UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`NOKIA OF AMERICA CORPORATION
`Petitioner
`
`v.
`
`OYSTER OPTICS, LLC.
`Patent Owner
`_____________________
`
`Case No. TBD
`Patent 6,476,952
`_____________________
`
`MOTION FOR JOINDER
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`NOKIA OF AMERICA CORPORATION
`Petitioner
`
`v.
`
`OYSTER OPTICS, LLC.
`Patent Owner
`_____________________
`
`Case No. TBD
`Patent 6,476,952
`_____________________
`
`MOTION FOR JOINDER
`
`
`
`I.
`
`INTRODUCTION
`
`Nokia of America Corporation (“Nokia” or “Petitioner”) submits this motion
`
`for joinder of the concurrently filed petition for inter partes review of U.S. Patent
`
`No. 6,476,952 (“the ’952 patent”) filed on April 27, 2018 (the “Petition”). Nokia’s
`
`Petition is based on grounds identical to those that form the basis for the instituted
`
`inter partes reviews initiated by Cisco Systems, Inc. and Oclaro, Inc. concerning the
`
`same patent, Case No. IPR2017-02189 (the “Original ’952 IPR”).
`
`Petitioner respectfully requests that its Petition be instituted and moves that
`
`the Petition be joined with the Original ’952 IPR pursuant to 35 U.S.C. § 315(c) and
`
`37 C.F.R. §§ 42.22 and 42.122(b). Petitioner requests an opportunity to join with
`
`the Original ’952 IPR as an “understudy” to Cisco and Oclaro. Petitioner does not
`
`seek to alter the grounds upon which the Board instituted the Original ’952 IPR, and
`
`joinder will have no impact on the Orignal ’952 IPR’s existing schedule, and as such
`
`there will be no prejudice to Patent Owner Oyster Optics, LLC (“Oyster” or “Patent
`
`Owner”).
`
`This motion is timely as the Cisco ’952 IPR petition was instituted on March
`
`28, 2018 and this filing is made within one month of that institution date. 35 U.S.C.
`
`§§ 21(b), 315(c); 37 C.F.R. § 42.122(b).
`
`
`
`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`
`The ‘952 Patent is subject to a pending lawsuit entitled Oyster Optics, LLC v.
`
`Nokia Corporation et al, Case No. 2:16-cv-01297-JRG (E.D. Tex.) in which
`
`Petitioner is a defendant. The ‘952 Patent is also subject to other lawsuits, including
`
`Oyster Optics, LLC v. Ciena Corporation, Case No. 3-17-cv-05920 (N.D. Cal.);
`
`Oyster Optics, LLC v. Ciena Corporation et al, Case No. 2-16-cv-01300 (E.D. Tex.)
`
`(dismissed on 8/4/2017); Oyster Optics, LLC v. Coriant America Inc. et al, Case No.
`
`2-16-cv-01302 (E.D. Tex.); Oyster Optics, LLC v. Huawei Technologies Co., Ltd. et
`
`al, Case No. 2-16-cv-01303 (E.D. Tex.); Oyster Optics, LLC v.
`
`Infinera
`
`Corporation, Case No. 2-16-cv-01295 (E.D. Tex.); Oyster Optics, LLC v. NEC
`
`Corporation et al, Case No. 2-16-cv-01296 (E.D. Tex.) (dismissed on 8/30/2017);
`
`Oyster Optics, LLC v. Cisco Systems, Inc. et al, Case No. 2-16-cv-01301 (E.D. Tex.);
`
`Oyster Optics, LLC v. ZTE Corporation et al, Case No. 2-16-cv-01298 (E.D. Tex.)
`
`(dismissed on 3/10/2017); Oyster Optics, Inc. v. Fujitsu Network Communications,
`
`Inc et al, Case No. 1-08-cv-08206 (S.D.N.Y.) (dismissed 6/30/2009). On May 18,
`
`2017, Case Nos. 2:16-cv-01302-JRG (lead case), 2:16-cv-01297-JRG and 2:16-cv-
`
`01301-JRG were consolidated for all pre-trial issues.
`
`Petitions for IPR have been filed against other patents held by Patent Owner,
`
`including IPR2017-02173 and IPR2018-00259 against U.S. Patent No. 7,620,327;
`
`IPR2018-00070 and IPR2018-00257 against U.S. Patent 8,913,898; IPR2018-00146
`
`2
`
`
`
`against U.S. Patent No. 9,363,012; and IPR2018-00258 against U.S. Patent No.
`
`7,099,592. Petitioner is also filing a second petition against the ’952 Patent, and
`
`seeking to join IPR2017-2190 filed by Cisco and Oclaro against the ’952 Patent.
`
`III.
`
`LEGAL STANDARD AND APPLICABLE RULES
`
`An inter partes review may be joined with another inter partes
`
`review, subject to the provisions of 35 U.S.C. § 315(c), which governs joinder of
`
`inter partes review proceedings:
`
`(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.
`
`A motion for joinder should “(1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
`
`(3) explain what impact (if any) joinder would have on the trial schedule for the
`
`existing review; and (4) address specifically how briefing and discovery may be
`
`simplified.” See Decision on Joinder, IPR2013-00385 (Paper No. 17, July 29, 2013);
`
`see also Order Authorizing Joinder, IPR2013-00004 (Paper No. 15, April 24, 2013).
`
`Petitioner submits the factors outlined below in support of granting the present
`
`Motion for Joinder.
`
`3
`
`
`
`IV.
`
`PETITIONER MEETS THE REQUIREMENTS FOR MOTION FOR
`JOINDER
`Petitioner submits that (1) joinder is appropriate because it will promote
`
`efficient determination of the validity of the ’952 patent without prejudice to the
`
`parties to the Original ‘952 IPR; (2) Petitioner’s petition raises the same grounds for
`
`unpatentability as the Original ‘952 IPR petition and is based on the same testimony
`
`from the same technical expert; (3) joinder would not affect the expected schedule
`
`in the Original ‘952 IPR nor would it increase the complexity of that proceeding;
`
`and (4) Petitioner is willing to accept an understudy role in the Original ’952 IPR to
`
`simplify discovery and minimize the burden on the parties and the Board.
`
`Accordingly, joinder should be granted.
`
`A.
`
`Joinder Will Promote the Efficient Determination of the ’952
`Patent’s Validity and Will Not Prejudice Oyster
`Granting joinder and allowing Petitioner to assume an understudy role will
`
`not prejudice the parties or burden the Board. The Petition does not raise any issues
`
`that are not already before the Board in the Original ‘952 IPR and thus the Board
`
`would receive consolidated filings for the joined IPRs instead of redundant
`
`submissions in separate IPRs. Likewise, Oyster would only need to respond to a
`
`single set of filings to which it would already be obligated to respond. The Board
`
`4
`
`
`
`has granted motions for joinder in similar circumstances. See, e.g., Decision on
`
`Joinder, IPR2014-00743 (Paper 10, June 18, 2014).
`
`Joinder
`
`is appropriate here to promote judicial efficiency and avoid
`
`unnecessary expense to the parties.
`
`B.
`
`Petitioner’s Petition Raises the Same Grounds as the Original ’952
`IPR, Which Has Been Instituted
`The Petition asserts only grounds on which the Board has already determined
`
`to grant institution in the Original ’952 IPR, supported by the same technical expert
`
`and the same testimony. There are no new arguments for the Board to consider.
`
`Likewise, the Petition relies on the same exhibits.
`
`Joinder Will Not Affect the Schedule of the Original ’952 IPR
`C.
`Because Petitioner filed its pending IPR and corresponding motion for joinder
`
`timely after the institution decision on the Original ’952 IPR and is willing to accept
`
`the existing schedule, allowing Petitioner to join the Original ’952 IPR will not
`
`impact the scheduling order for the Original ’952 IPR or the Board’s ability to
`
`complete its review within the statutory period. Section 316(a)(11) requires that IPR
`
`proceedings be completed and the Board’s final decision issued no later than one
`
`year after the date on which the Director notices the institution of the IPR. See also
`
`37 C.F.R. § 42.100(c). Without any new issues present, there is no reason to delay
`
`or alter the trial schedule already present in the Original ’952 IPR, and Petitioner
`
`explicitly consents to the existing trial schedule.
`
`5
`
`
`
`Moreover, Petitioner submits that Oyster does not need to file a Patent
`
`Owner’s Preliminary Response to its Petition, and requests that the Board proceed
`
`without one. This is consistent with the Board’s Order in IPR2013-00256 (Paper 8,
`
`June 13, 2013), which allowed the Patent Owner to file a preliminary response
`
`addressing only those points raised in the new petition that were different from those
`
`in the granted petition. Here, because the invalidity grounds in the Petition are
`
`identical to those raised in the instituted Original ’952 IPR, there are no new
`
`arguments for Oyster to address. Alternatively, Petitioner requests that the Board
`
`accelerate the deadline for Oyster’s Patent Owner’s Preliminary Response to
`
`respond to this Petition so the Board can timely address the institution of the current
`
`Petition in order to ensure that joinder would not impact any deadlines set in the
`
`Original ’952 IPR schedule.
`
`Petitioner Agrees to Assume a Limited Role
`D.
`Petitioner agrees to an understudy role and does not raise any issues that are
`
`not already before the Board.
`
`In particular, Petitioner agrees that, in the joined
`
`proceeding, the following conditions shall apply so long as Cisco and Oclaro remain
`
`active parties, as previously approved by the Board in similar circumstances:
`
`(a) all filings by Petitioner in the joined proceeding be consolidated
`with the filings of Cisco and Oclaro, unless a filing solely concerns
`issues that do not involve Cisco or Oclaro;
`
`6
`
`
`
`(b) Petitioner shall not be permitted to raise any new grounds not
`already instituted by the Board, or introduce any argument or discovery
`not already introduced by Cisco or Oclaro;
`(c) Petitioner shall be bound by any agreement between Patent Owner
`and Cisco or Oclaro concerning discovery and/or depositions; and
`(d) Petitioner at deposition shall not
`receive any direct, cross
`examination or redirect time beyond that permitted for Cisco or Oclaro
`in this proceeding alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and Cisco or Oclaro.
`
`See Mylan Pharms. Inc. v. Novartis AG, Case No. IPR2015-00268, slip op. at 5–6
`
`(PTAB Apr. 10, 2015) (Paper 17) (finding that the same proposed limitations “are
`
`consistent with the ‘understudy’ role that Petitioner agrees to assume, as well as
`
`Petitioner’s assertion that its presence would not require introducing any additional
`
`arguments, briefing, or discovery.”). Petitioner’s understudy role would only be
`
`reassessed if Cisco or Oclaro ceased to participate in the proceeding.
`
`The invalidity grounds in the Petition are the same as those instituted in the
`
`Original ’952 IPR. Petitioner relies on the same expert testimony presented in the
`
`Original ’952 IPR. Given that Petitioner will assume an understudy role to Cisco
`
`and Oclaro, joinder with this IPR proceeding will not introduce any additional
`
`arguments, briefing, or need for discovery. See Sony Corp. of America, et al. v.
`
`Network-1 Security Solutions, Inc., Case No. IPR2013-00495 (Paper 13) (“We
`
`further conclude that Petitioners have demonstrated that joinder is warranted under
`
`7
`
`
`
`the circumstances. Petitioners will be joined to Case IPR2013-00071 in a limited
`
`role. If at some point Case IPR2013-00071 is terminated with respect to either of the
`
`existing parties Avaya and Dell (or both), the role of any remaining party or parties
`
`in the proceeding will be reevaluated.”).
`
`As long as Cisco and Oclaro remain in the joined IPR, Petitioner agrees to
`
`assume a limited “understudy” role. Petitioner would only request a more active
`
`role if Cisco or Oclaro were no longer parties to the IPR. Discovery will be
`
`simplified in that there will be no need for redundant depositions, briefing, or
`
`hearings.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
`
`Inter Partes Review of the ’952 patent be granted and that the proceedings be joined
`
`with IPR2017-02189.
`
`Date: April 27, 2018
`
`Respectfully submitted,
`/S. Benjamin Pleune/
`S. Benjamin Pleune, Reg. No. 52,421
`Scott Stevens, Reg. No. 54,762
`Chris Ziegler, Reg. No. 71,676
`Alston & Bird LLP
`101 South Tryon Street
`Suite 4000
`Charlotte, NC 28280-4000
`704.444.1000
`
`John D. Haynes, Reg. No. 44,754
`One Atlantic Center
`
`8
`
`
`
`1201 West Peachtree Street
`Suite 4900
`Atlanta, GA 30309-3424
`404.881.7000
`
`ATTORNEYS FOR PETITIONER
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies
`
`that on the 27th day of April, 2018, a complete and entire copy of this Motion for
`
`Joinder was provided via Federal Express, postage prepaid, to the Patent Owner and
`
`its known representatives by serving the correspondence address of record for the
`
`‘952 Patent holder and the patent holder’s counsel:
`
`Jackson Walker L.L.P.
`Attn: Intellectual Property Department
`100 Congress Avenue, Suite 1100
`Austin, TX 78701
`
`The undersigned further certifies that a courtesy copy of the complete and
`
`entire Petition was provided by electronic service to counsel retained by Patent
`
`Owner in the Related PTAB Matters identified herein:
`
`Wayne M. Helge whelge@dbjg.com
`James T. Wilson jwilson@dbjg.com
`Aldo Noto anoto@dbjg.com
`
`Dated: April 27, 2018
`
`/ S. Benjamin Pleune /
`S. Benjamin Pleune, Reg. No. 52,421
`Lead Counsel for Petitioner
`
`9
`
`
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