UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Oracle Corporation and
`Dot Hill Systems Corp.
`Petitioners,
`
`v.
`
`Crossroads Systems, Inc.
`Patent Owner.
`____________
`
`IPR2015-_______
`
`U.S. Patent No. 6,425,035
`
`____________
`
`MOTION FOR JOINDER
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Oracle Corporation and
`Dot Hill Systems Corp.
`Petitioners,
`
`v.
`
`Crossroads Systems, Inc.
`Patent Owner.
`____________
`
`IPR2015-_______
`
`U.S. Patent No. 6,425,035
`
`____________
`
`MOTION FOR JOINDER
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Petitioners Oracle Corporation and Dot Hill Systems Corporation respectfully
`
`request joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the above-
`
`captioned inter partes review with Cisco Systems, Inc. and Quantum Corporation v. Crossroads
`
`Systems, Inc., IPR2014-01226. This motion is timely under 37 C.F.R. §§ 42.22 and
`
`42.122(b) because it is filed within one month of the date on which the -01226 case
`
`was instituted.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1. Petitioners were served with complaints asserting infringement of U.S.
`
`Patent No. 6,425,035 more than one year before filing the petition in the above-
`
`captioned proceeding.
`
`2. The above-captioned inter partes review presents challenges which are
`
`identical to those on which trial was instituted in IPR2014-01226. The petition in the
`
`instant case copies verbatim the challenges set forth in the petition in IPR2014-01226.
`
`3. The above-captioned inter partes review relies on the same expert
`
`declaration offered in support of IPR2014-01226. Both petitions rely upon the
`
`declaration of Andrew Hospodor, Ph.D dated September 5, 2014. Ex. 1003 (in both
`
`cases).
`
`4. Cisco Systems, Inc. and Quantum Corporation, the petitioners in
`
`IPR2014-01226, do not oppose this motion for joinder. Cisco and Quantum have
`
`consented to the joinder in part due to the conditions outlined below, to which
`
`
`
`1
`
`
`
`Petitioners have agreed.
`
`5. Petitioners have agreed that Cisco and Quantum shall remain in
`
`control of the joined proceedings. Petitioners have agreed to not materially
`
`participate in the joined proceedings unless and until the parties to IPR2014-01226 are
`
`dismissed from the joined proceedings or elect to transfer control to Petitioners, as
`
`may occur in the event of settlement or advanced settlement negotiations. In the
`
`event either of the foregoing events occur, Petitioners intend to “step into the shoes”
`
`of Cisco and Quantum and continue to prosecute the joined proceedings.
`
`6. Petitioners have agreed to retain Dr. Hospodor only if the foregoing
`
`contingency occurs. In the meantime, Dr. Hospodor will be solely retained by Cisco
`
`and Quantum.
`
`7. For avoidance of doubt, the foregoing is not intended to circumscribe
`
`any right Petitioners may have to participate in any appeal from the joined proceeding.
`
`The foregoing is also not intended to foreclose the possibility that Petitioners may
`
`request permission to materially participate in these proceedings if the circumstances
`
`change in a manner that warrants such participation. Lastly, the foregoing is not
`
`intended to foreclose communication among Cisco, Quantum and Petitioners
`
`concerning the substantive or procedural issues in the joined proceeding.
`
`
`
`
`
`
`
`2
`
`
`
`III. GOVERNING LEGAL PRINCIPLES
`
`A motion for joinder may be filed within one month after institution of a trial.
`
`37 C.F.R. § 42.122(b). The AIA permits joinder of parties in like review proceedings.
`
`The statutory provision governing joinder of inter partes review proceedings is 35
`
`U.S.C. § 315(c), which 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.
`
`35 U.S.C. § 315(b) bars institution of a petition for inter partes review when the
`
`petition is filed more than one year after the petitioner (or the petitioner’s real party-in
`
`interest or privy) is served with a complaint alleging infringement of the patent. 35
`
`U.S.C. § 315(b); 37 C.F.R. § 42.101(b). However, the one-year time bar does not apply
`
`to a request for joinder. 35 U.S.C. § 315(b) (final sentence) (“[t]he time limitation set
`
`forth in the preceding sentence shall not apply to a request for joinder under
`
`subsection (c)”); 37 C.F.R. § 42.122(b).
`
`Joinder may be authorized when warranted, but the decision to grant joinder is
`
`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When exercising that
`
`discretion, the Board is mindful that patent trial regulations, including the rules for
`
`
`
`3
`
`
`
`joinder, must be construed to secure the just, speedy, and inexpensive resolution of
`
`every proceeding. 37 C.F.R. § 42.1(b). As indicated in the legislative history, the
`
`Board will determine whether to grant joinder on a case-by-case basis, taking into
`
`account the particular facts of each case. See 157 Cong. Rec. S1376 (daily ed. Mar. 8,
`
`2011) (statement of Sen. Kyl) (when determining whether and when to allow joinder,
`
`the Office may consider factors including the breadth or unusualness of the claim
`
`scope, claim construction issues, and consent of the patent owner).
`
`That being said, the legislative history suggests that the joinder would be
`
`granted as a matter of right where the later petitioner presents the identical grounds of
`
`unpatentability. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of
`
`Sen. Kyl) (“The Office anticipates that joinder will be allowed as of right - if an inter
`
`partes review is instituted on the basis of a petition, for example, a party that files an
`
`identical petition will be joined to that proceeding, and thus allowed to file its own
`
`briefs and make its own arguments.”) (emphasis added).
`
`A motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
`
`(3) explain what impact (if any) joinder would have on the trial schedule for the
`
`existing review; and (4) address specifically how briefing and discovery may be
`
`simplified. Dell, Inc. v. Network-1 Security Solutions, Inc., Case IPR2013-00385, Paper No.
`
`
`
`4
`
`
`
`17 (July 29, 2013) at 4.
`
`IV.
`
`ARGUMENT
`
`Given the identity of the challenges and Petitioners’ agreement to not
`
`materially participate in the joined proceeding absent the affirmative decision of Cisco
`
`and Quantum to be dismissed from the proceedings or transfer control to Petitioners,
`
`the grant of the instant motion for joinder should have no impact on the trial
`
`schedule and would not create any meaningful additional burden on Patent Owner.
`
`The grounds set forth in the petition are identical. The petition in the above-
`
`captioned case sets forth verbatim the same challenges as the petition in IPR2014-
`
`01226.
`
`As set forth above, Petitioners do not intend to file separate papers or conduct
`
`separate cross examinations of any witnesses. Cisco and Quantum will remain in sole
`
`control of the review proceeding until such time as they elect to be dismissed from
`
`the proceeding or pass control to Petitioners in view of pending settlement
`
`negotiations with Patent Owner.
`
`This arrangement substantially, if not entirely, eliminates the prospect that any
`
`additional burden might be borne by Patent Owner in the joined proceeding. The
`
`only meaningful difference, from Patent Owner’s perspective, would be that
`
`Petitioners will attend calls with the Board, will be copied on any correspondence in
`
`this proceeding, and may attend depositions and trial.
`
`
`
`5
`
`
`
`There would be no need to alter the existing scheduling order in IPR2014-
`
`01226. The joined proceedings should proceed according to that same schedule.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioners respectfully request that the above-
`
`captioned review proceeding be instituted and joined with Cisco Systems, Inc. and
`
`Quantum Corporation v. Crossroads Systems, Inc., IPR2014-01226. Any fees due in
`
`connection with this motion may be charged to Deposit Account No. 150030.
`
`
`
`
`
`
`
`
`Respectfully submitted,
`OBLON LLP
`
`
`
`
`
` /Greg H. Gardella/
`Greg H. Gardella
`Reg. No. 46,045
`1940 Duke Street
`Alexandria, Virginia 22314
`Tel: (703) 413-3000
`Fax: (703) 413-2220
`cpdocketgardella@oblon.com
`
`
`
`COOLEY LLP
`
`
`
`
`
` /Orion Armon/
`Orion Armon
`Reg. No. 65,421
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (720) 566-4119
`Fax: (720) 566-4099
`oarmon@cooley.com
`
`
`Dated:
`
`
`
`
`
`February 27, 2015
`
`
`
`
`
`
`
`
`
`
`Dated:
`
`
`
`
`
`February 27, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b)
`
`on the Patent Owner by UPS, next day delivery, of a copy of the foregoing MOTION
`
`FOR JOINDER at the correspondence address of record for the ‘035 Patent:
`
`SPRINKLE IP LAW GROUP
`1301 W. 25TH STREET
`SUITE 408
`AUSTIN, TX 78705
`
`
`
`Respectfully Submitted,
`
`
`
`/Greg H. Gardella/
`Greg H. Gardella
`(Reg. No. 46,045)
`
`
`
`
`
`
`
`Dated:
`
`
`
`
`
`
`
`
`
`February 27, 2015
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
