UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CIENA CORPORATION
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`CORIANT OPERATIONS, INC., and
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`CORIANT (USA) INC.,
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`Petitioner v.
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`CAPELLA PHOTONICS, INC.
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`Patent Owner
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`Inter Partes Review Case No. Unassigned
`Patent No. RE42,678
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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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`Mail Stop Patent Board Patent
`Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DC\4036719.5
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`CIENA CORPORATION
`
`CORIANT OPERATIONS, INC., and
`
`CORIANT (USA) INC.,
`
`Petitioner v.
`
`CAPELLA PHOTONICS, INC.
`
`Patent Owner
`
`Inter Partes Review Case No. Unassigned
`Patent No. RE42,678
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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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`Mail Stop Patent Board Patent
`Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`DC\4036719.5
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`
`
`
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`Motion for Joinder
`U.S. Reissue Patent No. 42,678
`STATEMENT OF PRECISE RELIEF REQUESTED
`I.
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`Coriant Operations, Inc. (“COI”), Coriant (USA) Inc. (“CUSA”), and Ciena
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`Corporation (“Ciena”) (collectively, “Petitioner”) submit this Motion for Joinder
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`concurrently with a Petition for Inter Partes Review (IPR) of U.S. Patent No.
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`RE42,678 (“the ‘678 Patent”) (“Petition”) under 35 U.S.C. § 315(c) and 37 C.F.R.
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`§§ 42.22 and 42.122(b), of claims 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53 and
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`61-65 of U.S. Patent No. RE42,678 (Ex. 1001).
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`Petitioner requests institution of IPR and party joinder with the pending,
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`instituted IPR titled, Fujitsu Network Communications, Inc. v. Capella Photonics,
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`Inc., Case No. IPR2015-00727 (“the FNC IPR”), based on identical grounds that
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`form the basis for a pending, instituted IPR proceeding. FNC initiated its
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`proceeding by petitioning the Board on February 12, 2015; the Board instituted the
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`FNC IPR on August 24, 2015. Petitioner timely filed this Petition and this motion
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`within one month of the institution of the FNC IPR. 37 C.F.R. § 42.122(b).
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`Joinder will efficiently resolve the challenges presented in the Petition and
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`the instituted grounds of the FNC IPR and will not prejudice the patent owner or
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`the first-petitioner FNC. Intentionally, the Petition is nearly word-for-word
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`identical to the petition in the FNC IPR for the instituted grounds in an effort to
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`avoid multiplication of issues before the Board.1 Further, the expert declaration
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`1 The only differences between the FNC IPR Petition and this Petition are shown
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`DC\4036719.5
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`1
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`
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`Motion for Joinder
`U.S. Reissue Patent No. 42,678
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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 FNC IPR.2
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`Should the panel join the parties, Petitioner agrees to subordinate itself,
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`allowing FNC to lead the joined proceedings absent settlement by FNC, in line
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`with common Board practice. Joinder with the FNC IPR would minimally affect
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`its procedure and substance. FNC has stated to Petitioner that it does not oppose
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`joinder.
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS
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`The ’678 patent is assigned on its face to Capella Photonics, Inc. (“Capella”
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`or “Patent Owner”). Capella asserted the ’678 patent against Petitioner (Ciena
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`Corporation, Coriant Operations, Inc. (formerly Tellabs Operations, Inc.), and
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`Coriant (USA) Inc.), Fujitsu Network Communications, Inc., (FNC), Cisco, and
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`other parties in S.D. Fla.: Capella Photonics, Inc. v. FNC Systems, Inc., filed
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`February 12, 2014 as 1:14-cv-20529 (transferred July 24, 2014 to N.D. Cal. as
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`3:14-cv-03348), Capella Photonics, Inc. v. Fujitsu Network Communications, Inc.,
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`filed February 12, 2014 as 1:14-cv-20531 (transferred July 24, 2014 to N.D. Cal.
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`in redline in Ex. 1037.
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`2 The only differences between the declaration supporting FNC’s IPR Petition and
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`the declaration supporting this Petition are shown in redline in Ex. 1038.
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`2
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`Motion for Joinder
`U.S. Reissue Patent No. 42,678
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`as 3:14-cv-03349) , Capella Photonics, Inc. v. Tellabs, Inc. et al., filed February
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`12, 2014 as 0:14-cv-60350 (transferred July 24, 2014 to N.D. Cal. as 3:14-cv-
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`03350), Capella Photonics, Inc. v. Ciena Corporation et al., filed February 12,
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`2014 as 1:14-cv-20530 (transferred July 24, 2014 to N.D. Cal. as 5:14-cv-03351),
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`Capella Photonics, Inc. v. Columbus Networks USA, Inc., filed July 15, 2014 as
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`0:14-cv-61629 (stayed), and Capella Photonics, Inc. v. Telefonica International
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`Wholesale Services USA, Inc., filed July 21, 2014 as 1:14-cv-22701. Each district
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`court case is currently stayed. The ’678 patent is currently being challenged by
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`FNC in IPR2014-00727, as noted above, and by various parties including parties of
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`Petitioner in IPR2014-01276, IPR2015-00894 (joined with IPR2014-01276), and
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`IPR2014-00739.
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`III.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A.
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`Legal Standard
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`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
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`review, the Director, in his or her discretion, may join as
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`a party to that inter partes review any person who
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`properly files a petition under section 311 that the
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`Director, after receiving a preliminary response under
`3
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`
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`Motion for Joinder
`U.S. Reissue Patent No. 42,678
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`section 313 or the expiration of the time for filing such a
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`response, determines warrants the institution of an inter
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`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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`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 FNC 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 petition in the FNC IPR for the
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`instituted grounds in an effort to avoid multiplication of issues. For simplicity and
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`efficiency, Petitioner has copied FNC’s IPR petition. Petitioner does not seek to
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`reintroduce grounds or combinations of prior art, or claims not instituted in the
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`FNC IPR and seeks only to join the proceeding as instituted. Petitioner is retaining
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`the same expert as FNC, Dr. Timothy Drabik. The supporting declaration of Dr.
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`Drabik is essentially identical to the declaration he previously submitted in the
`4
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`
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`Motion for Joinder
`U.S. Reissue Patent No. 42,678
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`FNC IPR. Capella should not require any discovery beyond that which it may
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`need in the FNC IPR—nor should the Board permit any. The Petition presents no
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`new substantive issues relative to the FNC IPR and does not seek to broaden the
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`scope of the FNC IPR or request additional discovery. For efficiency’s sake, if
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`joined, Petitioner and FNC have agreed that FNC’s counsel will act as the lead
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`counsel as long as FNC remains in the proceeding.
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`Joinder will not impact the Board’s ability to complete its review in a timely
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`manner.3 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 FNC 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 FNC IPR was instituted, and the
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`invalidity grounds were largely copied verbatim from FNC’s IPR petition.
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`3 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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`5
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`Motion for Joinder
`U.S. Reissue Patent No. 42,678
`
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`In view of the above, Petitioner submits that the current schedule in the FNC
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`IPR can stay unchanged. At most, the Board can add an additional deadline for
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`Capella to respond to this Motion, but this deadline will not impact other deadlines
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`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 and identical supporting evidence as the FNC IPR and
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`identical arguments for patent invalidity as instituted in the FNC IPR. Joinder will
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`simplify briefing and discovery. Given that the FNC IPR and the Petition address
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`the same prior art and grounds for rejection of the same claims, joining these
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`proceedings allows for joint submissions and discovery, further streamlining the
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`proceedings. This should promote efficiency and conserve the Board’s and the
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`parties’ resources. By contrast, the determination of the same patent validity
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`questions for the ’678 patent in multiple proceedings would duplicate efforts, and
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`create a risk of inconsistent results. Joinder avoids that.
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`D. Without joinder, Petitioner may be prejudiced.
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`Petitioner may be prejudiced if it is not permitted to join in the FNC IPR.
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`Capella has asserted the ’678 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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`6
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`
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`Motion for Joinder
`U.S. Reissue Patent No. 42,678
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`proceedings should FNC 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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`E. Joinder will not prejudice Capella or FNC.
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`Permitting joinder will not prejudice Capella or FNC 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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`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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`FNC 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 FNC
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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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`7
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`
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`Motion for Joinder
`U.S. Reissue Patent No. 42,678
`
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`Petitioner respectfully requests IPR on U.S. Patent No. RE42,678 and
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`joinder with Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.,
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`IPR2015-00727.4
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`4 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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`8
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`Respectfully submitted,
`/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
`
`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
`
`Jordan N. Bodner (Reg. No. 42,338)
`JBodner@bannerwitcoff.com
`Michael S. Cuviello (Reg. No. 59,255)
`MCuviello@bannerwitcoff.com
`Banner & Witcoff, Ltd.
`1100 13th Street NW, Suite 1200
`Washington, DC 20005
`T: (202) 824-3000, F: (202) 824-3001
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`9
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`Motion for Joinder
`U.S. Reissue Patent No. 42,678
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`Dated: September 24, 2015
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. §§ 42.6(e) and 42.105
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`Under 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80 and 42.100-.123,
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`the undersigned certifies that on September 24, 2015, a complete and entire copy
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`of this Motion for Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, And
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`42.122(b) was served via EXPRESS MAIL®, postage prepaid, to the Patent
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`Owner by serving the following parties:
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`LAW OFFICES OF BARRY N. YOUNG
`P.O. Box 61197
`Palo Alto, CA 94306
`Patent owner’s correspondence address of record
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`
`
`Robert Greene Sterne
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Ave. NW, Suite 600
`Washington, DC 20005
`Additional address known as likely to effect service
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`
`
`
`
` /Matthew J. Moore/
`Matthew J. Moore
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`
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`
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`Date: September 24, 2015
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