Paper 11
`Patent 6,237,127
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`ATOPTECH, INC.
`Petitioner
`
`v.
`
`SYNOPSYS, INC.
`Patent Owner
`
`___________
`
`Case IPR2015-00760
`Patent 6,237,127
`
`___________
`
`PETITIONER’S REPLY IN SUPPORT OF
`MOTION FOR JOINDER TO RELATED INTER
`PARTES REVIEW OF U.S. PATENT NO. 6,237,127
`(CASE NO. IPR2014-01145) UNDER 37 C.F.R. §
`42.122(b)
`
`i
`
`
`Patent 6,237,127
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`ATOPTECH, INC.
`Petitioner
`
`v.
`
`SYNOPSYS, INC.
`Patent Owner
`
`___________
`
`Case IPR2015-00760
`Patent 6,237,127
`
`___________
`
`PETITIONER’S REPLY IN SUPPORT OF
`MOTION FOR JOINDER TO RELATED INTER
`PARTES REVIEW OF U.S. PATENT NO. 6,237,127
`(CASE NO. IPR2014-01145) UNDER 37 C.F.R. §
`42.122(b)
`
`i
`
`
`
`Paper 11
`Patent 6,237,127
`
`TABLE OF CONTENTS
`INTRODUCTION ...........................................................................................1
`THE BOARD SHOULD JOIN THESE IPRs..................................................1
`
`I.
`
`II.
`
`III.
`
`THE BOARD HAS STATUTORY AUTHORITY TO JOIN THESE IPRs..4
`
`IV. CONCLUSION................................................................................................5
`
`ii
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`Paper 11
`Patent 6,237,127
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`TABLE OF AUTHORITIES
`
`Cases
`Ariosa Diagnostics v. Isis Innovation, Ltd., IPR2013-00250, Paper 25 (P.T.A.B.
`Sept. 3, 2013) .........................................................................................................2
`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15 (P.T.A.B. Feb. 25,
`2013).......................................................................................................................2
`Samsung Elecs. Co. Ltd. v. Virginia Innovation Sciences, Inc. (“Samsung”),
`IPR2014-00557, Paper No. 10 (P.T.A.B. June 13, 2014)......................................2
`Target Corp. v. Destination Maternity Corp., IPR2014-00508, Papers 28, 31
`(P.T.A.B. Feb. 12, 2015)........................................................................................4
`Statutes
`
`35 U.S.C. §315(b) ......................................................................................................1
`
`35 U.S.C. §315(c) ............................................................................................. 1, 4, 5
`Other Authorities
`
`157 Cong. Rec. S1376 (daily ed. Mar.8, 2011) (statement of Sen. Kyl)...................2
`Rules
`
`37 C.F.R. 42.122(b) ...................................................................................................1
`
`iii
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`
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`Paper 11
`Patent 6,237,127
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`I.
`
`INTRODUCTION
`35 U.S.C. §315(c) gives the Board discretion to grant joinder. Petitioner
`
`ATopTech Inc.’s (“ATopTech”) opening brief in support of joinder (Paper 3)
`
`argued that, on the facts of this case, the Board should exercise that discretion to
`
`grant joinder under §315(c). Synopsys Inc.’s (“Synopsys”) opposition brief (Paper
`
`9), on the other hand, largely claims that the Board has no such discretion;
`
`Synopsys claims that there are, or should be, bright-line rules barring joinder when
`
`it involves the same petitioner. As discussed in Petitioner’s opening, Synopsys’
`
`interpretation is not what Congress intended when it drafted the joinder statute of
`
`the AIA. The joinder statute allows anyone, including the initial petitioner, to file a
`
`subsequent petition and joinder motion; the joinder statute, by its terms, applies to
`“any person who properly files a petition”; not “any person other than the original
`
`petitioner.” Indeed, the AIA and agency rules implementing §315(c) go even
`further, as both contemplate and allow for such joinder petitions to be filed after
`the Board institutes the initial IPR. See 35 U.S.C. §315(b) (carving out an
`
`exception to the one year time bar for joinder petitions); 37 C.F.R. 42.122(b).
`
`Thus, the joinder statute and the Board’s rules plainly contemplate the scenario
`
`presented here, where the initial petitioner files a subsequent petition and a motion
`
`for joinder within one month of the Board’s decision to institute the initial IPR.
`
`II.
`
`THE BOARD SHOULDJOIN THESE IPRs
`Synopsys does not deny that there is substantial overlap between the two
`
`IPRs (e.g., both IPRs involve the same subject matter, parties, patent, expert, prior
`
`art and exhibits), that joinder would be the most efficient way to resolve the
`
`1
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`Paper 11
`Patent 6,237,127
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`patentability of all the challenged claims of the ’127 patent, and that joinder would
`
`not materially affect trial, discovery or briefing in the earlier granted ’1145 IPR.
`See Paper No. 3 (“Opening”) at 4-6, 8, 11-13.
`Instead, Synopsys’ argues that there is a de facto rule precluding joinder
`
`when the subsequent petition makes arguments that “could have been made in the
`
`initial Petition.” Opp. at 4-5. Synopsys is wrong. While it is true the Board has
`
`exercised its discretion and denied joinder in certain cases, it is also true that the
`
`Board has exercised that same discretion to grant joinder motions in instances
`
`where the arguments in the new petition could have been made in the initial
`petition. See, Samsung Elecs. Co. Ltd. v. Virginia Innovation Sciences, Inc.
`
`(“Samsung”), IPR2014-00557, Paper No. 10 (P.T.A.B. June 13, 2014) (instituting
`
`trial and granting joinder even though grounds in second petition were based on the
`same prior art references in the initial petition). See also Ariosa Diagnostics v. Isis
`
`Innovation, Ltd., IPR2013-00250, Paper 25 (P.T.A.B. Sept. 3, 2013); Microsoft
`Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15 (P.T.A.B. Feb. 25, 2013).
`
`Synopsys argues that as a matter of public policy, any subsequent petition
`
`addressing claim construction should be denied because it is supposedly a “second
`
`bite at the apple.” Opp. at 11. However, as ATopTech pointed out (and Synopsys
`
`ignored), the legislative history of the AIA shows that one of the reasons Congress
`
`made joinder available was for cases where claim construction was an issue in the
`earlier petition. See 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of
`
`Sen. Kyl).
`
`2
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`
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`Paper 11
`Patent 6,237,127
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`Regardless of whether ATopTech’s arguments could have been made in the
`
`initial petition, joinder should be granted. ATopTech had a reasonable and good
`
`faith belief that the premise underlying its construction was correct—that the term
`“comparing” implies measuring one thing against another (e.g., claim 4, see
`
`graphic below) and, as such, claim 5 must be read to require, by its own terms, that
`
`the things to be compared are “a first timing value” “with the first label.” ’1145
`
`Petition at 31; Opening at 4-6; see graphic below.
`
`Ultimately, the Board disagreed with ATopTech, holding instead that the
`
`“first label” applied to the earlier “satisfying” function (see graphic above), and
`
`reading the claim as requiring “satisfying an exception . . . with the first label”
`
`“prior to comparing the first timing value.” ATopTech respectfully submits that its
`
`position was reasonable and that it could not reasonably foresee the Board’s
`
`construction, which is corroborated by the fact that Synopsys, in the preliminary
`
`response it filed for the `1145 IPR, neither disputed ATopTech’s construction nor
`
`offered the Board’s construction.
`
`In the end, the prior art ATopTech relied on in the ’1145 IPR invalidates
`
`claims 5 and 6 even under the Board’s construction. Granting ATopTech’s motion
`
`3
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`Paper 11
`Patent 6,237,127
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`and joining this new IPR to the ’1145 IPR will promote efficiency and fairness,
`
`and allow the Board to address all the claims Synopsys asserts in its co-pending
`
`infringement litigation against ATopTech.
`
`III. THE BOARD HAS STATUTORY AUTHORITY TO JOIN THESE
`IPRs
`Synopsys argues that
`
`joinder is “impermissible .
`
`.
`
`. under a proper
`
`interpretation of 35 U.S.C. § 315(c)” when the petitioner is the same in both IPRs.
`
`Opp. at 9. Yet, Synopsys admits that “there are no controlling precedential Board
`decision” on the issue and that the closest thing to controlling precedent is Target
`
`Corp. v. Destination Maternity Corp., IPR2014-00508, Papers 28, 31 (P.T.A.B.
`
`Feb. 12, 2015), where an “expanded panel” issued a “decision in favor of allowing
`
`joinder” when the petitioner was the same in both IPRs. Opp. at 10.
`
`Synopsys argues that
`
`the Board cannot exercise its discretion to “join
`
`[ATopTech] as a party” because ATopTech “is already a party to the First ‘127
`
`Petition.” Opp. at 9. ATopTech respectfully submits that such an interpretation
`
`strains the words of the statute and frustrates the purpose of joinder. Section 315(c)
`describes four things that must happen before the Director can decide whether to
`grant joinder: (1) a prior IPR trial must have been instituted; (2) a petition by any
`
`person must be properly filed under section 311; (3) the period for a preliminary
`
`response must pass; and (4) the Director must determine that the subsequent
`
`petition warrants instituting trial. Under Synopsys’ interpretation, even if all four
`
`of these prerequisites are met, the Director cannot perform joinder because the
`
`petitioner is already a party to the earlier IPR.
`
`4
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`Patent 6,237,127
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`Synopsys’ interpretation ignores the fact that the statute expressly defines
`
`who may be joined—“any person who properly files a petition,” a qualification
`that Synopsys admits ATopTech meets. Opp. at 9 (“ATopTech (i.e., ‘any
`person’)”). Synopsys’ interpretation looks beyond the only express qualification
`
`and attempts to import an additional limitation from how they are joined (i.e., “as a
`
`party”). Synopsys’ interpretation rests on the argument that when §315(c) allows
`any person to “join as a party to that inter partes review,” it “refers to the joinder of
`
`a new ‘party.’” Opp. at 9 (emphasis added). But the statute does not differentiate
`
`between “new” and original parties. In reality, when grounds from the second IPR
`
`are added to the first, a person must be joined as a party to account for the increase
`
`in scope—even if that person is the original petitioner.
`
`IV. CONCLUSION
`Petitioner respectfully request that trial be instituted, joinder be ordered, and
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`the claims at issue be invalidated.
`
`Dated: April 16, 2015
`
`Jeffrey A. Miller
`/s/
`Jeffrey A. Miller
`Registration No. 35,287
`KAYE SCHOLER LLP
`2 Palo Alto Square, Suite 400
`3000 El Camino Real
`Palo Alto, CA 94306
`Tel.: (650) 319-4500
`
`Counsel for Petitioner
`ATopTech Inc.
`
`5
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`
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`Paper 11
`Patent 6,237,127
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONER’S
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER TO RELATED INTER
`
`PARTES REVIEW OF U.S. PATENT NO. 6,237,127 (CASE NO. IPR2014-
`
`01145) UNDER 37 C.F.R. § 42.122(b) is being served on Patent Owner through
`
`their counsel of record by filing this document
`
`through the Patent Review
`
`Processing System and by email to the following addresses:
`
`David B. Cochran
`dcochran@jonesday.com
`Joseph M. Sauer
`jmsauer@jonesday.com
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`
`Dated: April 16, 2015
`
`Respectfully submitted,
`/s/ Jeffrey A. Miller
`Jeffrey A. Miller
`Registration No. 35,287
`
`6
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`
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