent.
`The Petition for inter partes review and Motion for Joinder are
`denied.
`
`II. ANALYSIS
`A. Denial of Petition for Inter Partes Review
`1. Background
`The Petition asserts the asserted grounds are identical to those on
`which we instituted review in the ’901 IPR. Pet. 1; Mot. 7. In the ’901 IPR
`we instituted trial on the ground alleging that claims 1–9 were obvious under
`
`
`1 International Business Machines Corporation v. Electronics and
`Telecommunications Research Institute, Case IPR2014-00949 (“’949 IPR”)
`was joined previously into the ’901 IPR (’949 IPR, Paper 25) and all further
`filings in the joined proceeding are made in the ’901 IPR. Petitioner seeks
`joinder with the resulting ’901 IPR. Mot. 2 n. 1.
`2
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`IPR2015-00549
`Patent 6,978,346 B2
`
`35 U.S.C. § 103 over Mylex2 and Hathorn.3 ’901 IPR, Dec. Inst. 22.
`Hathorn and Mylex also were asserted in challenges against the ’346 patent
`asserted in Dell, Inc. v. Electronics and Telecommunications Research
`Institute, Case IPR2013-00635 (“’635 IPR”). Petitioner in this case and in
`the ’635 IPR are the same.
`As relevant here,4 the ’635 Petition challenged claims of the
`’346 patent on the following grounds: (1) claims 1–3 and 8 as obvious
`under 35 U.S.C. § 103(a) over Weygant and Mylex (’635 IPR Pet. 20–23);
`(2) claims 4 and 9 as obvious under 35 U.S.C. § 103(a) over Weygant,
`Mylex, and Serviceguard5 (’635 IPR Pet. 23–39); (3) claims 5–7 as obvious
`under 35 U.S.C. § 103(a) over Weygant, Mylex, and ANSI6 (’635 IPR Pet.
`39–45); (4) claims 1–3 and 5–8 as anticipated under 35 U.S.C. § 102(b) by
`Hathorn (’635 IPR Pet. 45–60). On March 20, 2014, we instituted trial on
`the ground that claims 1–3 and 5–8 were anticipated under 35 U.S.C.
`§ 102(b) by Hathorn, denying all other grounds on the merits. ’635 IPR,
`Dec. Inst. 23–24. On February 27, 2015, we entered a Final Written
`Decision (“Final Dec.” Paper 39) finding that claims 1–3 and 5–8 of the
`’346 patent had not been shown to be unpatentable by a preponderance of
`the evidence. ’635 IPR, Final Dec. 24.
`
`
`2 Storage Area Networks; Unclogging LANs and Improving Data
`Accessibility, Mylex Corporation, published May 29, 1998 (“Mylex,” Exs.
`1006 and 1009).
`3 U.S. Patent No. 5,574,950, issued Nov. 12, 1996 (“Hathorn,” Ex. 1005).
`4 One ground is omitted from the list as not including Mylex or Hathorn.
`5 Managing MC/Serviceguard, Hewlett-Packard Company, Jan. 1998
`(“ServiceGuard,” Ex. 1004).
`6 Fibre Channel Arbitrated Loop (FC-AL-2), American Nat. Standards Inst.,
`1999 (“ANSI,” Ex. 1008).
`
`
`
`3
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`IPR2015-00549
`Patent 6,978,346 B2
`
`
`2. Legal Analysis
`a. Claims 1–3 and 5–8
`Petitioner is estopped from requesting inter partes review in this case.
`Under 35 U.S.C. § 315(e)(1), once a Petitioner has obtained a final written
`decision, that Petitioner may not request or maintain subsequent proceedings
`on a ground that it “could have raised” during the prior proceeding.
`Specifically, section 315(e)(1) provides:
`(e) Estoppel. –
`(1) Proceedings before the office.— The petitioner in an inter
`partes review of a claim in a patent under this chapter that
`results in a final written decision under section 318(a), or the
`real party in interest or privy of the petitioner, may not request
`or maintain a proceeding before the Office with respect to that
`claim on any ground that the petitioner raised or reasonably
`could have raised during that inter partes review.
`
`
`(Emphasis added).
`
`The first requirement for estoppel is met because the Petitioner
`here and in the ’635 IPR are the same. The entry of the Final Written
`Decision in the ’635 IPR satisfies the second requirement. For the
`reasons that follow, we determine Petitioner could have raised the
`ground asserted in this case in the ’635 IPR.
`What a Petitioner “could have raised” was described broadly in
`the legislative history of the America Invents Act (“AIA”) to include
`“prior art which a skilled searcher conducting a diligent search would
`reasonably could have been expected to discover.” 157 Cong. Rec.
`S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Grassley). Indeed,
`the administrative estoppel codified in § 315(e)(1), as was pointed out,
`would effectively preclude petitioners from bringing subsequent
`4
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`IPR2015-00549
`Patent 6,978,346 B2
`
`challenges to the patent in USPTO proceedings. See id. at S1376
`(statement of Sen. Kyl) (“This [estoppel] effectively bars such a party
`or his real parties in interest or privies from later using inter partes
`review or ex parte reexamination against the same patent, since the
`only issues that can be raised in an inter partes review or ex parte
`reexamination are those that could have been raised in [an] earlier
`post-grant or inter partes review.”). We need not investigate what any
`search might have uncovered, for the record before us shows that the
`prior art references in the instant Petition were asserted in the
`’635 IPR.
`More specifically, the prior art Petitioner has asserted in the
`instant Petition, Mylex and Hathorn, was asserted in the ’635 IPR
`against all the claims of the ’346 patent. Hathorn was asserted as the
`basis of an anticipation ground under 35 U.S.C. §102. ’635 IPR Pet.
`45–60. Mylex was asserted as one of a combination of references in
`three other obviousness grounds. Id. at 23–45. Petitioner asserted
`Mylex as disclosing a RAID controller limitation in the ’635 IPR (see,
`e.g., ’635 Pet. 20–21), where, in the instant Petition, the reference is
`asserted as disclosing a RAID (Pet. 21). On this record, the
`differences in how the references have been asserted in these
`proceedings have no weight on our determination of whether the
`grounds raised in the instant Petition could have been raised in the
`’635 IPR. Both Mylex and Hathorn were known to Petitioner as prior
`art to the ’346 patent, and Mylex has been asserted as an obviousness
`reference in this Petition and in the’635 IPR. It makes no difference
`to us that Petitioner may have believed Hathorn to be an anticipatory
`
`
`
`5
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`IPR2015-00549
`Patent 6,978,346 B2
`
`reference in the ’635 IPR, and that such a belief may have changed
`during the trial of the ’635 IPR, where we ultimately determined in
`our Final Written Decision that Hathorn did not anticipate any claim
`of the ’346 patent.
`On this record, we determine that the combination of Mylex
`and Hathorn to show obviousness of claims of the ’346 patent
`constitutes a ground that Petitioner could have raised in the ’635 IPR.
`Accordingly, Petitioner is estopped under 35 U.S.C. § 315(e)(1) from
`asserting that ground now.
`b. Claims 4 and 9
`Notwithstanding the preceding, § 315(e)(1) operates as an
`estoppel only as to “review of a claim in a patent under this chapter
`that results in a final written decision.” 35 U.S.C. § 315(e)(1). The
`Final Written Decision in the ’635 IPR resulted in a review of claims
`1–3 and 5–8, but not of claims 4 and 9. ’635 IPR, Final Dec. 24. This
`Petition challenges all of claims 1–9 as obvious over Mylex and
`Hathorn. Pet. 4. Thus, inter partes review of claims 4 and 9 is not
`precluded by the estoppel provisions of section 315(e)(1).
`35 U.S.C. § 315(b) provides:
`(b) Patent Owner’s Action. – An inter partes review may not be
`instituted if the petition requesting the proceeding is filed more
`than 1 year after the date on which the petitioner, real party in
`interest, or privy of the petitioner is served with a complaint
`alleging infringement of the patent. The time limitation set
`forth in the preceding sentence shall not apply to a request for
`joinder under subsection (c).
`
`
`(Emphasis added).
`
`
`
`
`6
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`IPR2015-00549
`Patent 6,978,346 B2
`
`
`Absent joinder, the Petition here is barred under § 315(b) if it
`was filed more than a year after suit is served. The Petition shows the
`cases Petitioner lists as related, including those where each Petitioner
`has been the subject to a claim for infringement of the ’346 patent.
`Pet. 1–2. We have taken judicial notice that each of the parties, the
`Petitioner here, was served with a complaint on December 3, 2012,
`more than one year before the January 8, 2015, filing date accorded to
`this case. Paper 6. As discussed below, we deny Petitioner’s Motion
`for Joinder as to remaining claims 4 and 9. Absent joinder, claims 4
`and 9 in this Petition are subject to § 315(b), and the Petition is barred.
`
`B. Denial of Motion for Joinder
`
`We exercise our discretion under 35 U.S.C. § 315(c) and decline to
`join claims 4 and 9 of this case to the ’901 IPR. Section 315(c) provides:
`(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 partes review under section 314.
`
`
`(Emphasis added).
`
`First, we note that Petitioner has the burden of showing that joinder
`should be granted, and nothing in the record shows us that joinder would be
`appropriate here for less than all the asserted claims. Further, in declining to
`join claims 4 and 9 to the ’901 IPR we note that, were we to grant joinder,
`the case would proceed on different claims depending on the party. The
`’901 IPR has already been subject to joinder (see footnote 1) and has two
`
`
`
`7
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`IPR2015-00549
`Patent 6,978,346 B2
`
`Petitioners. Adding a third Petitioner (or more), with grounds that are
`limited to a small subset of the ongoing trial, will unnecessarily complicate
`the ’901 IPR. In addition, while Patent Owner does not oppose joinder
`(Paper 8), we cannot ignore the additional time, effort and expense that will
`fall to Patent Owner. We are also cognizant that Patent Owner’s statement
`of non-opposition does not address the present circumstances of our denial
`of institution on claims 1–3 and 5–8. On the present record, we are not
`inclined to join Petitioner to assert a ground partially, i.e., for two claims,
`but not the others.
`
`ORDER
`
`Accordingly, it is
`ORDERED that inter partes review of U.S. Patent No. 6,978,346 is
`denied; and
`FURTHER ORDERED that Petitioner’s motion for joinder is denied.
`
`
`
`
`
`
`8
`
`
`
`IPR2015-00549
`Patent 6,978,346 B2
`
`PETITIONER:
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`
`Thomas W. Kelton
`Thomas.kelton.ipr@haynesboone.com
`
`John Russell Emerson
`Russ.emerson.ipr@haynesboone.com
`
`
`PATENT OWNER:
`Mathew C. Phillips
`Matthew.phillips@renaissanceiplaw.com
`
`Derek Meeker
`Derek.meeker@renaissanceiplaw.com
`
`
`
`
`9
`
`
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