Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: March 26, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JUNIPER NETWORKS, INC.,
`Petitioner,
`v.
`ORCKIT CORPORATION,
`Patent Owner.
`
`IPR2024-00037
`Patent 10,652,111 B2
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, NATHAN A. ENGELS, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Entered: March 26, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JUNIPER NETWORKS, INC.,
`Petitioner,
`v.
`ORCKIT CORPORATION,
`Patent Owner.
`
`IPR2024-00037
`Patent 10,652,111 B2
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, NATHAN A. ENGELS, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`IPR2024-00037
`Patent 10,652,111 B2
`
`I. INTRODUCTION
`A. Background
`Juniper Networks, Inc. (“Petitioner”) filed a Petition requesting inter
`partes review (“IPR”) of claims 1–9, 12–24, and 27–31 of U.S. Patent
`No. 10,652,111 B2 (Ex. 1001, “the ’111 Patent”). Paper 3 (“Pet.”). Petitioner
`also filed a Motion for Joinder seeking to be joined as a party to Cisco
`Systems, Inc., v. Orckit Corp., IPR2023-00554 (“Cisco IPR”). Paper 2
`(“Motion” or “Mot.”). Orckit Corporation (“Patent Owner”) did not file a
`preliminary response or an opposition to the Motion.
`We have authority to determine whether to institute review under
`35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons provided below,
`we determine that institution of inter partes review is warranted on the same
`grounds instituted in the Cisco IPR, and we grant Petitioner’s Motion for
`Joinder.
`
`B. Related Matters
`The parties identify the following related District Court proceedings:
`Orckit Corporation v. Juniper Networks, Inc., No. 1:23-cv-00822 (D. Del.);
`Orckit Corporation v. Cisco Systems, Inc., No. 2:22-cv-00276 (E.D. Tex.);
`and Orckit Corporation v. Arista Networks, Inc., No. 1:23-cv-00821
`(D. Del.). Pet. x; Paper 7, 1. Patent Owner also identifies Ex Parte
`Reexamination No. 90/015,261. Paper 7, 1.
`
`2
`
`
`
`IPR2024-00037
`Patent 10,652,111 B2
`
`C. Prior Art and Asserted Grounds
`In the Cisco IPR, we instituted an inter partes review of the
`challenged as unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–9, 12–24, 27–31
`103
`Lin1, Swenson2
`1, 5–9, 12–24, 27–30
`103
`Shieh3, Swenson
`See Cisco IPR, Paper 8, 5 (PTAB Sept. 20, 2023) (“Cisco Dec.”).
`
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the ones on which we instituted review in the Cisco IPR.
`Compare Pet. 2, with Cisco Dec. 5. Indeed, Petitioner contends that the
`present Petition and the Cisco IPR Petition are substantively identical with
`respect to the asserted ground, based on the same prior art combination and
`supporting evidence, and asserted against the same claims. Mot. 4–5. This
`includes relying on the same expert declaration as the Cisco IPR. Id. at 5.
`Patent Owner did not file a Preliminary Response.
`For the same reasons set forth in our institution decision in the Cisco
`IPR, we determine that Petitioner has shown a reasonable likelihood that at
`least one claim is unpatentable. We therefore institute trial as to all
`challenged claims on all grounds stated in the Petition.
`
`
`1 US 9,264,400 Bl, iss. Feb.16, 2016 (Ex. 1005) (“Lin”).
`2 US 2013/0322242 Al, pub. Dec. 5, 2013 (Ex. 1007) (“Swenson”).
`3 US 2013/0291088 Al, pub. Oct. 31, 2013 (Ex. 1006) (“Shieh”).
`
`3
`
`
`
`IPR2024-00037
`Patent 10,652,111 B2
`
`III. MOTION FOR JOINDER
`Joinder for purposes of an inter partes review is governed by 35
`U.S.C. § 315(c), which states:
`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 parties
`review under section 314.
`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: set forth the reasons joinder is appropriate; identify any new grounds
`of unpatentability asserted in the petition; and explain what impact (if any)
`joinder would have on the trial schedule for the existing review. See Kyocera
`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24,
`2013).
`Petitioner timely filed the Motion no later than one month after
`institution of the Cisco IPR. See 37 C.F.R. § 42.122(b). As noted, the
`Petition in this case asserts the same unpatentability grounds on which we
`instituted review in the Cisco IPR. See Mot. 4–5. Petitioner also relies on the
`same prior art analysis and expert testimony submitted by the Cisco
`petitioner. See id. at 5. Indeed, the Petition is nearly identical to the petition
`filed by the Cisco petitioner. See id. Thus, this inter partes review does not
`present any ground or matter not already at issue in the Cisco IPR. Id.
`If joinder is granted, Petitioner agrees to assume an “‘understudy’
`role” and agrees that this role shall apply unless the Cisco petitioner ceases
`to participate in the instituted IPR. Id. at 6–7. Petitioner further represents
`
`4
`
`
`
`IPR2024-00037
`Patent 10,652,111 B2
`that it will not advance any arguments separate from those advanced by the
`Cisco petitioner in the consolidated filings. Id. Because Petitioner expects to
`participate only in a limited capacity, Petitioner submits that joinder will not
`impact the trial schedule for the Cisco IPR. Id. at 5.
`Patent Owner did not file an Opposition to the Motion for Joinder.
`Based on the above, we determine that joinder with the Cisco IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–9, 12–24, and 27–31 of the ’111 Patent is instituted;
`FURTHER ORDERED that the Motion for Joinder with IPR2023-
`00554 is granted;
`FURTHER ORDERED that IPR2024-00037 is joined with IPR2023-
`00554, pursuant to 37 C.F.R. §§ 42.72, 42.122, wherein Petitioner will
`maintain a secondary role in the proceeding, unless and until the current
`IPR2023-00554 petitioners cease to participate as a petitioner in the inter
`partes review;
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2023-00554;
`FURTHER ORDERED that the case caption in IPR2022-00554 shall
`be changed to reflect the joinder in accordance with the below example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2023-00554.
`
`
`
`5
`
`
`
`IPR2024-00037
`Patent 10,652,111 B2
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC. AND JUNIPER NETWORKS, INC.,
`Petitioner,
`v.
`ORCKIT CORPORATION,
`Patent Owner.
`
`IPR2023-005544
`Patent 10,652,111 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4 IPR2024-00037 (Juniper Networks, Inc) has been joined with this
`proceeding.
`
`6
`
`
`
`IPR2024-00037
`Patent 10,652,111 B2
`FOR PETITIONER:
`
`Kyle K. Tsui
`Andrew L. Ramos
`FISCH SIGLER LLP
`kyle.tsui@fischllp.com
`andrew.ramos@fischllp.com
`
`
`FOR PATENT OWNER:
`
`James T. Carmichael
`Stephen McBride
`Minghui Yang
`CARMICHAEL IP, PLLC
`jim@carmichaelip.com
`stevemcbride@carmichaelip.com
`mitch@carmichaelip.com
`
`
`7
`
`
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