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