UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Coriant Operations, Inc.,
`Coriant (USA) Inc.,
`Ciena Corporation,
`Cisco Systems, Inc. and
`Fujitsu Network Communications, Inc.
`Petitioner
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`v.
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`Capella Photonics, Inc.
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`Patent Owner
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`
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`INTER PARTES REVIEW OF U.S. PATENT NO. RE42,678
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`Filing Date: June 15, 2010
`Reissue Date: September 6, 2011
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`Case IPR: To Be Assigned
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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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`
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`
`
`Coriant Operations, Inc.,
`Coriant (USA) Inc.,
`Ciena Corporation,
`Cisco Systems, Inc. and
`Fujitsu Network Communications, Inc.
`Petitioner
`
`v.
`
`Capella Photonics, Inc.
`
`Patent Owner
`
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. RE42,678
`
`Filing Date: June 15, 2010
`Reissue Date: September 6, 2011
`
`Case IPR: To Be Assigned
`
`
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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. RE42,678
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`
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Coriant Operations, Inc. (formerly Tellabs Operations, Inc.), Coriant
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`(USA), Inc., Ciena Corporation, Cisco Systems, Inc., and Fujitsu Network
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`Communications, Inc. (collectively “Petitioner”) respectfully submit this Motion
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`for Joinder concurrently with a petition (“Petition”) for inter partes review (IPR)
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`under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b), of claims 1-4, 9,
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`10, 13, 17, 19-23, 27, 29, 44-46, 53, and 61-65 of U.S. Patent No. RE42,678 (Ex.
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`1001) (“the ’678 patent”).
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`Petitioner requests institution of IPR and party joinder with the pending,
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`instituted IPR titled, JDS Uniphase Corporation v. Capella Photonics, Inc.,
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`IPR2015-00739 (the “JDSU IPR”), based on identical grounds under which the
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`JDSU IPR was instituted. JDS Uniphase (“JDSU”)1 initiated its proceeding by
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`petitioning the Board on February 14, 2015, and the Board instituted the JDSU
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`IPR on August 25, 2015. Petitioner timely filed this Petition and this motion,
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`within one month of the institution of the JDSU 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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`1 Petitioner understands that by virtue of a re-organization Lumentum Holdings
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`Inc., Lumentum Inc. and Lumentum Operations LLC have succeeded JDSU for
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`purposes of the IPR2015-00739 proceeding.
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`1
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`
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`Motion For Joinder
`U.S. Reissued Patent No. RE42,678
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`the instituted grounds of the JDSU IPR and will not prejudice the patent owner
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`or the first-petitioner JDSU. Intentionally, the Petition is nearly word-for-word
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`identical to the petition for IPR filed by JDSU in the JDSU IPR, except that the
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`Petition has been limited to only the instituted grounds of the JDSU IPR in an
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`effort to avoid multiplication of issues before the Board.2 Further, the Petition
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`cites to the same expert declaration3 and other evidence that were filed with the
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`JDSU IPR petition. 4 Thus, Petitioner puts forth only arguments and evidence
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`that the Board has already considered and determined to show a reasonable
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`likelihood of Petitioner prevailing with respect to at least one of the claims
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`challenged. Joinder would not complicate or delay the JDSU IPR and would not
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`adversely affect the schedule. Joinder would result in efficient and timely
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`2 The only differences between the JDSU IPR Petition and Petitioner’s Petition
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`are shown in redline in Ex. 1048.
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`3 The PTAB has accepted, in a motion for joinder in another inter partes review
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`proceeding, a copy of a previously-submitted expert declaration. See, e.g.,
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`IPR2013-00495, Decision – Petitioner’s Motion for Joinder (paper no. 13), p. 5.
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`4 All exhibits filed with the Petition were copied exactly from IPR2015-00739,
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`except that the prefixes of the exhibit numbers from IPR2015-00739 have been
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`redacted. The exhibit numbers are otherwise identical.
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`2
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`
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`Motion For Joinder
`U.S. Reissued Patent No. RE42,678
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`resolution of the challenges presented in the Petition and the instituted grounds
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`of the JDSU IPR. In contrast, absent joinder, Petitioner may be prejudiced
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`because its interests may not be adequately represented in the JDSU IPR.
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`Should the panel join the parties, Petitioner agrees to subordinate itself,
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`allowing JDSU to lead the joined proceedings absent settlement by JDSU, in line
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`with common Board practice. Joinder with the JDSU IPR would minimally
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`affect its procedure and substance. JDSU has informed Petitioner that it does not
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`oppose joinder.
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`The ’678 patent is assigned on its face to Capella Photonics, Inc.
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`(“Capella” or “Patent Owner”). Capella asserted the ’678 patent against all
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`parties of Petitioner and other parties in S.D. Fla.: Capella Photonics, Inc. v.
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`Cisco Systems, Inc., filed February 12, 2014 as 1:14-cv-20529 (transferred July
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`24, 2014 to N.D. Cal. as 3:14-cv-03348), Capella Photonics, Inc. v. Fujitsu
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`Network Communications, Inc., filed February 12, 2014 as 1:14-cv-20531
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`(transferred July 24, 2014 to N.D. Cal. as 3:14-cv- 03349) , Capella Photonics,
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`Inc. v. Tellabs, Inc. et al., filed February 12, 2014 as 0:14-cv-60350 (transferred
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`July 24, 2014 to N.D. Cal. as 3:14-cv-03350), Capella Photonics, Inc. v. Ciena
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`Corporation et al., filed February 12, 2014 as 1:14-cv- 20530 (transferred July
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`24, 2014 to N.D. Cal. as 5:14-cv-03351), Capella Photonics, Inc. v. Columbus
`3
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`
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`Motion For Joinder
`U.S. Reissued Patent No. RE42,678
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`Networks USA, Inc., filed July 15, 2014 as 0:14-cv-61629, and Capella
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`Photonics, Inc. v. Telefonica International Wholesale Services USA, Inc., filed
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`July 21, 2014 as 1:14-cv-22701, all of which are currently stayed.
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`The ’678 patent is currently being challenged by JDSU in IPR2014-00739,
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`as noted above, as well as by various parties including parties of Petitioner in
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`IPR2014-01276, IPR2015-00894 (joined with IPR2014-01276), and IPR2015-
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`00727.
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`III. 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),
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`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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`4
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`
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`Motion For Joinder
`U.S. Reissued Patent No. RE42,678
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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
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`(Aug. 14, 2012). Here, joining Petitioner to the JDSU 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 nearly identical to the petition for IPR filed by
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`JDSU in the JDSU IPR, except that the Petition has been limited to only the
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`instituted grounds of the JDSU IPR in an effort to avoid multiplication of issues.
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`For simplicity and efficiency, Petitioner has copied JDSU’s IPR petition.
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`Petitioner does not seek to reintroduce grounds or combinations of prior art, or
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`claims not instituted in the JDSU IPR and seeks only to join the proceeding as
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`instituted. The evidence relied upon, including the expert declaration of Sheldon
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`McLaughlin, is the same as was submitted by JDSU in the JDSU IPR. Capella
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`should not require any discovery beyond that which it may need in the JDSU
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`5
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`
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`Motion For Joinder
`U.S. Reissued Patent No. RE42,678
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`IPR—nor should the Board permit any. The Petition presents no new substantive
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`issues relative to the JDSU IPR and does not seek to broaden the scope of the
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`JDSU IPR or request additional discovery. For efficiency’s sake, if joined,
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`Petitioner and JDSU have agreed that JDSU’s counsel will act as the lead
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`counsel as long as JDSU remains in the proceeding.
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`Joinder will not impact the Board’s ability to complete its review in a
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`timely manner. Section 316(a)(11) provides that IPR proceedings should be
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`completed and the Board’s final decision issued within one year of institution of
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`the review.5 See also 37 C.F.R. § 42.100(c). Here, joinder will not affect the
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`Board’s ability to issue its final determination within one year because Petitioner
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`agrees to the same arguments and evidence put forth by JDSU, and agrees to
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`consolidated discovery.
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`In view of the above, Petitioner submits that the current schedule in the
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`JDSU IPR can stay unchanged. At most, the Board can add an additional
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`deadline for Capella to respond to this Motion, but this deadline will not impact
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`other deadlines in the schedule.
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`5 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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`6
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`
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`Motion For Joinder
`U.S. Reissued Patent No. RE42,678
`
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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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`Joinder will simplify briefing and discovery. Given that the JDSU IPR
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`and the Petition address the same prior art, supporting evidence, and instituted
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`grounds for rejection of the same claims, joining these proceedings allows for
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`joint submissions and discovery, further streamlining the proceedings. This
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`should promote efficiency and conserve the Board’s and the parties’ resources.
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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 JDSU 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
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`proceedings affecting a patent asserted against it, and thereby allowed to
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`continue the proceedings should JDSU and Capella settle under 37 C.F.R. §
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`42.74 before a final written decision is issued.
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`E.
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`Joinder will not prejudice Capella or JDSU.
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`Permitting joinder will not prejudice Capella or JDSU 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
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`will also reduce by half the time and expense for depositions and other discovery
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`7
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`
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`Motion For Joinder
`U.S. Reissued Patent No. RE42,678
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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.
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`Fifth, JDSU does not oppose joinder. Addressing the same patent validity
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`questions in a single proceeding with a statutory deadline serves the parties’ and
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`Board’s interests.
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`IV. CONCLUSION
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`Joinder will not affect the substance, procedure, or scheduling of the
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`JDSU IPR. Petitioner files under the statutory joinder provisions as contemplated
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`by the AIA. Joinder will simplify the issues and promote efficiency, justice, and
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`speed.
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`Petitioner respectfully requests IPR on U.S. Patent No. RE42,678 and
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`joinder with JDS Uniphase Corporation v. Capella Photonics, Inc., IPR2015-
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`00739.6
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`6 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. 190733.
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`8
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`Motion For Joinder
`U.S. Reissued Patent No. RE42,678
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`Dated: September 25, 2015
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`Respectfully submitted,
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`
`Matthew J. Moore (Reg. No.
`42,012)
`Matthew.Moore@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street NW, Suite 1000
`Washington, DC 20004-1304
`Tel.: (202) 637-2278
`Fax: (202) 637-2201
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`Robert Steinberg (Reg. No. 33144)
`Bob.Steinberg@lw.com
`Latham & Watkins LLP 355 South
`Grand Avenue
`Los Angeles, CA 90071-1560
`Tel: (213) 891-8989
`Fax: (213) 891-8763
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`Christopher Chalsen (Reg. No.
`30,936) CChalsen@milbank.com
`Lawrence T. Kass (Reg. No.
`40,671) LKass@milbank.com
`Nathaniel Browand (Reg. No.
`59,683) NBrowand@milbank.com
`Suraj Balusu (Reg. No. 65,519)
`SBalusu@milbank.com
`Milbank, Tweed, Hadley & McCloy
`LLP
`28 Liberty Street
`New York, New York 10005
`Tel: (212) 530-5380
`Fax: (212) 822-5380
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`
`
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`/J. Pieter van Es/
`J. Pieter van Es (Reg. No. 37,746)
`PvanEs@bannerwitcoff.com
`BANNER & WITCOFF, LTD.
`10 South Wacker Drive, Suite 3000
`Chicago, IL 60606
`Tel: (312)463-5000
`Fax: (312)463-5001
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`Thomas K. Pratt (Reg. No. 37,210)
`TPratt@bannerwitcoff.com
`BANNER & WITCOFF, LTD.
`10 South Wacker Drive, Suite 3000
`Chicago, IL 60606
`Tel: (312)463-5000
`Fax: (312)463-5001
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`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
`Tel: (202) 824-3000
`Fax: (202) 824-3001
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`Wayne O. Stacy (Reg. 45,125)
`WStacy@cooley.com
`Cooley LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, CO 80021
`Tel: (720) 566-4125
`Fax: (720) 566-4099
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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), I hereby certify that on
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`September 25, 2015, I caused a true and correct 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), to be
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`served via Priority Mail Express on the following:
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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 Avenue, N.W.
`Washington, DC 20005
`Tel.: (202) 371-2600
`Additional address known as likely to effect service
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`By: /Michael S. Cuviello/
`Michael S. Cuviello
`Reg. No. 59,255
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