Motion for Joinder
`U.S. Pat. No. 5,591,678
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`Paper No. 3
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`Sony Corporation
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`Petitioner
`v.
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`Raytheon Company
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`(record) Patent Owner
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`Case: IPR2016-00209
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`Patent No. 5,591,678
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`MOTION FOR JOINDER WITH RELATED INTER PARTES
`REVIEW OF U.S. PATENT NO. 5,591,678
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`U.S. Pat. No. 5,591,678
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`Paper No. 3
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`Sony Corporation
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`Petitioner
`v.
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`Raytheon Company
`
`(record) Patent Owner
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`
`
`Case: IPR2016-00209
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`Patent No. 5,591,678
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`MOTION FOR JOINDER WITH RELATED INTER PARTES
`REVIEW OF U.S. PATENT NO. 5,591,678
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`I.
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`RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner Sony
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`Corporation (“Sony”) moves for joinder of its today-filed petition for inter partes
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`review (“IPR”) of claims 1-18 of U.S. Patent No. 5,591,678 (“the ’678 patent”)
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`with a previously filed IPR styled Sony Corporation v. Raytheon Company, Case
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`No. IPR2015-01201.
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`II. APPLICABLE LEGAL STANDARD
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`The statutory provision governing joinder of IPR proceedings is 35 U.S.C.
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`§ 315(c), which provides as follows:
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`(c) JOINDER.--If the Director institutes an inter partes review, the
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`Director, in his or her discretion, may join as a party to that inter
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`partes review any person who properly files a petition under section
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`311 that the Director, after receiving a preliminary response under
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`section 313 or the expiration of the time for filing such a response,
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`determines warrants the institution of an inter partes review under
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`section 314.
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`Relatedly, 37 C.F.R. § 42.122 provides in relevant part:
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`Multiple proceedings and Joinder. (b) Request for Joinder. Joinder
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`may be requested by a patent owner or petitioner. Any request for
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`joinder must be filed, as a motion under § 42.22, no later than one
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`month after the institution date of any inter partes review for which
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`joinder is requested. The time period set forth in § 42.101(b) shall not
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`apply when the petition is accompanied by a request for joinder.
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`1
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`35 U.S.C. § 315(c) authorizes joinder of issues to a proceeding involving the
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`same parties. Target Corp. v. Destination Maternity Corp., IPR2014-00508,
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`Decision Granting Request For Rehearing, Paper 28, at 10 (PTAB Feb. 12, 2015).
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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
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified.” Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-
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`00385, Decision Granting Motion For Joinder, Paper 17, at 4 (PTAB July 29,
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`2013).
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`III. STATEMENT OF MATERIAL FACTS
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`1.
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`On May 14, 2015, Sony filed a petition for IPR of claims 1-18 of the
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`’678 patent, which was assigned Case No. IPR2015-01201.
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`2.
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`As of this motion, the Board has not issued its decision whether to
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`institute review of IPR2015-01201.
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`3.
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`IPR2015-01201 raised six grounds of unpatentability of the ’678
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`patent: (1) claims 1, 6, 7, 10, and 11 are anticipated by U.S. Pat. No. 5,202,754
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`(“Bertin”); (2) claims 5 and 12-13 are obvious over Bertin as in Ground 1 in view
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`of Japanese Unexamined Patent Application Publication No. 64-18248, published
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`January 23, 1989 (“Morimoto”); (3) claim 9 is obvious over Bertin as in Ground 1
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`2
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`in further view of U.S. Pat. No. 4,982,266 (“Ying”); (4) claims 1-2, 4-5, 10, 13-14
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`and 16-17 are obvious over Morimoto in view of a set of primarily U.S. patent
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`references known as the “CMP / Etching references”, including U.S. Pat. No.
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`5,189,500 (“Kusunoki”); (5) claims 8 and 18 are obvious as in Ground 4 in view of
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`U.S. Pat. No. 4,681,718 (“Oldham”); and (6) claims 3 and 15 are obvious as in
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`Ground 4 in view of Bertin.
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`4.
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`This motion is filed concurrently with Sony’s second petition for IPR
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`of the ’678 patent, which raises eight grounds of unpatentability involving several
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`of the same prior art references as IPR2015-01201: (1) claims 1-4, 6-7, and 10-11
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`are anticipated by U.S. Pat. No. 4,422,091 (“Liu”); (2) claims 2-4 and 11 are
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`obvious over Liu in view of U.S. Pat. No. 4,426,768 (“Black”); (3) claims 5 and 12-
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`16 are obvious over Liu in view of U.S. Patent No. 4,106,050 (“Riseman”); (4)
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`claim 8 is obvious over Liu in view of Oldham, (5) claim 10 is obvious over Liu in
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`view of U.S. Pat. No. 3,846,198 (“Wen”); (6) claim 9 is obvious over Liu and Wen,
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`in further view of Ying; (7) claim 17 is obvious over Liu and Riseman, in further
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`view of Japanese Unexamined Patent Application Publication No. 03-108776,
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`published May 8, 1991, which is an earlier published version of Kusunoki; and (8)
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`Claim 18 is obvious over Liu and Riseman, in further view of Oldham.
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`5.
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`The primary reference in the second petition, Liu, was filed on
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`January 19, 1981, and issued on December 20, 1983, and is therefore prior art under
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`3
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`35 U.S.C. § 102(b). One of the two primary references in the first petition, Bertin,
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`was filed on September 13, 1991, and issued on April 13, 1993, and is therefore
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`prior art under 35 U.S.C. § 102(e). In the first petition, several claims (claims 3, 6,
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`7, 9, 11, 12, and 15) are challenged only in grounds that depend in some way on
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`Bertin.
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`6.
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`The primary reference in Sony’s second petition, Liu, was not known
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`to Sony at the time Sony’s first petition was filed. Petitioner first became aware of
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`Liu in late August/early September, 2015.
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`7.
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`The ’678 patent has been asserted against Sony in Raytheon Company
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`v. Sony Corporation, et al., C.A. No. 2:15-cv-342 (E.D. Tex.) and Raytheon
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`Company v. Samsung Electronics Co., Ltd., et al., C.A. No. 2-15-cv-00341 (E.D.
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`Tex.). Both cases were filed on March 6, 2015—less than one year before the filing
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`of this motion and of Sony’s concurrently filed second petition—and remain
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`pending.
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`IV. DISCUSSION
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`A.
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`Joinder Is Timely
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`This motion is made “no later than one month after the institution date” of the
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`IPR2015-01201 as required by Rule 42.122(b). Trial has not yet been instituted in
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`IPR2015-01201.
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`4
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`B.
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`Joinder Is Appropriate
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`1. The Petitions Involve the Same Parties, the Same Patent, Common
`Issues, and Overlapping Prior Art
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`The present petition for IPR of the ’678 patent involves the same parties and the
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`same patent as IPR2015-01201. Although the present petition introduces different
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`grounds with a new primary reference, it cites several of the same secondary
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`references as IPR2015-01201, namely Oldham, Ying, and Kusunoki. The present
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`petition involves the same claims and the same claim constructions as IPR2015-
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`01201. Thus, as to claim construction and interpretation of the prior art, the
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`petitions involve common issues. Although the petitions include many individual
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`grounds, these grounds involve related arguments and overlapping prior art.
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`Additionally, Sony’s expert is the same in both petitions.
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`Sony also notes that while the first and second petitions share secondary
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`references, the primary reference cited in the presently filed petition—Liu—is
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`prior art under 35 U.S.C. § 102(b), whereas one of the primary references in
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`IPR2015-01201—Bertin—is prior art under 35 U.S.C. § 102(e). In the first
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`petition, claims 3, 6, 7, 9, 11, 12, and 15 are only challenged in grounds that
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`depend in some way on Bertin. The Board will appreciate that while Patent Owner
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`may be able to establish an earlier priority date than the filing date of Bertin, Patent
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`Owner will not be able to do so with respect to Liu. It is in the interest of
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`5
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`efficiency to consider the petitions together, to ensure that the substantive
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`challenges are addressed.
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`Given the commonalities between the two petitions, Petitioner respectfully
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`requests that the Board exercise its discretion to join the proceedings, as it has
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`under similar circumstances in the past. For example, in Oxford Nanopore
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`Technologies LTD. v. University of Washington, the petitioner moved to join its
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`newly filed second IPR petition to its first IPR petition. IPR2015-00057, Motion
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`For Joinder And/Or Consolidation, Paper 3 (PTAB Oct. 13, 2014). As here, the
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`two petitions involved the same claims, different grounds and arguments, different
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`primary prior art references, overlapping secondary references, and the same
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`expert. Id. at 5-7. The Board granted the petitioner’s motion to join its newly filed
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`IPR petition to its earlier filed proceeding. Oxford Nanopore, IPR2015-00057,
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`Paper 10, at 23 (Apr. 27, 2015). The Board noted that, despite the different
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`grounds presented, “[t]he two proceedings involve the same parties, the same claim
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`of the same patent, claim 10, and both cite the [same] reference. Thus, as to claim
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`construction and interpretation of the prior art, the two proceedings involve
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`common issues.” Id.
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`The Board has granted joinder in other cases involving similar circumstances to
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`those presented here. See Ariosa Diagnostics v. Isis Innovation Ltd., IPR2013-
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`00250, Decision Granting Motion For Joinder, Paper 24, at 2-4 (PTAB Sept. 3,
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`6
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`2013) (granting joinder of two IPR petitions involving the same parties, same
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`patent, overlapping or related claims, and much of the same prior art); ABB Inc. v.
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`Roy-G-Biv Corp., IPR2013-00282, Decision Granting Motion For Joinder, Paper
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`15, at 3 (PTAB Aug. 9, 2013) (granting joinder of two IPR petitions involving “the
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`same parties, the same patent, and much of the same prior art”, after limiting the
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`scope of the second petition). As in Oxford Nanopore, Ariosa Diagnostics, and
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`ABB Inc., Sony’s current and previously filed petitions include overlapping issues
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`such that joinder would greatly simplify the proceedings.
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`2. Joinder Is Not Required to Avoid the Bar Under 35 U.S.C. § 315(b)
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`The two district court cases in which the ’678 patent was asserted against Sony
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`were filed on March 6, 2015. The date of filing of the present IPR petition
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`concurrent with this motion is therefore well within the one year bar of 35 U.S.C.
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`§ 315(b). Accordingly, as in Oxford Nanopore, “grant of the Joinder Motion is not
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`required to avoid the bar in 35 U.S.C. § 315(b)” and so Sony “is not using its
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`Joinder Motion as a means to circumvent the § 315(b) bar and obtain consideration
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`on the merits of challenges it otherwise would not be entitled to present.” See
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`Oxford Nanopore, IPR2015-00057, Paper 10, at 24. This petition therefore
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`presents no “issue of abuse of the joinder rule to present serial petitions attacking
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`the same claims”. Id.
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`7
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`3. Joinder Would Simplify Briefing and Discovery and Would Not
`Have Undue Impact on the Schedule
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`Sony acknowledges that joinder will have some impact on the schedule for
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`IPR2015-01201. However, because the present IPR petition challenges the same
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`claims and presents overlapping prior art and similar issues, joining the two
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`petitions will greatly simplify briefing, discovery, and other scheduling issues. See
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`ABB Inc., IPR2013-00282, Paper 15, at 3 (“The prior art references for [the]
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`grounds [in the second petition] substantially overlap with the references at issue in
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`[the first petition]. This facilitates scheduling of the joined actions and minimizes
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`delay”). Also, no additional claim terms need construction. Furthermore, Sony’s
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`expert (Dr. Blanchard) is the same in both petitions. Thus, “joinder of the
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`proceedings will allow for a single deposition, rather than multiple depositions, of
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`the same witnesses.” See Ariosa Diagnostics, IPR2013-00250, Paper 24, at 4.
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`Thus, joining the petitions would serve to conserve the parties’ and the Board’s
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`resources.
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`In addition, to avoid any arguable prejudice to Patent Owner, Sony is prepared
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`to accommodate any reasonable logistical or scheduling request of Patent Owner.
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`Thus, joinder of this proceeding with IPR2015-01201 will not unduly delay the
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`resolution of either proceeding, but will help “secure the just, speedy, and
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`inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b).
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`8
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`4. Joinder Would Not Unduly Prejudice Patent Owner
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`Sony has been diligent and timely in filing this motion soon after it learned of
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`Liu, and before one month after an institution decision in the earlier proceeding as
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`required by 37 C.F.R. § 42.122(b). See Target Corp., IPR2014-00508, Paper 31, at
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`4 (PTAB Feb. 12, 2015) (noting that petitioner had been diligent and timely in
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`filing its joinder motion where petitioner had filed its second IPR petition in March
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`2014, a few months after learning about new prior art in October 2013). Because
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`IPR2015-01201 has not yet been instituted, Sony does not have the Board’s
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`institution decision in that case. Thus, in its second petition Sony is not responding
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`to the Board’s position in IPR2015-01201. Sony’s willingness to accommodate
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`any reasonable logistical or scheduling request of Patent Owner, stated above, will
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`also avoid any potential prejudice. Thus, joinder of the concurrently filed petition
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`to IPR2015-01201 would not cause any undue prejudice to Patent Owner.
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`V. CONCLUSION
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`Based on the foregoing, Sony respectfully requests joinder of its concurrently
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`filed petition for inter partes review of claims 1-18 of the ’678 patent with
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`IPR2015-01201.
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` Date: 2015-11-18
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`/Matthew A. Smith/ (RN 49,003)
`Counsel for Petitioner
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`9
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`Motion for Joinder
`U.S. Pat. No. 5,591,678
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing Motion for Joinder with
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`Related Inter Partes Review of U.S. Patent No. 5,591,678 was served by U.S.P.S.
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`Certified Mail this 18th day of November, 2015, on the Patent Owner's counsel of
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`record at the United States Patent & Trademark Office having the following
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`address:
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`KAREN L LUM
`HUGHES AIRCRAFT COMPANY
`BLDG C1 MAIL STATION A126
`PO BOX 80028
`LOS ANGELES CA 900800028
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`/Matthew A. Smith/ (RN 49,003)
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` Date: 2015-11-18
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`10
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