throbber
Trials@uspto.gov Paper 19
`
`571-272-7822
`Date Entered: August 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION
`and
`QUALCOMM INCORPORATED, GLOBALFOUNDRIES INC.,
`GLOBALFOUNDRIES U.S. INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES
`DRESDEN MODULE TWO LLC & CO. KG,
`Petitioner,
`
`v.
`
` DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00289
`Case IPR2016-01313
`Patent 5,965,924
`____________
`
`
`Before BRYAN F. MOORE, BRIAN J. McNAMARA, and
`MINN CHUNG, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`DECISION GRANTING MOTION FOR JOINDER
`37 C.F.R. § 42.22 AND 42.122(b)
`
`
`
`
`
`
`
`
`

`
`IPR2016-00289; IPR2016-01313
`Patent 5,965,924
`
`
`
`
`BACKGROUND
`
`On July 1, 2016, Qualcomm Incorporated, Globalfoundries Inc.,
`Globalfoundries U.S. Inc., Globalfoundries Dresden Module One LLC &
`Co. KG, Globalfoundries Dresden Module Two LLC & Co. KG
`(collectively, “Petitioner”) filed a petition, Paper 3 (“Pet.”), to institute an
`inter partes review of claims 1–6, 13, 14, and 16 (the “challenged claims”)
`of U.S. Patent No. 5,965,924 (“the ’924 Patent”). 35 U.S.C. § 311.
`Petitioner also timely filed a Motion for Joinder (Paper 4 (“Motion for
`Joinder”)) of this proceeding with Intel Corporation v. DSS Technology
`Management, Inc., IPR2016-00289 (“Intel IPR2016-00289”), which is the
`subject of a Decision to Institute entered on June 8, 2016 . Petitioner
`represents that the instant Petition “is identical to the petition in the Intel
`IPR[2016-00289].”1 Mot. for Joinder 2, 6. In a separate decision, entered
`today, we instituted inter partes review in this proceeding on the same
`grounds as those in Intel IPR2016-00289. For the reasons that follow, we
`also grant Petitioner’s Motion for Joinder.
`
`
`DISCUSSION
`The Director has discretion to join as a party to an inter partes review
`any person who properly files a petition that, after receiving a preliminary
`response, the Director determines warrants the institution of inter partes
`
`
`1 We understand Petitioner to mean identical in all substantive matters, as
`the identity of the parties is different. Petitioner also acknowledges that it
`relies on the testimony of a different expert than the expert witness in Intel
`IPR2016-00289, but states that the testimony is essentially the same. Mot.
`for Joinder 7.
`
`
`
`2
`
`

`
`IPR2016-00289; IPR2016-01313
`Patent 5,965,924
`
`
`review. 35 U.S.C. § 315(c). Petitioner argues that we should exercise our
`discretion under 35 U.S.C. § 315(c) to authorize joinder in this case.
`Petitioner states that the instant Petition challenges the same claims,
`under the same grounds, advances the same arguments and relies on
`substantially the same expert declaration (albeit from a different expert) as
`those on which we instituted inter partes review in Intel IPR2016-00289.
`Mot. for Joinder 6–7. Having not advanced any new grounds or theories of
`unpatentability in this proceeding, Petitioner contends that joinder will avoid
`inefficiencies that could result from parallel proceedings. Id. at 7.
`Noting that its positions are identical to those advanced by Intel in the
`Intel IPR2016-00289, Petitioner also proposes consolidated discovery and
`consolidated filings of all substantive papers. Id. at 9. Petitioner agrees not
`to file any separate briefs. Id. at 8. Petitioner agrees not to request
`additional cross-examination or re-direct time. Id. Petitioner also proposes
`that Intel be responsible for presentation of argument before the Board at
`oral hearing and agrees not to submit any demonstratives of its own. Id.
`During a teleconference on August 11, 2016, both Intel and Patent
`Owner stated that they have no objection to the proposed joinder. Petitioner
`also stated that, while Intel participates in the proceeding, Petitioner will rely
`on the testimony of Intel’s expert. In the event that Intel’s involvement in
`this proceeding is terminated, Petitioner agreed that it would make its own
`expert available for cross examination by Patent Owner.
`We agree that joinder in this case would promote the just, speedy, and
`inexpensive resolution of IPR2016-01313 and IPR2016-00289. Therefore,
`we GRANT Petitioner’s unopposed Motion for Joinder and authorize the
`joinder in accordance with the following order.
`
`
`
`3
`
`

`
`IPR2016-00289; IPR2016-01313
`Patent 5,965,924
`
`
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that IPR2016-01313 is joined with IPR2016-00289;
`FURTHER ORDERED that the grounds on which trial was instituted
`in Intel IPR2016-00289 are unchanged and that no other grounds are
`authorized:
`FURTHER ORDERED that the Scheduling Order entered in Intel
`IPR2016-00289 is unchanged;
`FURTHER ORDRED that throughout the proceeding Petitioner and
`Intel will file papers, except for motions that do not involve the other party,
`e.g., pro hac vice motions, as consolidated filings and that all rules
`concerning filing papers, e.g., page and word limits, apply to such
`consolidated filings;
`FURTHER ORDERED that each authorized cross-examination of
`Patent Owner’s witnesses shall be conducted as though this matter
`concerned only a single petitioner;
`FURTHER ORDERED that Qualcomm shall rely on the testimony of
`Intel’s expert witness and, should Intel’s involvement in the proceeding be
`terminated, Qualcomm shall make its own expert available to Patent Owner
`for cross-examination;
`FURTHER ORDERED that IPR2016-01313 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceeding shall
`be made in IPR2016-00289; and
`FURTHER ORDERED that the case caption in IPR2016-00289 shall
`reflect the joinder with this proceeding.
`
`
`
`
`4
`
`

`
`IPR2016-00289; IPR2016-01313
`Patent 5,965,924
`
`
`
`
`
`
`PETITIONER:
`
`Grant K. Rowan Y
`Yung-Hoon Ha
`Wilmer Cutler Pickering Hale and Dorr, LLP
`grant.rowan@wilmerhale.com
`yung-hoon.ha@wilmerhale.com
`
`PATENT OWNER
`
`
`
`Andriy Lytvyn
`Anton J. Hopen
`Nicholas Pfeifer
`Smith & Hopen, P.A.
`andriy.lytvyn@smithhopen.com
`anton.hopen@smithhopen.com
`nicholas.pfeifer@smithhopen.com
`
`
`
`
`
`
`5

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