IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`JUNIPER NETWORKS, INC.
`
`Petitioner,
`
`v.
`
`ORCKIT CORPORATION
`
`Patent Owner.
`
`____________
`
`Case IPR2024-00037
`
`U.S. Patent No. 10,652,111
`
`____________
`
`
`
`MOTION FOR JOINDER TO
`INTER PARTES REVIEW IPR2023-00554
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`JUNIPER NETWORKS, INC.
`
`Petitioner,
`
`v.
`
`ORCKIT CORPORATION
`
`Patent Owner.
`
`____________
`
`Case IPR2024-00037
`
`U.S. Patent No. 10,652,111
`
`____________
`
`
`
`MOTION FOR JOINDER TO
`INTER PARTES REVIEW IPR2023-00554
`
`
`
`
`
`Motion for Joinder to Inter Partes Review IPR2023-00554
`
`
`IPR2024-00037
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`STATEMENT OF MATERIAL FACTS ........................................................ 1
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 2
`
`A.
`
`LEGAL STANDARD ..................................................................................... 2
`
`B.
`
`PETITIONER’S MOTION FOR JOINDER IS TIMELY. ............................. 3
`
`C.
`
`THE BOARD SHOULDN’T EXERCISE DISCRETION UNDER §314(A).
` ......................................................................................................................... 3
`
`D. ALL FOUR KYOCERA FACTORS WEIGH IN FAVOR OF JOINDER. ..... 4
`
`IV. CONCLUSION ................................................................................................ 7
`
`
`
`
`
`i
`
`
`
`Motion for Joinder to Inter Partes Review IPR2023-00554
`
`
`IPR2024-00037
`
`I.
`
`INTRODUCTION
`
`Juniper Networks, Inc. (“Juniper” or “Petitioner”) respectfully submits this
`
`Motion for Joinder along with a Petition for Inter Partes review of U.S. Patent
`
`No. 10,652,111 (“the Juniper Petition”). The Patent Trial and Appeal Board
`
`(“Board”) instituted Cisco Systems, Inc. v. Orckit Corp., IPR2023-00554 (“Cisco
`
`IPR”) on September 20, 2023. Pursuant to 35 U.S.C. §315(c) and 37 C.F.R.
`
`§42.122(b), Juniper requests institution of inter partes review and joinder with the
`
`Cisco IPR. As detailed below, doing so won’t unduly burden or prejudice the
`
`parties to the Cisco IPR and will efficiently resolve the question of the validity of
`
`U.S. Patent No. 10,652,111 (“the ’111 Patent”) in a single proceeding.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On July 22, 2022, Patent Owner, Orckit Corporation (“Orckit”) filed a
`
`civil action against Cisco Systems, Inc. asserting four patents, including the ’111
`
`Patent.1
`
`2.
`
`3.
`
`Cisco filed the Cisco IPR on February 21, 2023.
`
`On July 28, 2023, Patent Owner filed a civil action against Arista
`
`Networks, Inc. asserting three patents, including the ’111 Patent.2
`
`
`1 Orckit Corporation v. Cisco Systems, Inc., No. 2:22-cv-00276 (E.D. Tex.).
`
`2 Orckit Corporation v. Arista Networks, Inc., No. 1:23-cv-00821 (D. Del.).
`
`
`
`
`
`1
`
`
`
`Motion for Joinder to Inter Partes Review IPR2023-00554
`
`
`IPR2024-00037
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`4.
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`On July 31, 2023, Patent Owner filed a civil action against Juniper
`
`asserting three patents, including the ’111 Patent.3
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`5.
`
`The Board instituted trial in the Cisco IPR on September 20, 2023.4
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Board may join as a party to an instituted IPR any person who has
`
`properly filed a petition for IPR that warrants institution.5 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.”6 The statute requires the Board to
`
`determine whether the joinder applicant’s petition warrants institution under §314,
`
`and, to effect joinder, requires the Director to exercise her discretion to decide
`
`whether to join the joinder applicant.7 Applying this standard, the Board first
`
`analyzes the petition’s merits and whether it should exercise discretion to deny
`
`
`3 Orckit Corporation v. Juniper Networks, Inc., No. 1:23-cv-00822 (D. Del.).
`
`4 See Cisco Systems, Inc. v. Orckit Corp., IPR2023-00554, Paper 8 (P.T.A.B. Sept.
`
`20, 2023).
`
`5 35 U.S.C. §315(c).
`
`6 37 C.F.R. §42.122(b).
`
`7 Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir.
`
`2020).
`
`
`
`
`
`2
`
`
`
`Motion for Joinder to Inter Partes Review IPR2023-00554
`
`
`IPR2024-00037
`
`institution.8 Then, the Board considers the Kyocera factors, which include: the
`
`reasons why joinder is appropriate, whether the petition presents new grounds of
`
`unpatentability, what impact joinder will have on the trial schedule, and how
`
`simplification of briefing and discovery might occur to minimize any trial schedule
`
`impact.9
`
`B.
`
`Petitioner’s Motion for Joinder is Timely.
`
`Juniper files this Motion for Joinder within one month of the September 20,
`
`2023 institution decision of the Cisco IPR.
`
`C. The Board Shouldn’t Exercise Discretion Under §314(a).
`
`The Juniper Petition details the reasons why the Board shouldn’t exercise its
`
`discretion to deny Juniper’s first challenge to the ’111 Patent. The Board
`
`previously found the Cisco IPR merited institution. The Juniper Petition relies on
`
`the same evidence presented in the Cisco IPR including Cisco’s expert testimony.10
`
`Institution of the Juniper Petition is therefore appropriate for similar reasons.
`
`
`8 See, e.g., AT&T Servs., Inc. v. Broadband iTV, Inc., IPR2021-00556, Paper
`
`No. 14 (P.T.A.B. Aug. 25, 2021).
`
`9 See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper No. 15 at 4 (P.T.A.B.
`
`Apr. 24, 2013).
`
`10 See, e.g., OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at
`
`9 (P.T.A.B. Oct. 4, 2022) (acknowledging the propriety of “copycat” petitions
`
`utilizing the same evidence including refiled declarations).
`
`
`
`3
`
`
`
`Motion for Joinder to Inter Partes Review IPR2023-00554
`
`
`IPR2024-00037
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`D. All Four Kyocera Factors Weigh in Favor of Joinder.
`
`Analysis of the four Kyocera factors shows that they all favor joinder.
`
`First, the Juniper Petition is substantively identical to the Cisco IPR and
`
`relies on identical exhibits. The Juniper Petition includes non-substantive
`
`modifications specific to the formalities of a different party filing the petition, as
`
`well as an explanation for why the Board shouldn’t exercise discretion to deny
`
`Juniper’s Petition. And should Cisco cease participation, joinder allows Juniper to
`
`continue participating to resolve questions surrounding the validity of the ’111
`
`Patent in view of the petitioned unpatentability grounds. Good cause therefore
`
`exists for joining this proceeding with the Cisco IPR.
`
`Second, Juniper doesn’t present new grounds of unpatentability. The same
`
`claims of the same patent are challenged under the same unpatentability grounds as
`
`the Cisco IPR. The Board “routinely grants motions for joinder where the party
`
`seeking joinder introduces identical arguments and the same grounds raised in the
`
`existing proceeding.”11 And because this is Petitioner’s first challenge to the ’111
`
`
`11 BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01283, Paper 10 at 8 (P.T.A.B.
`
`Nov. 5, 2019) (quoting Samsung Elecs., Co. v. Raytheon Co., IPR2016-00962,
`
`Paper 12 at 9 (P.T.A.B. Aug. 24, 2016)).
`
`
`
`
`
`4
`
`
`
`Motion for Joinder to Inter Partes Review IPR2023-00554
`
`
`IPR2024-00037
`
`Patent, there’s no “potential for abuse of the review process by repeated attacks on
`
`patents.”12
`
`Third, Patent Owner won’t have new issues to address due to the
`
`substantively identical nature of the Juniper Petition and the Cisco IPR. Patent
`
`Owner’s Response will address the issues presented in the Cisco IPRs and
`
`therefore address the same issues presented in the Juniper Petition. Juniper relies
`
`on the same expert and an identical declaration. No additional expert depositions
`
`will occur due to the grant of this motion. Joining this proceeding with the Cisco
`
`IPR therefore won’t impact the Cisco IPR trial schedule in a meaningful way.13
`
`And to the extent any small adjustment of the trial schedule occurs, this doesn’t
`
`provide a basis for denying Juniper’s Motion for Joinder.
`
`Fourth, to simplify briefing and discovery, Juniper agrees to an “understudy”
`
`role in the Cisco IPR. Juniper specifically agrees as follows:
`
`
`12 Apple Inc. v. Uniloc 2017, LLC, IPR2020-00854, Paper 9 at 5 (P.T.A.B. Oct. 28,
`
`2020) (precedential) (quoting General Plastic Industrial Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16–17 (P.T.A.B. Sept. 6, 2017)
`
`(precedential)).
`
`13 Sony Corp. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 at 6 (P.T.A.B.
`
`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]”).
`
`
`
`5
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`
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`Motion for Joinder to Inter Partes Review IPR2023-00554
`
`
`IPR2024-00037
`
`1.
`
`Juniper won’t make any substantive filings, and Juniper agrees
`
`that Cisco alone will be responsible for all substantive petitioner
`
`filings in the joined proceeding;
`
`2.
`
`Juniper agrees to be bound by all filings by Cisco in the joined
`
`proceeding, except for filings regarding termination and settlement;
`
`3.
`
`Juniper must obtain prior Board authorization to file any paper or to
`
`take any action on its own in the joined proceeding;
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`4.
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`Juniper shall not be permitted to raise any new grounds not already
`
`instituted by the Board in the Cisco IPR, or introduce any argument
`
`or discovery not already introduced by Cisco;
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`5.
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`Juniper shall be bound by any agreement between Patent Owner and
`
`Cisco concerning discovery and depositions;
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`6.
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`7.
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`Juniper will not cross-examine or defend any witness at deposition;
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`Cisco will be responsible for any oral hearing presentation, including
`
`the preparation of demonstrative exhibits.
`
`Should Cisco cease participation in the proceeding:
`
`8.
`
`Juniper would assume a primary role, meaning it would take over the
`
`role previously filled by Cisco.
`
`
`
`6
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`
`
`Motion for Joinder to Inter Partes Review IPR2023-00554
`
`
`IPR2024-00037
`
`The Board has granted motions for joinder with the same conditions.14
`
`Because Juniper accepts this “understudy” role and presents substantively identical
`
`unpatentability grounds relying on the same prior art combinations against the
`
`same claims, minimal complications or delay resulting from joinder should occur.15
`
`And resolving all issues in a single proceeding simplifies briefing and discovery
`
`issues.
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`IV. CONCLUSION
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`For these reasons, Juniper respectfully requests institution of the Juniper
`
`Petition and joinder with the Cisco IPR.
`
`
`
`Date: October 11, 2023
`
`
`
`Respectfully submitted,
`
`/s/ Kyle K. Tsui
`Kyle K. Tsui
`Counsel for Petitioner
`
`
`
`
`14 Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376, Paper 16 at 10 (P.T.A.B.
`
`May 22, 2020) (granting a motion for joinder with the same conditions); see also
`
`Apple Inc. v. INVT SPE LLC, IPR2019-00958, Paper 9 at 5-8 (P.T.A.B. May 30,
`
`2019) (granting IPR where petitioners requested an “understudy” role).
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`15 See Apple, IPR2019-00958, Paper 9 at 5-8; Sony, IPR2015-01353, Paper 11 at 6-
`
`7 (granting IPR and motion for joinder because “joinder would increase efficiency
`
`by eliminating duplicative filings and discovery, and would reduce costs and
`
`burdens on the parties as well as the Board” where petitioners agreed to an
`
`“understudy” role).
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`
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`7
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`
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