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