`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Ciena Corporation, Coriant Operations, Inc., Coriant (USA) Inc., and
`Fujitsu Network Communications, Inc.
`
`Petitioner
`
`v.
`
`Capella Photonics, Inc.
`
`Patent Owner
`
`
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. RE42,368
`
`Filing Date: June 15, 2010
`Reissue Date: May 17, 2011
`
`Case IPR: To Be Assigned
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Motion For Joinder
`U.S. Reissued Patent No. RE42,368
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Ciena Corporation, Coriant Operations, Inc. (formerly Tellabs Operations,
`
`Inc.), Coriant (USA) Inc., and Fujitsu Network Communications, Inc. (collectively
`
`“Petitioner”) respectfully submit this Motion for Joinder concurrently with a
`
`petition (“Petition”) for inter partes review (IPR) under 35 U.S.C. § 315(c) and 37
`
`C.F.R. §§ 42.22 and 42.122(b), of claims 1-6, 9-13, and 15-22 of U.S. Patent No.
`
`RE42,368 (Ex. 1001) (“the ’368 patent”).
`
`Petitioner requests institution of IPR and party joinder with the pending,
`
`instituted IPR titled, Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-
`
`01166 (the “Cisco IPR”). Cisco initiated its proceeding by petitioning the Board
`
`on July 15, 2014; the Board instituted the Cisco IPR on January 30, 2015.
`
`Petitioner timely filed this Petition and this motion, within one month of the
`
`institution of the Cisco IPR. 37 C.F.R. § 42.122(b).1
`
`
`1 As stated in the Frequently Asked Questions section of the Patent Trial and
`
`Appeal
`
`Board’s
`
`website
`
`(available
`
`at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp), Petitioner understands that prior
`
`authorization for filing a motion for joinder with a petition is not required. As
`
`suggested, the Petitioner contacted the Board by email, indicating that Petitioner is
`
`2
`
`
`
`Motion For Joinder
`U.S. Reissued Patent No. RE42,368
`
`
`Joinder will efficiently resolve the challenges presented in the Petition and
`
`the instituted grounds of the Cisco IPR and will not prejudice the patent owner or
`
`the first-petitioner Cisco. Intentionally, the Petition is nearly word-for-word
`
`identical to the instituted grounds of the Cisco IPR in an effort to avoid
`
`multiplication of issues before the Board.2 Further, the expert declaration
`
`submitted with the Petition is from the same declarant and is essentially identical to
`
`the declaration submitted in the Cisco IPR.3 Joinder would not complicate or delay
`
`the Cisco IPR and would not adversely affect the schedule. Joinder would result in
`
`efficient and timely resolution of the challenges presented in the Petition and the
`
`instituted grounds of the Cisco IPR. In contrast, absent joinder Petitioner may be
`
`prejudiced because its interests may not be adequately represented in the Cisco
`
`IPR.
`
`
`willing to participate in a teleconference to discuss the present joinder request if
`
`the Board so desires.
`
`2 The only differences between the Cisco IPR Petition and this Petition are shown
`
`in redline in Ex. 1039.
`
`3 The only differences between the declaration supporting Cisco’s IPR Petition and
`
`the declaration supporting this Petition are shown in redline in Ex. 1040.
`
`3
`
`
`
`Motion For Joinder
`U.S. Reissued Patent No. RE42,368
`
`
`Should the panel join the parties, Petitioner agrees to subordinate itself,
`
`allowing Cisco to lead the joined proceedings absent settlement by Cisco, in line
`
`with common Board practice. Joinder with the Cisco IPR would minimally affect
`
`its procedure and substance. Cisco has stated to Petitioner that it does not oppose
`
`joinder.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`The ’368 patent is assigned on its face to Capella Photonics, Inc. (“Capella”
`
`or “Patent Owner”). Capella asserted the ’368 patent against Petitioner (Ciena
`
`Corporation, Coriant Operations, Inc. (formerly Tellabs Operations, Inc.), Coriant
`
`(USA) Inc., and Fujitsu Network Communications, Inc.), Cisco, and other parties
`
`in S.D. Fla.: Capella Photonics, Inc. v. Cisco Systems, Inc., filed February 12,
`
`2014 as 1:14-cv-20529 (transferred July 24, 2014 to N.D. Cal. as 3:14-cv-03348),
`
`Capella Photonics, Inc. v. Fujitsu Network Communications, Inc., filed February
`
`12, 2014 as 1:14-cv-20531 (transferred July 24, 2014 to N.D. Cal. as 3:14-cv-
`
`03349) , Capella Photonics, Inc. v. Tellabs, Inc. et al., filed February 12, 2014 as
`
`0:14-cv-60350 (transferred July 24, 2014 to N.D. Cal. as 3:14-cv-03350), Capella
`
`Photonics, Inc. v. Ciena Corporation et al., filed February 12, 2014 as 1:14-cv-
`
`20530 (transferred July 24, 2014 to N.D. Cal. as 5:14-cv-03351), Capella
`
`Photonics, Inc. v. Columbus Networks USA, Inc., filed July 15, 2014 as 0:14-cv-
`
`4
`
`
`
`Motion For Joinder
`U.S. Reissued Patent No. RE42,368
`
`61629 (stayed), and Capella Photonics, Inc. v. Telefonica International Wholesale
`
`Services USA, Inc., filed July 21, 2014 as 1:14-cv-22701 (stayed).
`
`The ’368 patent is currently being challenged by Cisco in IPR2014-01166,
`
`as noted above.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`The Leahy–Smith America Invents Act (AIA) allows an IPR party to be
`
`joined with a preexisting IPR. See generally Pub. L. No. 112-29, 125 Stat. 284
`
`(2011). The statutory provision governing IPR joinder, 35 U.S.C. § 315(c), reads:
`
`(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.
`
`Under its discretion, the Board considers how joinder will affect the
`
`substance and procedure of the preexisting proceeding. See, e.g., Decision on
`
`Motion for Joinder, Motorola Mobility LLC v. Softview LLC, IPR2013-00257,
`
`Paper 10 (P.T.A.B. June 20, 2013). In its response to comments on the Board’s
`
`proposed joinder rule, 37 C.F.R. § 42.122, the PTO indicated that “joinder would
`
`5
`
`
`
`Motion For Joinder
`U.S. Reissued Patent No. RE42,368
`
`allow the Office to consolidate issues and to account for timing issues that may
`
`arise” when instituting multiple proceedings involving the same patent. Changes
`
`to Implement Inter Partes Review Proceedings, 77 Fed. Reg. 48,680, 48,707 (Aug.
`
`14, 2012). Here, joining Petitioner to the Cisco IPR is appropriate.
`
`B.
`
`Joinder will not affect the Board’s ability to timely complete
`the review.
`
`Intentionally, the Petition is identical to the instituted grounds of the Cisco
`
`IPR in an effort to avoid multiplication of issues. For simplicity and efficiency,
`
`Petitioner has copied Cisco’s IPR petition. Petitioner does not seek to reintroduce
`
`grounds or combinations of prior art, or claims not instituted in the Cisco IPR and
`
`seeks only to join the proceeding as instituted. Petitioner is retaining the same
`
`expert as Cisco, Dr. Dan Marom. The supporting declaration of Dr. Marom is
`
`essentially identical to the declaration he previously submitted in the Cisco IPR.
`
`Capella should not require any discovery beyond that which it may need in the
`
`Cisco IPR—nor should the Board permit any. The Petition presents no new
`
`substantive issues relative to the Cisco IPR and does not seek to broaden the scope
`
`of the Cisco IPR or request additional discovery. For efficiency’s sake, if joined,
`
`Petitioner and Cisco have agreed that Cisco’s counsel will act as the lead counsel
`
`as long as Cisco remains in the proceeding.
`
`6
`
`
`
`Motion For Joinder
`U.S. Reissued Patent No. RE42,368
`
`
`Joinder will not impact the Board’s ability to complete its review in a timely
`
`manner.4 Section 316(a)(11) provides that IPR proceedings should be completed
`
`and the Board’s final decision issued within one year of institution of the review.
`
`See also 37 C.F.R. § 42.100(c). Here, joinder will not affect the Board’s ability to
`
`issue its final determination within one year because Petitioner agrees to the same
`
`arguments instituted in the Cisco IPR, retains the same expert and submits an
`
`identical declaration, and agrees to consolidated discovery. Indeed, the Petition
`
`includes only those grounds on which the Cisco IPR was instituted, and the
`
`invalidity grounds were largely copied verbatim from Cisco’s IPR petition.
`
`In view of the above, Petitioner submits that the current schedule in the
`
`Cisco IPR can stay unchanged. At most, the Board can add an additional deadline
`
`for Capella to respond to this Motion, but this deadline will not impact other
`
`deadlines in the schedule.
`
`C.
`
`Joinder will promote efficiency by consolidating issues,
`avoiding wasteful duplication, and preventing inconsistency.
`
`Petitioner presents identical arguments for patent invalidity and identical
`
`supporting evidence as the Cisco IPR. Joinder will simplify briefing and
`
`4 Petitioner notes that 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
`
`42.100(c) also grant the Board flexibility to extend the one-year period by up to six
`
`months in the case of joinder, if needed.
`
`7
`
`
`
`Motion For Joinder
`U.S. Reissued Patent No. RE42,368
`
`discovery. Given that the Cisco IPR and the Petition address the same prior art and
`
`grounds for rejection of the same claims, joining these proceedings allows for joint
`
`submissions and discovery, further streamlining the proceedings. This should
`
`promote efficiency and conserve the Board’s and the parties’ resources.
`
`By contrast, the determination of the same patent validity questions for the
`
`’368 patent in multiple proceedings would duplicate efforts, create a risk of
`
`inconsistent results, and result in piecemeal review. Joinder avoids that.
`
`D. Without joinder, Petitioner may be prejudiced.
`Petitioner may be prejudiced if it is not permitted to join in the Cisco IPR.
`
`Capella has asserted the ’368 patent against Petitioner in pending litigation.
`
`Petitioner should be permitted to join the pending IPR to participate in proceedings
`
`affecting a patent asserted against it, and thereby allowed to continue the
`
`proceedings should Cisco and Capella settle under 37 C.F.R. § 42.74 before a final
`
`written decision is issued.
`
`Joinder will not prejudice Capella or Cisco.
`
`E.
`Permitting joinder will not prejudice Capella or Cisco and will in fact
`
`streamline the proceedings and reduce the costs and burdens on the parties for
`
`several reasons. First, joinder will most certainly decrease the number of papers
`
`the parties must file, by eliminating a duplicative proceeding. Second, joinder will
`
`also reduce by half the time and expense for depositions and other discovery
`
`8
`
`
`
`Motion For Joinder
`U.S. Reissued Patent No. RE42,368
`
`required in separate proceedings. Third, joinder creates case management
`
`efficiencies for the Board and parties without any prejudice to Capella. Fourth,
`
`Petitioner raises issues already before the Board and long known to Capella. Fifth,
`
`Cisco does not oppose joinder. Addressing the same patent validity questions in a
`
`single proceeding with a statutory deadline serves the parties’ and Board’s
`
`interests.
`
`IV. CONCLUSION
`
`Joinder will not affect the substance, procedure, or scheduling of the Cisco
`
`IPR. Petitioner files under the statutory joinder provisions as contemplated by the
`
`AIA. Joinder will simplify the issues and promote efficiency, justice, and speed.
`
`Petitioner respectfully requests IPR on U.S. Patent No. RE42,368 and
`
`joinder with Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-01166.5
`
`
`
`
`
`
`5 Although Petitioner believes no fee is required for this Motion, Petitioner
`
`authorizes the Commissioner to charge any additional fees required for this
`
`Motion, to Deposit Account No. 506239.
`
`9
`
`
`
`Motion For Joinder
`U.S. Reissued Patent No. RE42,368
`
`Dated: February 26, 2015
`
`
`
`Respectfully submitted,
`
`Christopher Chalsen (Reg. No. 30,936)
`CChalsen@milbank.com
`Nathaniel Browand (Reg. No. 59,683)
`NBrowand@milbank.com
`Milbank, Tweed, Hadley & McCloy
`LLP
`1 Chase Manhattan Plaza
`New York, New York 10005
`T: (212) 530-5380, F: (212) 822-5380
`
`Thomas K. Pratt (Reg. No. 37,210)
`TPratt@bannerwitcoff.com
`J. Pieter van Es (Reg. No. 37,746)
`PVanEs@bannerwitcoff.com
`Banner & Witcoff, Ltd.
`10 South Wacker Drive, Suite 3000
`Chicago, IL 60606
`T: (312) 463-5000, F: (312) 463-5001
`
`
`
`
`
`
`
`
`
`/Matthew J. Moore/____________
`Matthew J. Moore (Reg. No. 42012)
`Matthew.Moore@lw.com
`Latham & Watkins LLP
`555 Eleventh Street NW, Suite 1000
`Washington, DC 20004-1304
`T: (202) 637-2278, F: (202) 637-2201
`
`
`Robert Steinberg (Reg. No. 33144)
`Bob.Steinberg@lw.com
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`T: (213) 891-8989, F: (213) 891-8763
`
`
`
`10
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies that on
`
`February 26, 2015, a complete and entire electronic copy of this Motion For
`
`Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, And 42.122(b), was
`
`served via USPS EXPRESS MAIL, costs prepaid, to the Patent Owner by serving
`
`the correspondence address of record as follows:
`
`LAW OFFICES OF BARRY N. YOUNG
`P.O. Box 61197
`Palo Alto, CA 94306
`
`A courtesy copy was also served via USPS EXPRESS MAIL on the Patent
`
`Owner’s counsel at the following address:
`
`Robert D. Becker
`MANATT, PHELPS & PHILLIPS, LLP
`1841 Page Mill Road, Suite 200
`Palo Alto, CA 94304
`
`By: /Matthew J. Moore/
`
`
`
`
`
`
`
`
`
`
`
`
`
`