Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 12
`Entered: October 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01003
`Patent 6,088,802
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review,
`Granting Petitioner’s Motion for Joinder, and
`Dismissing Petitioner’s Additional Motions
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. §§ 42.5, 42.108, 42.122
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 12
`Entered: October 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01003
`Patent 6,088,802
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review,
`Granting Petitioner’s Motion for Joinder, and
`Dismissing Petitioner’s Additional Motions
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. §§ 42.5, 42.108, 42.122
`
`
`
`
`
`
`
`IPR2018-01003
`Patent 6,088,802
`
`
`INTRODUCTION
`I.
`Kingston Technology Company, Inc. (“Kingston” or “Petitioner”),
`filed a Petition (Paper 2, “Pet.”) for inter partes review of claims 1, 2, 6, 7,
`11, 12, 23–25, 38, and 39 of U.S. Patent No. 6,088,802 (“the ’802 patent”)
`(Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. On the same day as filing the
`Petition, Petitioner filed a Motion for Joinder. Paper 4 (“Joinder Motion,”
`“Motion,” or “Mot.”).
`Initially we note a number of errors in the Motion. The caption and
`the body of the Motion refer to 35 U.S.C. § 325(c), which relates to joinder
`in post-grant reviews, rather than § 315(c), which relates to joinder in inter
`partes reviews as is the case here. Furthermore, the caption refers to Title
`27 of the Code of Federal Regulations (“CFR”) rather than Title 37 thereof.
`Still further, the citations to CFR are to section 42.222, which, again, relates
`to joinder in post-grant reviews, rather than section 42.122, which relates to
`joinder in inter partes review. We find the errors harmless and presume the
`Motion intended to cite 35 U.S.C. § 315 and 37 C.F.R. § 42.122.
`The Joinder Motion seeks to join Kingston as a party to Western
`Digital Corp. v. SPEX Technologies, Inc., Case IPR2018-00082 (“the 82
`IPR”). Mot. 1. The Joinder Motion indicates Western Digital Corporation
`(“WDC,” Petitioner in the 82 IPR), does not oppose Kingston’s request to
`join the 82 IPR. Mot. 7. SPEX Technologies, Inc. (“SPEX” or “Patent
`Owner”) filed an Opposition to the Motion. Paper 11 (“Opp.” or
`“Opposition”).
`As explained further below, we institute trial in this inter partes
`review on the same grounds as instituted in IPR2018-00082, and we grant
`Petitioner’s Joinder Motion. Furthermore, we dismiss Petitioner’s additional
`
`2
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`IPR2018-01003
`Patent 6,088,802
`
`motions (incorporated with the Joinder Motion) as moot and as improperly
`filed without authorization.
`
`
`II. DISCUSSION
`A.
`Institution of Trial
`In the 82 IPR, WDC challenged claims 1, 2, 6, 7, 11, 12, 23–25, 38
`and 39 of the ’802 Patent on the following grounds:
`
`References
`Harari1 and Anderson2
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`Claims challenged
`1, 2, 6, 7, 11, 12, 23–25,
`38, and 39
`1, 2, 11, 12, 23, and 39
`
`1, 2, 11, 12, 23, and 39
`
`Harari, Anderson, and
`Wang3
`Harari, Anderson, and
`Dumas4
`Harari, Anderson, Dumas,
`and Wang
`IPR2018-00082 Paper 1, 2. After considering the Petition in the 82 IPR and
`Patent Owner’s Preliminary Response in the 82 IPR, we instituted trial for
`the above-identified grounds of unpatentability. See IPR2018-00082 Paper
`11, 2, 43.
`Prior to filing the 82 IPR, Kingston filed a petition in IPR2017-00824
`challenging the same claims (1, 2, 6, 7, 11, 12, 23–25, 38, and 39) and other
`claims of the ’802 patent although applying different references in that
`challenge. We denied institution on Case IPR2017-00824.
`
`§ 103
`
`1, 2, 11, 12, 23, and 39
`
`
`1 U.S. Patent No. 5,887,145 (“Harari,” Ex. 1004).
`2 Don Anderson, PCMCIA System Architecture 16-Bit PC Cards, Second
`Edition, 1995 (“Anderson,” Ex. 1006).
`3 U.S. Patent No. 5,765,027 (“Wang,” Ex. 1019).
`4 U.S. Patent No. 6,199,163 B1 (“Dumas,” Ex. 1005).
`
`3
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`IPR2018-01003
`Patent 6,088,802
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`
`Petitioner here (Kingston) represents that this Petition is substantively
`identical to WDC’s Petition in IPR2018-00082 and challenges the same
`claims based on the same grounds. Mot. 1. We have considered the relevant
`Petitions and we agree with Petitioner’s representation that this Petition is
`substantively identical to the Petition in IPR2018-00082. Compare Pet.,
`with IPR2018-00082 Paper 1. Patent Owner did not file a Preliminary
`Response to this Petition.
`Accordingly, for essentially the same reasons stated in our Decision to
`Institute in IPR2018-00082, we conclude Petitioner has established a
`reasonable likelihood of prevailing with respect to at least one challenged
`claim, and we institute trial in this proceeding for claims 1, 2, 6, 7, 11, 12,
`23–25, 38, and 39 on the same grounds as in IPR2018-00082.
`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join a petitioner for inter partes review to a previously instituted inter
`partes review. 35 U.S.C. § 315(c). Subsection 315(c) provides, in relevant
`part, that “[i]f 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.” Id. Furthermore,
`subsection 315(b) explains that the one year time bar thereof “shall not apply
`to a request for joinder under subsection (c).”
`We agree with Patent Owner that, but for this Joinder Motion,
`Kingston would be barred under subsection 315(b) from proceeding in this
`review. Opp. 1 (“Kingston’s petition is time-barred absent joinder.”).
`Patent Owner opposes the joinder of Kingston to the 82 IPR, arguing:
`On October 16, 2017, after having reviewed two
`preliminary responses by SPEX and two institution denials by
`
`4
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`IPR2018-01003
`Patent 6,088,802
`
`
`the PTAB, Western Digital filed a third petition in case number
`IPR2018-00082 (“82-IPR”) alleging that claims 1-2, 6-7, 11-12,
`23-25, and 38-39 of the ’802 Patent were unpatentable over
`Harari and other references. 82-IPR, Paper 1
`Opp. 5.5 Patent Owner further contends “Kingston and its joint defense
`group have engaged in incremental petitioning which has allowed it to
`impermissibly benefit from SPEX’s prior arguments and the Board’s prior
`decisions.” Id. at 6.
`Kingston admits knowledge of the references applied in the 82 IPR at
`the time of the earlier filed petition (IPR2017-00824) but argues that
`knowledge should not be determinative of granting or denying its motion to
`join as a party to the 82 IPR. Mot. 8. In particular, Kingston notes that the
`art applied in the 82 IPR is “wholly different” from that of its earlier petition
`and, thus, “there is no shift in position or correction by Petitioner of earlier-
`asserted arguments.” Id. Therefore, Kingston argues there is efficiency
`gained by the Board and by the parties in joining Kingston in the 82 IPR. Id.
`We are persuaded that there is efficiency in joining Kingston as a
`Petitioner in the 82 IPR. We discern no prejudice to Patent Owner by
`granting Kingston’s motion for joinder. Patent Owner’s arguments
`regarding incremental petitioning were essentially addressed in our Decision
`on Institution in the 82 IPR. Paper 14, 16–20 (addressing Patent Owner’s
`arguments urging we exercise our discretion to deny the WDC Petition in
`the 82 IPR based on the General Plastic factors). We were not persuaded by
`
`
`5 Patent Owner alleges Western Digital Corporation was aware of
`Kingston’s Case IPR2017-00824 as well as an earlier Case IPR2017-00430
`filed by Unified Patents Inc. We denied review of the Petition in Case
`IPR2017-00430. IPR2017-00430, Paper 8.
`
`5
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`IPR2018-01003
`Patent 6,088,802
`
`Patent Owner’s arguments in that Decision on Institution and we remain
`unpersuaded now.
`Accordingly, we grant Kingston’s Motion for Joinder with the 82 IPR,
`subject to the condition that:
`Petitioner here (i.e., Kingston Technology Company, Inc.)
`will be bound by all substantive and procedural filings and
`representations of current Petitioner in IPR2018-00082 (i.e.,
`Western Digital Corporation), without a separate opportunity to
`be heard, whether orally or in writing, unless and until the
`proceeding is terminated with respect to Western Digital
`Corporation.
`In view of the foregoing, we determine that joinder based upon the
`above-noted condition will have little or no impact on the timing, cost, or
`presentation of the trial on the instituted grounds. Moreover, discovery and
`briefing will be simplified if Kingston is joined as a party to the 82 IPR.
`C.
`Additional Motions
`In its Motion for Joinder, Petitioner (Kingston) also moves for
`coordination of the schedule for this IPR with the 82 IPR, as an alternative to
`joinder, and further requests to shorten the time for Patent owner’s
`Preliminary Response. See Mot. We caution Petitioner that compliance
`with our rules requires that such motions be pre-authorized. No such
`authorization to file a motion for coordination of the schedule or request for
`shortened response time was requested or granted. Furthermore, in view of
`our orders below instituting review and granting the motion for joinder, as
`well as the Preliminary Response deadline now having passed, the proposed
`additional motions are moot.
`Accordingly, we dismiss Petitioner’s additional motions as
`unauthorized and as moot.
`
`6
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`IPR2018-01003
`Patent 6,088,802
`
`
`
`III. ORDERS
`After due consideration of the record before us, and for the foregoing
`
`reasons, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted for claims of the ’802 Patent as follows: (1) claims 1, 2, 6,
`7, 11, 12, 23–25, 38, and 39 as obvious under 35 U.S.C. § 103(a) over Harari
`and Anderson, (2) claims 1, 2, 11, 12, 23, and 39 as obvious under 35 U.S.C.
`§ 103(a) over Harari, Anderson, and Wang, (3) claims 1, 2, 11, 12, 23, and
`39 as obvious under 35 U.S.C. § 103(a) over Harari, Anderson, and Dumas,
`and (4) claims 1, 2, 11, 12, 23, and 39 as obvious under 35 U.S.C. § 103(a)
`over Harari, Anderson, Dumas, and Wang;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2018-00082 is granted, and Kingston Technology Company, Inc. is
`joined as a petitioner in IPR2018-00082;
`FURTHER ORDERED that the grounds on which an inter partes
`review was instituted in Case IPR2018-00082 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Petitioner here (i.e., Kingston
`Technology Company, Inc.) will be bound by all substantive and procedural
`filings and representations of current Petitioner in IPR2018-00082 (i.e.,
`Western Digital Corporation), without a separate opportunity to be heard,
`whether orally or in writing, unless and until the proceeding is terminated
`with respect to Western Digital Corporation;
`
`7
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`IPR2018-01003
`Patent 6,088,802
`
`
`FURTHER ORDERED that the schedule for this proceeding shall be
`governed by the current schedule and any changes in the schedule for
`IPR2018-00082;
`FURTHER ORDERED that IPR2018-01002 is terminated under
`37 C.F.R. § 42.72, and that all future filings are to be made only in IPR2018-
`00082;
`FURTHER ORDERED that the case caption in IPR2018-00082 for all
`further submissions shall be changed to add Petitioner (Kingston
`Technology Company, Inc.) as a named Petitioner, and to indicate by
`footnote the joinder of Petitioner Kingston Technology Corporation, Inc. to
`that proceeding, as indicated in the attached sample case caption;
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-00082; and
`FURTHER ORDERED that Kingston’s motions in the alternative for
`coordination of schedule with IPR2018-00082 and for a shortened time for
`Patent Owner’s Preliminary Response are dismissed as unauthorized and
`moot.
`
`
`
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`
`
`
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`
`
`
`8
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`
`
`IPR2018-01003
`Patent 6,088,802
`
`PETITIONER:
`David Hoffman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`Martha Hopkins
`LAW OFFICES OF S. J. CHRISTINE YANG
`mhopkins@sjclawpc.com
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Vincent Rubino
`Enrique Iturralde
`Brown Rudnick LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
`
`9
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION and
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-000826
`Patent 6,088,802
`
`
`
`
`6 Kingston Technology Company, Inc., which filed a Petition in Case
`IPR2018-01003, has been joined as a petitioner in this proceeding.
`
`
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