Trials@uspto.gov Paper No. 10
`Paper No. 12
`Date Entered: September 4, 2015
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CIENA CORPORATION, CORIANT OPERATIONS, INC., CORIANT
`(USA) INC., AND FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00816
`Patent RE42,368
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`Paper No. 12
`Date Entered: September 4, 2015
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CIENA CORPORATION, CORIANT OPERATIONS, INC., CORIANT
`(USA) INC., AND FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00816
`Patent RE42,368
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2015-00816
`Patent RE42,368
`
`
`
`
`
`
`I. INTRODUCTION
`
`
`
`Petitioner, Ciena Corporation, Coriant Operations, Inc., Coriant
`
`(USA) Inc., and Fujitsu Network Communications, Inc., (“Petitioner” or
`
`“Ciena”) filed a Motion for Joinder in connection with inter partes review
`
`proceeding Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-01166
`
`(“IPR2014-01166”) pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22
`
`and 42.122(b). Paper 6 (“Motion” or “Mot.”). Both IPR2014-01166 and
`
`this proceeding involve claims 1–6, 9–13, and 15–22 of U.S. Patent No.
`
`RE42,368 (“the ’368 patent”). Petitioner filed the Motion with its Petition
`
`on February 26, 1015, within thirty days of the institution of trial in
`
`IPR2014-01166 on January 30, 2015. See IPR2014-01166, Paper 8.
`
`
`
`Petitioner represents that Cisco Systems, Inc. (“Cisco”), petitioner in
`
`IPR2014-01166, does not oppose the Motion. Mot. 3. Patent Owner,
`
`Capella Photonics, Inc., did not file a response to the Motion.
`
`
`
`
`
`Petitioner’s Motion for Joinder is granted.
`
`II. DISCUSSION
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`
`acting on behalf of the Director, has the discretion to join an inter partes
`
`review with another inter partes review. See 35 U.S.C. § 315(c).1 Joinder
`
`may be authorized when warranted, but the decision to grant joinder is
`
`
`1 35 U.S.C. § 315(c) reads:
`
`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
`
`2
`
`
`
`
`IPR2015-00816
`Patent RE42,368
`
`
`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its
`
`discretion, the Board is mindful that patent trial regulations, including the
`
`rules for joinder, must be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`
`37 C.F.R. § 42.1(b).
`
`
`
`In our Decision on Institution of Inter Partes Review (Paper 11),
`
`entered concurrently with this Decision on Motion for Joinder, we instituted
`
`trial with respect to claims 1–6, 9–13, and 15–22 of the ’368 patent. In that
`
`regard, we determined that Petitioner has shown a reasonable likelihood of
`
`prevailing in its assertion that those claims are unpatentable over the cited
`
`prior art. The grounds of unpatentability proposed by Petitioner are the
`
`same as in IPR2014-01166. Petitioner states that “[j]oinder would not
`
`complicate or delay [IPR2014-01166] and would not adversely affect the
`
`schedule.” Mot. 3. Petitioner represents that the Petition is nearly identical
`
`to the instituted grounds in IPR2014-01166 and is supported by a declaration
`
`from the same declarant that is essentially identical to the declaration
`
`submitted in IPR2014-01166. Id. According to Petitioner, “The Petition
`
`presents no new substantive issues relative to [IPR2014-01166] and does not
`
`seek to broaden the scope of [IPR2014-01166] or request additional
`
`discovery.” Id. at 6. Petitioner further agrees that Cisco’s counsel will act
`
`as lead counsel as long as Cisco remains in the proceeding, and submits that
`
`the current schedule can stay unchanged. Id. at 6–7. Additionally, the issues
`
`raised by Patent Owner in opposition to institution of trial in IPR2015-00816
`
`
`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.
`
`3
`
`
`
`
`IPR2015-00816
`Patent RE42,368
`
`
`mirror the contentions Patent Owner asserts in its Patent Owner Response in
`
`IPR2014-01166. See Paper 10; see also IPR2014-01166, Paper 19.
`
`
`
`In consideration of the foregoing, we determine that it is appropriate
`
`to grant Petitioner’s Motion for Joinder.
`
`III. ORDER
`
`Accordingly, it is
`
`ORDERED that Petitioner’s Motion for Joinder with IPR2014-01166
`
`
`
`
`
`is granted;
`
`
`
`FURTHER ORDERED that the instant proceeding is joined with
`
`IPR2014-01166;
`
`
`
`FURTHER ORDERED that the grounds of unpatentability on which
`
`trial was instituted in IPR2014-01166 are unchanged, and trial will proceed
`
`on those grounds based on the record in IPR2014-01166;
`
`
`
`FURTHER ORDERED that the parties will file all papers in
`
`IPR2014-01166, and that IPR2015-00816 is hereby terminated under
`
`37 C.F.R. § 42.72;
`
`
`
`FURTHER ORDERED that the joined proceeding will follow the
`
`schedule effective in IPR2014-01166 as of the date of this Decision;
`
`
`
`FURTHER ORDERED that in IPR2014-01166, Cisco Systems, Inc.,
`
`(“Cisco”) and Ciena Corporation, Coriant Operations, Inc., Coriant (USA)
`
`Inc., and Fujitsu Network Communications, Inc., (collectively “Ciena”) will
`
`file papers, except for motions that do not involve the other party, as
`
`consolidated filings. Cisco will identify each such filing as a consolidated
`
`filing and will be responsible for completing all consolidated filings. Ciena
`
`may file an additional paper, not to exceed five pages, which may address
`
`only points of disagreement with contentions in Cisco’s consolidated filing.
`
`4
`
`
`
`
`IPR2015-00816
`Patent RE42,368
`
`
`Any such filing by Ciena must identify specifically and explain each point of
`
`disagreement. Ciena may not file separate arguments in support of points
`
`made in Cisco’s consolidated filing;
`
`
`
`FURTHER ORDERED that, in addition to responding to any
`
`consolidated filing, Patent Owner may respond separately to any separate
`
`Ciena filing. Any such response by Patent Owner to a Ciena filing may not
`
`exceed the number of pages in the Ciena filing, and is limited to issues
`
`raised in the Ciena filing;
`
`
`
`FURTHER ORDERED that Cisco and Ciena will designate attorneys
`
`to conduct cross-examination of any witnesses produced by Patent Owner
`
`and redirect any witnesses produced by Cisco and Ciena within the
`
`timeframe normally allotted by the rules to one party. Cisco and Ciena will
`
`not receive any separate cross-examination or redirect time. Cisco is
`
`permitted to ask questions before Ciena at depositions if it so choses;
`
`
`
`FURTHER ORDERED that Cisco is permitted to present argument
`
`before Ciena at any oral argument if it so chooses;
`
`
`
`FURTHER ORDERED that the case caption in IPR2014-01166 shall
`
`be changed to reflect the joinder with this proceeding in accordance with the
`
`attached example; and
`
`
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the file of Case IPR2014-01166.
`
`
`
`
`
`
`
`5
`
`
`
`
`
`
`6
`
`
`IPR2015-00816
`Patent RE42,368
`
`For PETITIONER:
`
`Matthew Moore
`matthew.moore@lw.com
`
`Robert Steinberg
`Bob.Steinberg@lw.com
`
`Christopher Chalsen
`cchalsen@milbank.com
`
`Lawrence Kass
`lkass@milbank.com
`
`Nathaniel Browand
`nbrowand@milbank.com
`
`Suraj Balusu
`sbalusu@milbank.com
`
`Thomas Pratt
`TPratt@bannerwitcoff.com
`
`J. Pieter Van Es
`PVanEs@bannerwitcoff.com
`
`Jordan Bodner
`JBodner@bannerwitcoff.com
`
`Michael Cuviello
`MCuviello@bannerwitcoff.com
`
`
`
`
`
`IPR2015-00816
`Patent RE42,368
`
`For PATENT OWNER:
`
`Jason Eisenberg
`Jasone-ptab@skgf.com
`
`Robert Sterne
`rsterne-PTAB@skgf.com
`
`Jon Wright
`jwright-PTAB@skgf.com
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CIENA CORPORATION, CORIANT OPERATIONS, INC., CORIANT
`(USA) INC., AND FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-011662
`Patent RE42,368
`____________
`
`
`
`
`
`
`
`
`2 Case IPR2015-00816 has been joined with this proceeding.
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