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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`Oracle Corporation
`Petitioner,
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`v.
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`Crossroads Systems, Inc.
`Patent Owner.
`____________
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`IPR2015-_______
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`U.S. Patent No. 7,051,147
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`____________
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`MOTION FOR JOINDER
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Petitioner Oracle Corporation respectfully requests joinder pursuant to 35
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`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the above- captioned inter partes review
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`with NetApp, Inc. v. Crossroads Systems, Inc., IPR2015-00773. This motion is timely
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`under 37 C.F.R. §§ 42.22 and 42.122(b) because it is filed before the date which is one
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`month after the date on which the -00773 case is instituted.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1. Petitioner was served with a complaint asserting infringement of U.S.
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`Patent No. 7,051,147 more than one year before filing the petition in the above-
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`captioned proceeding.
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`2. The above-captioned inter partes review presents challenges which are
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`identical to those on which trial was instituted in IPR2015-00773. The petition in the
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`instant case copies verbatim the challenges set forth in the petition in IPR2015-00773.
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`3. The above-captioned inter partes review relies on the same expert
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`declaration offered in support of IPR2015-00773. Both petitions rely upon the
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`declaration of Professor Jeffrey S. Chase, Ph.D dated July 18, 2014. Ex. 1010 (in both
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`cases).
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`4. NetApp, Inc., the petitioner in IPR2015-00773, does not oppose this
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`motion for joinder. NetApp has consented to the joinder in part due to the
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`conditions outlined below, to which Petitioner has agreed.
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`5. Petitioner has agreed that NetApp shall remain in control of the joined
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`1
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`proceedings. Petitioner has agreed to not materially participate in the joined
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`proceedings unless and until the parties to IPR2015-00773 are dismissed from the
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`joined proceedings or elect to transfer control to Petitioner, as may occur in the event
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`of settlement or advanced settlement negotiations. In the event either of the
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`foregoing events occur, Petitioner intends to “step into the shoes” of NetApp and
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`continue to prosecute the joined proceedings.
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`6. Petitioners have agreed to retain Dr. Chase in the -773 case only if the
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`foregoing contingency occurs. In the meantime, Dr. Chase will be solely retained by
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`NetApp in the -773 case.
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`7. For avoidance of doubt, the foregoing is not intended to circumscribe
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`any right Petitioner may have to participate in any appeal from the joined proceeding.
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`The foregoing is also not intended to foreclose the possibility that Petitioner may
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`request permission to materially participate in these proceedings if the circumstances
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`change in a manner that warrants such participation. Lastly, the foregoing is not
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`intended to foreclose communication among NetApp and Petitioner concerning the
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`substantive or procedural issues in the joined proceeding.
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`2
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`III. GOVERNING LEGAL PRINCIPLES
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`A motion for joinder may be filed within one month after institution of a trial.
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`37 C.F.R. § 42.122(b). The AIA permits joinder of parties in like review proceedings.
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`The statutory provision governing joinder of inter partes review proceedings is 35
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`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.
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`35 U.S.C. § 315(b) bars institution of a petition for inter partes review when the
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`petition is filed more than one year after the petitioner (or the petitioner’s real party-in
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`interest or privy) is served with a complaint alleging infringement of the patent. 35
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`U.S.C. § 315(b); 37 C.F.R. § 42.101(b). However, the one-year time bar does not apply
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`to a request for joinder. 35 U.S.C. § 315(b) (final sentence) (“[t]he time limitation set
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`forth in the preceding sentence shall not apply to a request for joinder under
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`subsection (c)”); 37 C.F.R. § 42.122(b).
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`Joinder may be authorized when warranted, but the decision to grant joinder is
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`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When exercising that
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`discretion, the Board is mindful that patent trial regulations, including the rules for
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`3
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`joinder, must be construed to secure the just, speedy, and inexpensive resolution of
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`every proceeding. 37 C.F.R. § 42.1(b). As indicated in the legislative history, the
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`Board will determine whether to grant joinder on a case-by-case basis, taking into
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`account the particular facts of each case. See 157 Cong. Rec. S1376 (daily ed. Mar. 8,
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`2011) (statement of Sen. Kyl) (when determining whether and when to allow joinder,
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`the Office may consider factors including the breadth or unusualness of the claim
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`scope, claim construction issues, and consent of the patent owner).
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`That being said, the legislative history suggests that the joinder would be
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`granted as a matter of right where the later petitioner presents the identical grounds of
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`unpatentability. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of
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`Sen. Kyl) (“The Office anticipates that joinder will be allowed as of right - if an inter
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`partes review is instituted on the basis of a petition, for example, a party that files an
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`identical petition will be joined to that proceeding, and thus allowed to file its own
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`briefs and make its own arguments.”) (emphasis added).
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`A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
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`(3) explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified. Dell, Inc. v. Network-1 Security Solutions, Inc., Case IPR2013-00385, Paper No.
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`4
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`17 (July 29, 2013) at 4.
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`IV.
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`ARGUMENT
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`Given the identity of the challenges and Petitioner’s agreement to not
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`materially participate in the joined proceeding absent the affirmative decision of
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`NetApp to be dismissed from the proceedings or transfer control to Petitioner, the
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`grant of the instant motion for joinder should have no impact on the trial schedule
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`and would not create any meaningful additional burden on Patent Owner.
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`The grounds set forth in the petition are identical to those on which trial may
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`be instituted in the earlier filed proceeding. The petition in the above-captioned case
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`sets forth verbatim the same challenges as the petition in IPR2015-00773.
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`As set forth above, Petitioner does not intend to file separate papers or
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`conduct separate cross examinations of any witnesses. NetApp will remain in sole
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`control of the review proceeding until such time as they elect to be dismissed from
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`the proceeding or pass control to Petitioner in view of pending settlement
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`negotiations with Patent Owner.
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`This arrangement substantially, if not entirely, eliminates the prospect that any
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`additional burden might be borne by Patent Owner in the joined proceeding. The
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`only meaningful difference, from Patent Owner’s perspective, would be that
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`Petitioner will attend calls with the Board, will be copied on any correspondence in
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`this proceeding, and may attend depositions and trial.
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`5
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`There would be no need to alter the scheduling order in IPR2015-00773,
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`should that case be instituted. The joined proceedings should proceed according to
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`that same schedule.
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`V.
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`CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the above-
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`captioned review proceeding be instituted and joined with NetApp, Inc. v. Crossroads
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`Systems, Inc., IPR2015-00773. Any fees due in connection with this motion may be
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`charged to Deposit Account No. 15-0030.
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`Dated: April 17, 2015
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`Respectfully submitted,
`OBLON LLP
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`/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
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b)
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`on the Patent Owner by UPS, next day delivery, of a copy of the foregoing MOTION
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`FOR JOINDER at the correspondence address of record for the ‘041 Patent:
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`SPRINKLE IP LAW GROUP
`1301 W. 25TH STREET
`SUITE 408
`AUSTIN, TX 78705
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`Dated: April 17, 2015
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`Respectfully Submitted,
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`/Greg H. Gardella/
`Greg H. Gardella
`(Reg. No. 46,045)
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