Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Date: September 1, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC., MICROSOFT CORPORATION,
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC,
`Petitioner,
`v.
`LS CLOUD STORAGE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2023-00733
`Patent 10,154,092 B2
`
`
`
`
`
`
`
`
`
`Before LARRY J. HUME, MINN CHUNG, and AMBER L. HAGY,
`Administrative Patent Judges.
`HUME, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Date: September 1, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC., MICROSOFT CORPORATION,
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC,
`Petitioner,
`v.
`LS CLOUD STORAGE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2023-00733
`Patent 10,154,092 B2
`
`
`
`
`
`
`
`
`
`Before LARRY J. HUME, MINN CHUNG, and AMBER L. HAGY,
`Administrative Patent Judges.
`HUME, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`
`INTRODUCTION
`I.
`On March 20, 2023, Cisco Systems, Inc., Microsoft Corporation,
`Amazon.com, Inc., Amazon Web Services, Inc., and Amazon.com Services
`LLC (collectively “Cisco et al.” or “Petitioner”) filed a Petition seeking
`institution of inter partes review of claims 1–24 (“the challenged claims”) of
`U.S. Patent No. 10,154,092 (Ex. 1001, the “’092 Patent”). Paper 1 (“Pet.”).
`LS Cloud Storage Technologies LLC (“Patent Owner”) timely filed a
`Preliminary Response on June 28, 2023. Paper 9 (“Prelim. Resp.”).
`Petitioner also timely filed a Motion for Joinder, seeking to join as a
`petitioner in Google LLC v. LS Cloud Storage Technologies, LLC, IPR2023-
`00120 (“Google IPR”), Paper 5 (“Joinder Motion” or “Mot.”). Patent
`Owner did not file an Opposition to the Motion for Joinder.
`Upon considering the information presented in each of these papers,
`for reasons discussed below, we institute trial in this inter partes review, and
`we grant Petitioner’s Joinder Motion.
`
`II. DISCUSSION
`Institution of Trial
`A.
`In the Google IPR, Google challenges the patentability of claims 1–24
`of the ’092 patent on the following grounds:
`
`2
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`
`Ground Claim(s) Challenged
`
`1
`
`2
`
`3
`
`4
`
`5
`
`1–3, 7–12, 19–23
`
`10, 11
`
`1–3, 6–24
`
`4
`
`5
`
`35
`U.S.C.1 §
`102(e) Heil2
`
`Reference(s)/Basis
`
`102(b) Heil
`
`103(a) Heil, Nakayama3
`
`103(a) Heil, Nakayama, Gulick4
`
`103(a) Heil, Nakayama, Berman5
`
`IPR2023-00120, Paper 2, 4–5, 21–76. After considering the petition and
`Patent Owner’s preliminary response in the Google IPR, we instituted trial.
`See IPR2023-00120, Paper 7 at 51 (PTAB May 24, 2023).
`Petitioner here (Cisco et al.) represents that the present Petition is
`substantively identical to the petition in the Google IPR, challenges the same
`claims based on the same grounds, and relies on the same expert
`declarations. Mot. 1–2 (citing Ex. 1004, Ex. 2001), 4–5; see id. at 5 (“In
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 285–88 (2011), revised 35 U.S.C. §§ 102 and 103 effective
`March 16, 2013. The ’092 patent claims benefit under 35 U.S.C. § 120 to
`applications filed before that date, so we refer to the pre-AIA version of the
`statute, but our findings and analysis would be the same under the current
`version of the statute.
`2 US 6,173,374 B1, filed Feb. 11, 1998, issued Jan. 9, 2001 (Ex. 1006,
`“Heil”).
`3 US 5,920,893, filed June 2, 1997, issued July 6, 1999. (Ex. 1007,
`“Nakayama”).
`4 US 5,692,211, filed Sept. 11, 1995, issued Nov. 25, 1997 (Ex. 1008,
`“Gulick”).
`5 US 6,118,776, filed Aug. 7, 1997, issued Sept. 12, 2000 (Ex. 1009,
`“Berman”).
`
`3
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`short, the Copycat Petition is substantively identical to the Google Petition.
`The only minor changes include changes necessary for proper identification
`of the parties filing the petition, the discussion of why discretionary denial
`under 35 U.S.C. § 314(a) is not warranted as it relates to Cisco, Microsoft,
`and Amazon, and relevant corresponding documents. On the merits, the
`Copycat Petition should therefore be instituted for at least the same reasons
`that the Board should institute the Google IPR.”). We have considered the
`relevant petitions and we agree with Petitioner’s representation that this
`Petition is substantially identical to the petition in the Google IPR. Compare
`Pet., with IPR2023-00120, Paper 2. Accordingly, regarding the underlying
`patentability challenges, there are no additional issues presented by
`Petitioner.
`Patent Owner’s instant Preliminary Response contains the same
`arguments as its preliminary response filed in the Google IPR, but it also
`adds additional description of the ʼ092 patent (compare Prelim. Resp. 4, with
`IPR2023-00120, Paper 6, 2–4), and also adds new arguments that
`substantially modify certain arguments that were previously presented in
`connection with claim 1, apparently in response to our claim construction of
`the phrase “dedicated I/O channel” in the Google IPR. Compare Prelim.
`Resp. 12–19, with IPR2023-00120, Paper 6, 12–18; and see IPR2023-00120,
`Paper 7, 14–17. In particular, Patent Owner provides, for the first time, an
`argument that appears to be directed to a proposed construction of the phrase
`“dedicated I/O channel,” albeit not in the “Claim Construction” section
`(§ II.B) of the Preliminary Response. See Prelim. Resp. 12–19.
`We have considered Patent Owner’s arguments, including its newly-
`presented arguments. We conclude that they do not warrant denial of the
`
`4
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`Petition under the circumstances presented here, where the instant Petition is
`substantially identical to that in the Google IPR already instituted, and
`Petitioner seeks joinder as a party to that proceeding.
`In view of the identity of the issues in the instant Petition and the
`petition in the Google IPR and the already-considered arguments that Patent
`Owner made in the Google IPR, we determine that this proceeding warrants
`institution on the grounds presented in the Petition for the same reasons
`stated in our Decision on Institution in the Google IPR. See IPR2023-
`00120, Paper 7. Accordingly, we proceed with the IPR.
`
`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join a petitioner as a party to a previously instituted inter partes review.
`35 U.S.C. § 315(c). Section 315(c) provides, in relevant part, that “[i]f 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 . . . .” Id.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013).
`We find that Petitioner timely filed its Joinder Motion in accordance
`with 37 C.F.R. § 42.122(b). We further determine that Petitioner has met its
`burden of showing that joinder is appropriate, at least because, as set forth
`
`5
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`above, the Petition here: (1) is substantively identical to the petition in the
`Google IPR; (2) contains the same grounds based on the same evidence; and
`(3) relies on the same declaration of Dr. Paul Franzon, Ph.D. Mot. 1, 3–9;
`Ex. 1004. Petitioner also represents that it “agrees to take an ‘understudy’
`role.” Mot. 8. Petitioner clarifies that, “[o]nly if Google ceases participation
`in the proceeding . . . Petitioner would assume a primary role, meaning it
`would take over the role previously filled by Google” Id. at 9.
`Patent Owner has not filed an Opposition to the Motion for Joinder.
`Accordingly, in granting the Motion, we limit Petitioner’s
`participation, such that: (1) Google alone is responsible for all petitioner
`filings in the joined proceeding unless and until Google is terminated from
`the Google IPR; (2) Petitioner must obtain Board authorization prior to filing
`any paper or taking any action on its own unless and until Google is
`terminated from the Google IPR, except that Petitioner may file a motion to
`modify these provisions on the ground that Google is no longer an active
`party in the Google IPR; and (3) Petitioner is bound by all filings by Google
`and discovery agreements between Patent Owner and Google in the joined
`proceeding, except for (a) filings regarding termination or settlement and
`(b) filings where Petitioner receives permission from the Board to file an
`independent paper.
`On this record, joinder would result in the just, speedy, and
`inexpensive resolution of the instant Petition as well as the petition filed in
`the Google IPR. See 37 C.F.R. § 42.1(b). Accordingly, we grant
`Petitioner’s Joinder Motion.
`
`
`
`6
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to claims 1–24 of the ’092 patent on the following
`grounds:
`
`Reference(s)/Basis
`
`Ground Claim(s) Challenged 35 U.S.C.
`§
`102(e) Heil
`
`1
`
`1–3, 7–12, 19–23
`
`2
`
`3
`
`4
`
`5
`
`10, 11
`
`1–3, 6–24
`
`4
`
`5
`
`102(b) Heil
`
`103(a) Heil, Nakayama
`
`103(a) Heil, Nakayama, Gulick
`
`103(a) Heil, Nakayama, Berman
`
`FURTHER ORDERED that Petitioner’s Joinder Motion with
`IPR2023-00120 (the Google IPR) is granted, and Cisco et al. is joined as a
`petitioner in IPR2023-00120 pursuant to 37 C.F.R. § 42.122(b);
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2023-00120;
`FURTHER ORDERED that the grounds on which an inter partes
`review was instituted in IPR2023-00120 remain unchanged;
`FURTHER ORDERED that the Scheduling Order currently in place
`for IPR2023-00120 (Paper 8) shall govern the joined proceeding;
`FURTHER ORDERED that, unless and until Google is terminated
`from IPR2023-00120, Cisco et al. is bound by all filings by Google without
`a separate opportunity to be heard, whether orally or in writing (except for
`
`7
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`filings regarding termination or settlement and filings where Petitioner
`receives permission from the Board to file an independent paper);
`FURTHER ORDERED that Cisco et al. must obtain prior Board
`authorization to file any paper or take any action on its own in IPR2023-
`00120 (except a motion to modify these provisions on the ground that
`Google is no longer an active party);
`FURTHER ORDERED that the case caption in IPR2023-00120 for all
`further submissions shall be changed to add Cisco Systems, Inc., Microsoft
`Corporation, Amazon.com, Inc., Amazon Web Services, Inc., and
`Amazon.com Services LLC as named petitioners, and to indicate by footnote
`the joinder of Petitioners Cisco et al. to that proceeding, as indicated in the
`attached sample case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2023-00120.
`
`8
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`FOR PETITIONER:
`
`Brian Ferguson
`beferguson@winston.com
`Juan Yaquian
`jyaquian@winston.com
`WINSTON & STRAWN LLP
`Brian Nash
`bnash@mofo.com
`MORRISON & FOERSTER LLP
`
`
`FOR PATENT OWNER:
`
`Jacob B. Henry
`jhenry@rameyfirm.com
`William P. Ramey, III
`wramey@rameyfirm.com
`uspto@rameyfirm.com
`RAMEY LLP
`
`
`9
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`GOOGLE LLC, CISCO SYSTEMS, INC., MICROSOFT CORPORATION,
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC,
`Petitioner,
`v.
`LS CLOUD STORAGE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2023-001206
`Patent 10,154,092 B2
`
`
`
`
`
`
`6 Cisco Systems, Inc., Microsoft Corporation, Amazon.com, Inc., Amazon
`Web Services, Inc., and Amazon.com Services LLC. filed a petition in
`IPR2023-00733, and have been joined as petitioners in this proceeding.
`
`
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