Paper 7
`Entered: October 20, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LINEAR TECHNOLOGY CORPORATION,
`Petitioner,
`
`v.
`
`IN-DEPTH TEST LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01994
`Patent 6,792,373 B2
`_______________
`
`
`
`Before LINDA M. GAUDETTE and BARRY L. GROSSMAN,
`Administrative Patent Judges.
`
`GAUDETTE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder under 35 U.S.C. § 315(c) and
`37 C.F.R. §§ 42.22 and 42.122(b) and Request for Shortened Response Time
`for Patent Owner’s Preliminary Response
`
`
`
`
`
`
`
`
`
`Entered: October 20, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LINEAR TECHNOLOGY CORPORATION,
`Petitioner,
`
`v.
`
`IN-DEPTH TEST LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01994
`Patent 6,792,373 B2
`_______________
`
`
`
`Before LINDA M. GAUDETTE and BARRY L. GROSSMAN,
`Administrative Patent Judges.
`
`GAUDETTE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder under 35 U.S.C. § 315(c) and
`37 C.F.R. §§ 42.22 and 42.122(b) and Request for Shortened Response Time
`for Patent Owner’s Preliminary Response
`
`
`
`
`
`
`
`
`
`
`IPR2015-01994
`Patent 6,792,373 B2
`
`
`I. BACKGROUND
`
`On September 28, 2015, Linear Technology Corporation
`
`(“Petitioner”) filed a Petition (Paper 2) to institute an inter partes review of
`
`U.S. Patent No. 6,792,373 B2, together with a Motion for Joinder (Paper 3)1
`
`of the Petition with Maxim Integrated Products Inc. v. In-Depth Test LLC,
`
`Case IPR2015-01627 (PTAB July 27, 2015). On October 5, 2015, Petitioner
`
`sent an email communication to the Board requesting a conference call “to
`
`seek permission to move to shorten the time for any preliminary response in
`
`IPR2015-01994, and to seek an expedited schedule for briefing on
`
`Petitioner’s pending Motion for Joinder with IPR2015-01627.”
`
`In response to Petitioner’s email communication, a conference call
`
`was held on October 19, 2015, among Mark Rowland, representing
`
`Petitioner; Joshua Wyde and Daniel Noblitt, representing In-Depth
`
`Test LLC (“Patent Owner”); and Judges Gaudette, Grossman, and Chen.
`
`On the call, Petitioner requested an expedited briefing schedule for its
`
`Motion for Joinder, arguing joinder would promote judicial efficiency,
`
`because the petitions in IPR2015-01627 and the present inter partes review
`
`involve the same patent, claims, and grounds, and rely on the same
`
`arguments and evidentiary record. Petitioner further requested that the pre-
`
`institution briefing schedule in the present case be revised to correspond
`
`with the schedule in IPR2015-01627 (wherein a preliminary response is due
`
`on November 4, 2015), and proposed that Patent Owner file a single, joint
`
`preliminary response, if any, in both the present inter partes review and
`
`
`1 Paper 3 also included a “Request for Shortened Response Time for Patent
`Owner’s Preliminary Response.”
`
` 2
`
`
`
`
`
`
`
`IPR2015-01994
`Patent 6,792,373 B2
`
`
`IPR2015-01627. According to Petitioner, Patent Owner would not be
`
`prejudiced by the shortened time period for filing a preliminary response
`
`(due in the present case on January 8, 2016), because the Petition in the
`
`present inter partes review is substantially identical to the petition filed in
`
`IPR2015-01627. Petitioner advised that it had contacted Maxim Integrated
`
`Products, Inc., the petitioner in IPR2015-01627, regarding the Motion for
`
`Joinder, but that Maxim had not stated its views on the joinder issue.
`
`Patent Owner responded that it believed a Motion for Joinder was
`
`premature at this stage of the proceeding, contending 35 U.S.C. § 315
`
`provides for joinder only after institution of an inter partes review, and the
`
`Board has not yet instituted such review in IPR2015-01627. Patent Owner
`
`further stated that it would be prejudiced if required to file a single, joint
`
`preliminary response, because its preliminary response in each case would
`
`likely differ in that an argument under 35 U.S.C. §325(d), available in the
`
`present Petition for inter partes review, would not be applicable in IPR2015-
`
`01627.
`
`II. ANALYSIS
`
`35 U.S.C. § 315(c) pertains to joinder in an inter partes review, and
`
`reads as follows:
`
`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.
`
`37 C.F.R. § 42.122(b), also pertaining to requests for joinder in inter partes
`
` 3
`
`
`
`proceedings, reads:
`
`
`
`
`
`IPR2015-01994
`Patent 6,792,373 B2
`
`
`Joinder may be requested by a patent owner or petitioner. Any
`request for joinder must be filed, as a motion under §42.22, no
`later than one month after the institution date of any inter partes
`review for which joinder is requested. The time period set forth
`in §42.101(b) shall not apply when the petition is accompanied
`by a request for joinder.
`
`It is clear from both the statute and the rule that a request for joinder is
`
`appropriate only if a decision granting institution has been entered in the
`
`inter partes review for which joinder is requested.
`
`After consideration of the arguments advanced by Petitioner in its
`
`Motion for Joinder, and during the conference call on October 19, we are not
`
`persuaded that a departure from the requirements of 35 U.S.C. § 315(c) and
`
`37 C.F.R. § 42.122(b) is warranted in this case. In this regard, we note that
`
`in the cases cited by Petitioner in support of its Motion for Joinder, the
`
`requests were for joinder with an inter partes review in which trial already
`
`had been instituted. See e.g., Motorola Mobility LLC v. Softview LLC, Case
`
`IPR2013-00256, slip op. at 2 (PTAB March 27, 2014) (Paper 10); Dell Inc.
`
`v. Network-1 Security Solutions, Inc., Case IPR2013-00385, slip op. at 7
`
`(PTAB July 29, 2013) (Paper 17).
`
`As no decision on the request for inter partes review has been entered
`
`in IPR2015-01627, Petitioner’s Motion for Joinder is premature. We,
`
`therefore, deny Petitioner’s Motion for Joinder and concurrent request, made
`
`in contemplation of joinder, to accelerate the briefing schedule in this case to
`
`correspond with the schedule in IPR2015-01627.
`
`In consideration of the foregoing, it is
`
`III. ORDER
`
`ORDERED that Petitioner’s Motion for Joinder under 35 U.S.C.
`
` 4
`
`
`
`
`
`
`
`IPR2015-01994
`Patent 6,792,373 B2
`
`
`§ 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) and Request for Shortened
`
`Response Time for Patent Owner’s Preliminary Response is denied; and
`
`FURTHER ORDERED that Petitioner is authorized to file a Motion
`
`for Joinder with IPR2015-01627 when, and if, trial is instituted in that case.
`
`
`PETITIONER:
`
`J. Steven Baughman
`Steven.baughman@ropesgray.com
`
`Mark Rowland
`Mark.rowland@ropesgray.com
`
`
`
`PATENT OWNER:
`
`Joshua Wyde
`jwyde@wydelegal.com
`
`Daniel Noblitt
`dnoblitt@ngtechlaw.com
`
` 5
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