`
`
`IN THE 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,
`Petitioners
`
`v.
`
`LS CLOUD STORAGE TECHNOLOGIES, LLC
`Patent Owner
`
`
`
`
`Case No. IPR2023-00733
`U.S. Patent No. 10,154,092
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`INTRODUCTION ........................................................................................... 1
`BACKGROUND AND RELATED PROCEEDINGS ................................... 2
`A.
`Related District Court Litigation ........................................................... 2
`B.
`Related IPR Proceedings ....................................................................... 3
`III. ARGUMENTS ................................................................................................ 3
`A.
`Petitioner’s Motion for Joinder Is Timely ............................................. 4
`Joinder Is Warranted under Kyocera ..................................................... 4
`1.
`Factor 1: Joinder is appropriate................................................... 4
`2.
`Factor 2: Petitioner’s petition proposes no new grounds for
`unpatentability ............................................................................. 6
`Factor 3: Joinder will not unduly burden or negatively impact
`the Google IPR trial schedule ..................................................... 6
`Factor 4: Procedures to simplify briefing and discovery ............ 8
`4.
`IV. CONCLUSION .............................................................................................. 10
`
`
`B.
`
`3.
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. INVT SPE LLC,
`IPR2019-00958, Paper 9 (PTAB May 30, 2019) ............................................. 7, 9
`AT&T Servs., Inc. v. Convergent Media Solutions, LLC,
`IPR2017-01235, Paper 11 (PTAB May 9, 2017) (Lee, J.) ................................... 9
`BlackBerry Corp. v. Uniloc 2017 LLC,
`IPR2019-01283, Paper 10 (PTAB Nov. 5, 2019) ................................................. 6
`Celltrion, Inc. v. Genentech, Inc.,
`IPR2018-01019, Paper 11 (Oct. 30, 2018) ........................................................... 7
`Ericsson Inc. v. Uniloc 2017 LLC,
`IPR2020-00376, Paper 16 ..................................................................................... 9
`Everlight Electronics Co., Ltd.,
`IPR2018-01260, Paper 12 (PTAB Nov. 14, 2018) ............................................... 7
`Google LLC v. LS Cloud Storage Technologies, LLC,
`IPR2023-00120 ............................................................................................passim
`Intel Corp. v. Alacritech, Inc.,
`IPR2018-01352, Paper 11 (PTAB Jan. 8, 2019) .............................................. 7, 9
`Kyocera Corp. v. Softview LLC,
`IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013) ............................................... 4
`Lear, Inc. v. Adkins,
`395 U.S. 653 (1969) .............................................................................................. 5
`Pfizer Inc. v. Sanofi-Aventis Deutschland GmbH,
`IPR2019-00980, Paper 12 (PTAB Aug. 15, 2019) ............................................... 7
`Samsung Elecs., Co. v. Raytheon Co.,
`IPR2016-00962, Paper 12 (PTAB Aug. 24, 2016) ............................................... 4
`Sony Corp. v. Memory Integrity, LLC,
`IPR2015-01353, Paper 11 (PTAB Oct. 15, 2015) ............................................ 6, 9
`ii
`
`
`
`
`
`Statutes
`35 U.S.C. § 314(a) ..................................................................................................... 5
`35 U.S.C. § 315(b) ................................................................................................. 3, 4
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`Other Authorities
`37 C.F.R. § 42.122(b) ........................................................................................ 1, 3, 4
`
`
`
`
`iii
`
`
`
`I.
`
`INTRODUCTION
`Cisco Systems, Inc. (“Cisco”), Microsoft Corporation (“Microsoft”),
`
`Amazon.com, Inc., Amazon Web Services, Inc., and Amazon.com Services LLC
`
`(“Amazon”) (collectively, “Petitioner”) respectfully submit this Motion for Joinder
`
`(“Motion”) together with a Petition (“Copycat Petition”) for Inter Partes Review
`
`(IPR) of U.S. Patent No. 10,154,092 (“’092 Patent”). The ’092 Patent is the subject
`
`of another proceeding before the Patent Office, Google LLC v. LS Cloud Storage
`
`Technologies, LLC, IPR2023-00120 (“Google IPR”). Pursuant to 35 U.S.C. § 315(c)
`
`and 37 C.F.R. § 42.122(b), Petitioner respectfully requests institution of inter partes
`
`review of the same claims of the ’092 Patent challenged in the Google IPR based on
`
`the same grounds presented in the Google IPR and further requests joinder with the
`
`Google IPR.
`
`Petitioner’s request for joinder is timely because it is made before an
`
`institution decision has been issued by the Board in the Google IPR. Further,
`
`Petitioner’s joinder will not unduly burden or prejudice the parties to the Google IPR
`
`and will efficiently resolve the patentability of the ’092 Patent in a single IPR
`
`proceeding. The Copycat Petition is substantively identical to the Google IPR
`
`petition (“Google Petition”). The Copycat Petition seeks review of the same patent
`
`claims challenged in the Google IPR, advances the same grounds for unpatentability
`
`advanced in the Google IPR, and relies on the same evidence (including expert
`
`
`
`1
`
`
`
`declarations) as the Google IPR. Additionally, Petitioner proposes streamlining the
`
`proceedings by taking an “understudy” role (unless Google LLC is terminated from
`
`the proceedings). Finally, petitioner in the Google IPR does not oppose Petitioner’s
`
`joinder. Accordingly, Petitioner respectfully requests that the Board institute the
`
`Copycat Petition and join this IPR with the Google IPR.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`A. Related District Court Litigation
`The ’092 Patent is the subject of the following litigation:
`
`• LS Cloud Storage Technologies, LLC v. Cisco Systems, Inc., 6:22-cv-
`
`00319 (W.D. Tex. 2022)
`
`o Dismissed and refiled as LS Cloud Storage Technologies, LLC v.
`
`Cisco Systems, Inc., 6:22-cv-00845 (W.D. Tex. 2022) (joint motion
`
`to transfer to the Austin Division granted November 22, 2022)
`
`• LS Cloud Storage Technologies, LLC v. Google LLC, 6:22-cv-00318
`
`(W.D. Tex. 2022)
`
`o Transferred to the Austin Division as LS Cloud Storage
`
`Technologies, LLC v. Google LLC, 1:22-cv-00853 (W.D. Tex.
`
`2022) by agreement of the parties on August 15, 2022
`
`• LS Cloud Storage Technologies, LLC v. Amazon.com, Inc., 6:22-cv-
`
`00316 (W.D. Tex. 2022)
`
`
`
`2
`
`
`
`o Transferred to the Austin Division as LS Cloud Storage
`
`Technologies, LLC v. Amazon.com, Inc., 1:22-cv-01167 (W.D.
`
`Tex. 2022) by agreement of the parties on October 31, 2022
`
`• LS Cloud Storage Technologies, LLC v. Microsoft Corporation, 6:22-cv-
`
`00321 (W.D. Tex. 2022)
`
`o Transferred to the Austin Division as LS Cloud Storage
`
`Technologies, LLC v. Microsoft Corporation, 1:22-cv-00974
`
`(W.D. Tex. 2022)
`
`B. Related IPR Proceedings
`The ’092 Patent is the subject of the following IPR Proceeding:
`
`• Google LLC v. LS Cloud Storage Technologies, LLC, IPR2023-00120
`
`(U.S. Patent No. 10,154,092)
`
`III. ARGUMENTS
`The Board may join as a party to an instituted inter partes review a person
`
`who has properly filed a petition for inter partes review that warrants institution. 35
`
`U.S.C. § 315(c). Any request for joinder must be filed “no later than one month
`
`after the institution date of any inter partes review for which joinder is requested.”
`
`37 C.F.R. § 42.122(b). A petition for inter partes review is not subject to the one-
`
`year statutory time bar if the petition is accompanied by a request for joinder. 35
`
`U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
`
`
`
`3
`
`
`
`“A motion for joinder should (1) set forth 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.”
`
`Samsung Elecs., Co. v. Raytheon Co., IPR2016-00962, Paper 12 at 5 (PTAB Aug.
`
`24, 2016) (citing Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(PTAB Apr. 24, 2013)).
`
`A.
`Petitioner’s Motion for Joinder Is Timely
`Petitioner’s Motion is timely because it is being filed before an institution
`
`decision has been issued by the Board in the Google IPR. As such, Petitioner’s
`
`Motion meets the requirement that it be filed “no later than one month after the
`
`institution date of any inter partes review for which joinder is requested.” 37 C.F.R.
`
`§ 42.122(b). Petitioner’s Copycat Petition is not subject to the one-year statutory
`
`time bar because it is accompanied by a request for joinder. See 35 U.S.C. § 315(b);
`
`37 C.F.R. § 42.122(b).
`
`B.
`
`Joinder Is Warranted under Kyocera
`1.
`Factor 1: Joinder is appropriate
`Joinder with the Google IPR is appropriate because the Copycat Petition
`
`involves the same patent, challenges the same claims, and is based on the same
`
`grounds and supported by the same technical expert declaration and evidence as the
`
`Google Petition. Additionally, as noted below, the Copycat Petition raises only the
`4
`
`
`
`
`
`grounds from the Google IPR. In 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. Further, good cause exists to allow joinder,
`
`given that the Copycat Petition is substantively identical to the Google Petition, and
`
`joinder would allow the Board to effectively resolve the identical challenges raised
`
`by both parties in a single proceeding.
`
`Additionally, Petitioner is currently involved in litigation based on Patent
`
`Owner’s allegation that Cisco’s, Microsoft’s, and Amazon’s products infringe the
`
`ʼ092 Patent. See above, Section II.A. Petitioner therefore has a particular interest
`
`in the substantial questions of invalidity surrounding the ’092 Patent. Joinder is also
`
`appropriate for the additional reason that the invalidity grounds as to the challenged
`
`claims can be resolved through Petitioner’s continued participation in the IPR
`
`process, even if the original petitioner in IPR2023-00120 were to reach a settlement
`
`with Patent Owner, or otherwise cease participation in that proceeding. The public
`
`interest in “permitting full and free competition in the use of ideas which are in
`
`reality a part of the public domain,” Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969),
`
`
`
`5
`
`
`
`favors allowing joinder in this case, as joinder would allow Petitioner to continue
`
`participating in the IPR process if Google ceases participation.
`
`2.
`
`Factor 2: Petitioner’s petition proposes no new grounds for
`unpatentability
`The Copycat Petition does not present any new grounds or arguments
`
`regarding unpatentability. It is substantively identical to the Google Petition. The
`
`Board “routinely grants motions for joinder where the party seeking joinder
`
`introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01283, Paper 10 at 8
`
`(PTAB Nov. 5, 2019) (quoting Samsung, IPR2016-00962, Paper 12 at 9). This
`
`factor therefore favors joinder.
`
`3.
`
`Factor 3: Joinder will not unduly burden or negatively impact
`the Google IPR trial schedule
`Joinder will not unduly burden Patent Owner. Because the Copycat Petition
`
`presents the same grounds and arguments as the Google Petition, there are no new
`
`issues for Patent Owner to address. See Sony Corp. v. Memory Integrity, LLC,
`
`IPR2015-01353, Paper 11 at 6 (PTAB Oct. 15, 2015) (granting motion for joinder
`
`and instituting IPR where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR]”).
`
`Indeed, the Patent Owner’s Preliminary Response in the Google IPR would be
`
`
`
`6
`
`
`
`sufficient to address the Copycat Petition because the issues presented are
`
`substantively identical.
`
`Likewise, joinder will not negatively impact any trial schedule for the Google
`
`IPR. As described below, Petitioner agrees to take an “understudy” role in the joined
`
`proceeding, so long as Google remains an active part in the joined proceeding. See,
`
`e.g., Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9 at 6–8 (PTAB May 30,
`
`2019) (granting motion for joinder where the movant presented a substantively
`
`identical petition and agreed to take an “understudy” role in the joined proceeding);
`
`Intel Corp. v. Alacritech, Inc., IPR2018-01352, Paper 11 at 3–5 (PTAB Jan. 8, 2019)
`
`(same).
`
`Finally, the Copycat Petition relies on the same technical expert declaration
`
`as the Google Petition. Ex. 1004 (Decl. of Dr. Paul Franzon, Ph.D.). Therefore,
`
`joinder will not increase the complexity of the proceeding. Indeed, the Board
`
`typically grants joinder even where a petitioner presents a different witness with a
`
`substantially similar declaration. See, e.g., Pfizer Inc. v. Sanofi-Aventis Deutschland
`
`GmbH, IPR2019-00980, Paper 12 at 3–4, 6–7 (PTAB Aug. 15, 2019); Everlight
`
`Electronics Co., Ltd., IPR2018-01260, Paper 12 at 4, 6–7 (PTAB Nov. 14, 2018);
`
`Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 (Oct. 30, 2018).
`
`
`
`
`
`
`
`7
`
`
`
`4.
`Factor 4: Procedures to simplify briefing and discovery
`Petitioner agrees to take an “understudy” role in the joined proceeding, absent
`
`termination of the original petitioner as a party. Specifically, Petitioner agrees to the
`
`following conditions regarding the joined proceeding, so long as Google remains an
`
`active party in the joined proceeding:
`
`1.
`
`Petitioner will not be making any substantive filings, and Petitioner
`
`agrees that Google alone will be responsible for all substantive
`
`petitioner filings in the joined proceeding;
`
`2.
`
`Petitioner agrees to be bound by all filings by Google in the joined
`
`proceeding, except for filings regarding termination and settlement;
`
`3.
`
`Petitioner must obtain prior Board authorization to file any paper or to
`
`take any action on its own in the joined proceeding;
`
`4.
`
`Petitioner shall not be permitted to raise any new grounds not already
`
`instituted by the Board for the Google IPR, or introduce any argument
`
`or discovery not already introduced by Google;
`
`5.
`
`Petitioner shall be bound by any agreement between Patent Owner and
`
`Google concerning discovery and depositions;
`
`6.
`
`7.
`
`Petitioner will not cross-examine or defend any witness at deposition;
`
`Google will be responsible for any oral hearing presentation, including
`
`the preparation of demonstrative exhibits.
`
`
`
`8
`
`
`
`Only if Google ceases participation in the proceeding:
`
`8.
`
`Petitioner would assume a primary role, meaning it would take over the
`
`role previously filled by Google.
`
`See Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376, Paper 16 at 10 (granting a
`
`motion for joinder with the same conditions).
`
`The eight conditions listed above are intended to capture Petitioner’s proposed
`
`“understudy” role. This list of conditions was provided to Google prior to filing,
`
`and Google stated it does not oppose Petitioner’s joinder under the conditions
`
`specified above. The conditions are also consistent with the Board’s stated
`
`conditions of joinder in other cases. Id.; see also AT&T Servs., Inc. v. Convergent
`
`Media Solutions, LLC, IPR2017-01235, Paper 11 at 36–37 (PTAB May 9, 2017)
`
`(Lee, J.) (granting joinder with similar limitations on an understudy).
`
`The Board has consistently found that the acceptance of an “understudy” role
`
`removes any undue complications or delay that might allegedly result from joinder.
`
`See, e.g., Apple, IPR2019-00958, Paper 9 at 6–8 (granting motion for joinder where
`
`the movant presented a substantively identical petition and agreed to take an
`
`“understudy” role in the joined proceeding); Intel Corp., IPR2018-01352, Paper 11
`
`at 3–5 (same); Sony Corp., IPR2015-01353, Paper 11 at 6–7. As such, this factor
`
`also favors joinder.
`
`
`
`
`
`9
`
`
`
`IV. CONCLUSION
`For the reasons above, Petitioner respectfully requests that the Board grant
`
`joinder with the Google IPR.
`
`
`
`
`
`Dated: March 20, 2023
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/ Brian E. Ferguson /
`Brian E. Ferguson
`LEAD COUNSEL
`Reg. No. 36,801
`WINSTON & STRAWN LLP
`1901 L Street, N.W.
`Washington, D.C. 20036
`Telephone: 202-282-5276
`Email: beferguson@winston.com
`
`Counsel for Petitioners Cisco Systems, Inc. and
`Microsoft Corporation
`Juan C. Yaquian
`BACK-UP COUNSEL
`Reg. No. 70,755
`WINSTON & STRAWN LLP
`800 Capital Street, Suite 2400
`Houston, TX 77002
`Telephone: (713) 651-2600
`Fax: (713) 651-2700
`Email: jyaquian@winston.com
`
`Counsel for Petitioners Cisco Systems, Inc. and
`Microsoft Corporation
`Krishnan Padmanabhan
`BACK-UP COUNSEL
`(to seek pro hac vice admission)
`WINSTON & STRAWN LLP
`
`10
`
`
`
`200 Park Avenue
`New York City, NY 10166
`Telephone: (212) 294-6700
`Fax: (212) 294-4700
`Email: kpadmanabhan@winston.com
`
`Counsel for Petitioner Cisco Systems, Inc.
`Michael Rueckheim
`BACK-UP COUNSEL
`(to seek pro hac vice admission)
`WINSTON & STRAWN LLP
`255 Shoreline Drive, Suite 520
`Redwood City, CA 94065
`Telephone: (650) 858-6500
`Fax: (650) 858-6550
`Email: mrueckheim@winston.com
`
`Counsel for Petitioner Microsoft Corporation
`Brian C. Nash
`BACK-UP COUNSEL
`Reg. No. 58,105
`MORRISON & FOERSTER LLP
`701 Brazos Street, Suite 1100
`Austin, TX 78701
`Telephone: (737) 309-0700
`Email: BNash@mofo.com
`
`Counsel for Petitioners Amazon.com, Inc.,
`Amazon Web Services, Inc., and Amazon.com
`Services LLC
`
`11
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing Petitioner’s Motion for
`
`Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) was caused to be served
`
`on March 20, 2023 via overnight courier upon the following counsel of record for
`
`Patent Owner in the related district court litigation:
`
`William P. Ramey, III
`Ramey LLP
`5020 Montrose Blvd., Suite 800
`Houston, Texas 77006
`(713) 426-3923
`wramey@rameyfirm.com
`
`
`The foregoing was caused to be served on March 20, 2023 via overnight
`
`courier upon the following counsel of record for Patent Owner:
`
`
`
`Respectfully submitted,
`
` /
`
` Brian E. Ferguson /
`Brian E. Ferguson
`Reg. No. 36,801
`WINSTON & STRAWN LLP
`1901 L Street, N.W.
`Washington, D.C. 20036
`Telephone: 202-282-5276
`Email: beferguson@winston.com
`
`Lead Counsel for Petitioners
`
`1
`
`Toler Law Group
`8500 Bluffstone Cove
`Suite A201
`Austin, Texas 78759
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
