U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`QUALCOMM INCORPORATED, GLOBALFOUNDRIES INC.,
`GLOBALFOUNDRIES U.S. INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN MODULE
`TWO LLC & CO. KG
`Petitioner
`v.
`
`DSS Technology Management, Inc.
`Patent Owner
`
`Case IPR2016-01314
`U.S. Patent No. 6,784,552
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
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`Petitioner’s Motion for Joinder
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`QUALCOMM INCORPORATED, GLOBALFOUNDRIES INC.,
`GLOBALFOUNDRIES U.S. INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN MODULE
`TWO LLC & CO. KG
`Petitioner
`v.
`
`DSS Technology Management, Inc.
`Patent Owner
`
`Case IPR2016-01314
`U.S. Patent No. 6,784,552
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`TABLE OF CONTENTS
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`I.
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`STATEMENT OF RELIEF REQUESTED ...................................................... 1
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`II. STATEMENT OF MATERIAL FACTS .......................................................... 1
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF .......................... 2
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`A. Legal Standards ........................................................................................ 2
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`B.
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`Joinder is Appropriate .............................................................................. 4
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`1. No New Grounds of Unpatentability in the Petition ........................ 6
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`2.
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`Joinder Will Not Impact the Board’s Ability to Complete
`the Review in a Timely Manner ....................................................... 7
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`3. Briefing and Discovery Will be Simplified ..................................... 8
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`4. No Prejudice to Patent Owner .......................................................... 9
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`IV. CONCLUSION ................................................................................................ 10
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`I.
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`STATEMENT OF RELIEF REQUESTED
`The Petitioners for the present Petition are GLOBALFOUNDRIES Inc.,
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`GLOBALFOUNDRIES U.S. Inc., GLOBALFOUNDRIES Dresden Module One
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`LLC & Co. KG, GLOBALFOUNDRIES Dresden Module Two LLC & Co. KG
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`(collectively “GF”) and Qualcomm, Incorporated (“Qualcomm”), collectively
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`referred to as “Petitioner.” Petitioner respectfully submits this Motion for Joinder
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`together with a Petition for Inter Partes Review of claims 8-12 of U.S. Patent No.
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`6,784,552 (the “Present Petition” or “Present IPR”). Pursuant to 35 U.S.C. § 315(c)
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`and 37 C.F.R. § 42.122(b), Petitioner requests inter partes review and joinder with
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`Intel Corporation v. DSS Technology Management, Inc., IPR2016-00288 (“Intel”
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`and “the Intel IPR”), which was instituted on June 8, 2016. Joinder is appropriate
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`because it will promote efficient and consistent resolution of the unpatentability
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`grounds at issue and will not prejudice any of the parties to the Intel IPR.
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`This Motion for Joinder and accompanying Petition are being filed within
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`one month of the decision instituting trial in the Intel IPR, and are therefore timely.
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`Counsel for GF/Qualcomm has conferred with counsel for Intel, and Intel does not
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`oppose joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`On February 16, 2015, the owner of the ’552 Patent, DSS Technology
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`Management, Inc. (“DSS”), sued Intel and other companies (not including GF or
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`Qualcomm) alleging infringement of the ’552 Patent.
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`2.
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`On July 16, 2015, DSS sued Qualcomm and other companies (not
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`including GF) alleging infringement of the ’552 Patent. Qualcomm is a co-
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`petitioner to the present Petition.
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`3.
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`On December 8, 2015, Intel, timely filed a Petition for inter partes
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`review challenging claims 8-12 of the ’552 Patent, within a year of Intel being sued
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`on the patent. See Intel Corporation v. DSS Technology Management, Inc.,
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`IPR2016-00288, Paper 2 (PTAB Dec. 8, 2015).
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`4.
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`On June 8, 2016, the Board instituted an inter partes review of claims
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`8-12 of the ’552 Patent. See Intel, IPR2016-00288, Paper 11.
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`5.
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`Concurrently with this motion, GF/Qualcomm timely filed the Present
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`IPR challenging claims 8-12 of the ’552 Patent, within a year of Qualcomm being
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`sued on the patent. GF was not sued on the patent.
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`6.
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`GF/Qualcomm’s unpatentability grounds in the Present IPR are
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`identical to the positions in the instituted Intel IPR.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A. Legal Standards
`The Board has authority under 35 U.S.C. § 315(c) to join a party who files a
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`2
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`proper inter partes review petition to a previously-instituted inter partes review
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`proceeding. This authority is discretionary. 35 U.S.C. § 315(c); 37 C.F.R.
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`§ 42.122.
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`In exercising its discretion to grant joinder, the Board considers the impact
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`of substantive and procedural issues on the proceedings, as well as other
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`considerations, while being “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” Dell Inc. v. Network-1 Sec. Solutions, Inc,
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`IPR2013-00385, Paper 17 at 3-4 (PTAB July 29, 2013). The Board should consider
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`“the policy preference for joining a party that does not present new issues that
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`might complicate or delay an existing proceeding.” Id. at 10. Under this
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`framework, joinder of the Present IPR with the Intel IPR is appropriate.
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`The legislative history of the AIA suggests that the joinder may be granted
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`as a matter of right where the later petitioner files an identical petition with
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`identical grounds of unpatentability. See 157 CONG. REC. S1376 (daily ed. Mar.
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`8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
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`allowed as of right-if an inter partes review is instituted on the basis of a petition,
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`for example, a party that files an identical petition will be joined to that
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`proceeding, and thus allowed to file its own briefs and make its own arguments.”)
`3
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`(emphasis added).
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`The moving party has the burden of proof and “should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified.” Dell, IPR2013-00385, Paper 17 at 4. Each of these
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`is addressed fully below.
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`B.
`Joinder is Appropriate
`Although joinder is discretionary, it is appropriate here because the Present
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`Petition does “not present issues that might complicate or delay” the existing Intel
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`IPR. See Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc., IPR2014-00556,
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`Paper 19 at 6 (July 9, 2014) (“we are mindful of a policy preference for joining a
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`party that does not present new issues that might complicate or delay an existing
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`proceeding”). In fact, because the Present Petition contains the identical grounds
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`on which the Intel IPR was instituted, joinder would secure the just, speedy, and
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`inexpensive resolution of the related proceedings.
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`Additionally, while the Petitioner in the Present IPR and the Petitioner in the
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`Intel IPR have relied upon testimony from separate experts in their respective
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`petitions, the analysis and rationale of the experts are the same, and therefore
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`present no additional burden on the part of the Patent Owner to address. Indeed, in
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`circumstances such as these, the Board has permitted joinder. See Apotex, Inc. and
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`Mylan Pharmaceuticals Inc. v. Novartis AG and Mitsubishi Pharma Corp.,
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`IPR2015-00518, Paper 8 at 6 (Feb. 17, 2015) (granting motion for joinder were
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`petition relied on substantially the same declaration but from a different expert). In
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`short, joinder would have little, if any, impact on the Intel IPR because no new
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`grounds would be added, the schedule would not be affected, and no additional
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`burdens would be placed on Patent Owner, as detailed below.
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`Petitioner moves to join the Intel IPR to ensure that it reaches a final
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`decision in the event Intel settles with Patent Owner and is dismissed from the
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`review. In that regard, an inter partes review “shall be terminated with respect to
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`any petitioner upon the joint request of the petitioner and the patent owner.” 35
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`U.S.C. § 317(a). The Board, at its discretion, “may terminate the review” if no
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`petitioner remains. Id. In previous proceedings, the Board has exercised its
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`discretion not to terminate a review after dismissing the petitioner because of a
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`pending joinder motion in a related proceeding. See MediaTek Inc., et. al. v.
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`Bandspeed, Inc., IPR2015-00314, Paper 20 at 3 (PTAB Sept. 17, 2015) (“We
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`exercise the discretion afforded under 35 U.S.C. § 317(a) to decline, at this time, to
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`terminate these proceedings with respect to Patent Owner”). Specifically, in
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`MediaTek, the Board, after noting that the Motion for Joinder was filed before the
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`Motion to Terminate, chose to wait until after ruling on the Motion for Joinder to
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`consider whether to terminate the review entirely. Id.
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`Here, if Intel moves to terminate its IPR and Intel is dismissed before the
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`Board decides this Motion for Joinder, Petitioner respectfully requests that the
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`Board exercise its discretion and decline to terminate the Patent Owner at least
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`until the Board considers this motion. If the Intel IPR is completely terminated
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`before joinder can be effectuated, a proceeding with identical grounds of
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`unpatentability would begin anew requiring the parties to expend resources
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`rearguing the same issues.
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`Accordingly, joinder is appropriate because it eliminates the possibility of
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`duplicate efforts and ensures a just, speedy, and inexpensive resolution of these
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`proceedings.
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`1.
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`No New Grounds of Unpatentability in the Petition
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`The Present Petition is identical to the petition in the Intel IPR. In particular,
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`the Present Petition challenges the same instituted claims (8-12) under the same
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`grounds, while relying on the same arguments, substantially the same expert
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`declaration (although different expert), and evidence. Because the Board instituted
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`a subset of the grounds requested in the Intel IPR (see Intel, IPR2016-00288, Paper
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`6
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`11), Petitioner requests that only those grounds instituted in the Intel IPR be
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`instituted in the present proceeding. Accordingly, no new claims and no new
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`grounds will be added to the Intel IPR as a result of the Board allowing joinder.
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`Denial of joinder, however, would result in parallel proceedings involving identical
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`grounds of unpatentability and needless duplication of effort.
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`2.
`Joinder Will Not Impact the Board’s Ability to Complete
`the Review in a Timely Manner
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`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
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`42.100(c) provide that inter partes review proceedings should be completed and the
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`Board’s final decision issued within one year of institution of the review. In this
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`case, joinder will not affect the Board’s ability to issue the decision within this
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`required one-year timeframe because the Petition filed in the Present IPR contains
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`the identical ground on which the Intel IPR was instituted.
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`In addition, if joined, Petitioner respectfully proposes procedures to simplify
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`any further briefing and discovery, which will minimize any potential impact on
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`the schedule or the volume of materials to be submitted to the Board. Given that all
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`petitioners—Intel and GF/Qualcomm—will be addressing the identical grounds for
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`challenging the claims at issue, the Petitioner in the Present IPR will not file
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`7
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`additional briefs outside of the consolidated filings, will not request any additional
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`deposition time, and will not request any additional oral hearing time.1 In the event
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`the Intel IPR is terminated with respect to the petitioner, GF/Qualcomm intend to
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`“step into the shoes” of the dismissed petitioner and materially participate in the
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`joined proceedings.
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`Accordingly, for the reasons above, joinder of the Present IPR to the Intel
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`IPR will not affect the Board’s ability to complete its review and issue a final
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`decision within the statutory time limits under 35 U.S.C. § 316(a)(11) and 37
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`C.F.R. § 42.100(c).
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`3.
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`Briefing and Discovery Will be Simplified
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`It is noted that Petitioner would not be time barred from filing the present
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`Petition without a corresponding motion for joinder. However, determining the
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`same patentability questions concerning the ’552 Patent in separate parallel
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`proceedings would complicate/duplicate efforts and create a risk of inconsistent
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`results and piecemeal review.
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`1 While Petitioner will not materially participate in calls with the Board,
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`depositions, and any oral hearing, Petitioner anticipates that its counsel will attend
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`8
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`such events.
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`Given that the positions in the Present Petition are identical to Intel’s
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`positions in the instituted IPR, Petitioner agrees to consolidated filings for all
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`substantive papers and to consolidated discovery in the joined proceeding. With
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`respect to consolidated filings, any papers jointly submitted by petitioners will not
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`exceed the normal word count or page limits for a single party set forth in the rules.
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`Petitioner will not file, or request to file, any separate briefs beyond the
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`consolidated filings. Petitioner will not request additional cross-examination or re-
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`direct time. Additionally, with respect to any oral hearing, Intel will be responsible
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`for the presentation before the Board. Petitioner will not request any additional
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`time to independently argue before the Board or attempt to submit its own
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`demonstratives.
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`Accordingly, if joinder is granted, briefing and discovery in the joined
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`proceeding will be no more complex than if Petitioner had never been joined.
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`Consolidated briefing and discovery will ensure a simplified and efficient joined
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`proceeding.
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`4.
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`No Prejudice to Patent Owner
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`Joinder to the Intel IPR will not create any additional burden on Patent
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`Owner. The Patent Owner need not expend any additional resources above and
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`beyond those required in the current Intel IPR. Moreover, joinder eliminates the
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`need for Patent Owner to participate in parallel inter partes review proceedings
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`U.S. Patent No. 6,784,552 Claims 8-12
`Petitioner’s Motion for Joinder
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`instituted upon identical grounds of patentability. By allowing the identical
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`grounds of unpatentability to be addressed in a single proceeding, the interests of
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`all parties and the Board will be well served.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`institute the instant inter partes review upon the same grounds instituted in
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`IPR2016-00288 and join the proceedings.
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`Dated: July 1, 2016
`HAYNES AND BOONE, LLP
`Customer No. 27683
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`Telephone: 972/739-8635
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`Respectfully submitted,
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`/David l. McCombs/
`David L. McCombs
`Lead Counsel for Petitioners
`Registration No. 32,271
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`10
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`Petitioner’s Motion for Joinder
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`CERTIFICATE OF SERVICE
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and
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`37 C.F.R. § 42.105, service was made on Patent Owner as detailed below.
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`Date of service July 1, 2016
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`Manner of service Federal Express
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`Documents served Petitioner’s Motion for Joinder Under 35 U.S.C. § 315(c), 37
`C.F.R. §§ 42.22, and 42.122(b)
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`Smith & Hopen (private clients)
`Attn: General Patent Matters
`180 Pine Avenue North
`Oldsmar FL 34677
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`Persons served per
`USPTO records
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`/David L. McCombs/
`David L McCombs
`Lead Counsel for Petitioner
`Registration No. 32,271
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