`571-272-7822
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`Paper No. 13
`Entered: November 13, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`TOSHIBA CORPORATION, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., AND APRICORN
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01068
`Patent 6,003,135
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
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`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
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`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. §§ 42.108, 42.122
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`IPR2018-01068
`Patent 6,003,135
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`I.
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`INTRODUCTION
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`Toshiba Corporation, Toshiba America Electronic Components, Inc.,
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`and Apricorn (collectively “Toshiba” or “Petitioner”), filed a Petition (Paper
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`5, “Pet.”) for inter partes review of claims 55–58 of U.S. Patent No.
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`6,003,135 (“the ’135 Patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319.
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`A few days after filing the Petition, Petitioner filed a Motion for Joinder.
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`Paper 6 (“Joinder Motion” or “Mot.”).
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`The Joinder Motion seeks to join Petitioner as parties to Western
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`Digital Corp. v. SPEX Technologies, Inc., Case IPR2018-00084 (“the 84
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`IPR”). Mot. 1. The Joinder Motion indicates Western Digital Corp.
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`(“WDC”), Petitioner in the 84 IPR, does not oppose Toshiba’s request to
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`join the 84 IPR. Mot. 3. SPEX Technologies, Inc. (“SPEX” or “Patent
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`Owner”) filed an Opposition to the Motion. Paper 9 (“Opp.” or
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`“Opposition”). Petitioner filed a Reply to Patent Owner’s Opposition.
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`Paper 11 (“Reply”).
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`As explained further below, we institute trial in this inter partes
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`review on the same grounds as instituted in IPR2018-00084, and we grant
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`Petitioner’s Motion for Joinder.
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`2
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`IPR2018-01068
`Patent 6,003,135
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`II. DISCUSSION
`A.
`Institution of Trial
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`In the 84 IPR, WDC challenged claims 55–58 of the ’135 Patent on
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`the following grounds:
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`References
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`Basis
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`Claims challenged
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`Harari1 and Anderson2
`Harari, Anderson, and Dumas3
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`§ 103
`§ 103
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`55–58
`56 and 57
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`IPR2018-00084 Paper 1, 2–3. After considering the Petition and the Patent
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`Owner’s Preliminary Response in the 84 IPR, we instituted trial for the
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`above-identified grounds of unpatentability. See IPR2018-00084 Paper 14,
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`2, 37.
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`Prior to the 84 IPR, Kingston Technology Company, Inc. filed
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`petitions in IPR2017-00825 and IPR2017-01021 challenging the same
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`claims (55–58) of the ’135 patent although applying different references in
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`those challenges. We instituted trial in IPR2017-01021 (Case IPR2017-
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`01021, Papers 7, 20) and denied institution in IPR2017-00825 (Case
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`IPR2017-00825, Paper 8). After we instituted trial in the 84 IPR, Kingston
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`Technology Company, Inc. filed a petition in IPR2018-01002 and a motion
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`for joinder as a petitioner in the 84 IPR. We dismissed that Petition as
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`estopped under 35 U.S.C. § 315(e)(1) in view of the final written decision
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`issued in Case IPR2017-01021 (filed by Kingston Technology Company
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`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. 6,199,163 B1 (“Dumas,” Ex. 1005).
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`3
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`IPR2018-01068
`Patent 6,003,135
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`challenging the same claims based on different art). Case IPR2018-01002,
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`Paper 12, 10.
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`Petitioner here (Toshiba Corporation, Toshiba America Electronic
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`Components, Inc., and Apricorn) represents that this Petition is substantially
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`identical to WDC’s Petition in IPR2018-00084 and challenges the same
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`claims based on the same grounds. Mot. 1. We have considered the relevant
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`Petitions and we agree with Petitioner’s representation that this Petition is
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`substantially identical to the Petition in IPR2018-00084. Compare Pet., with
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`IPR2018-00084 Paper 1. Patent Owner did not file a Preliminary Response
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`to this Petition.
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`Accordingly, for essentially the same reasons stated in our Decision to
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`Institute in IPR2018-00084, we conclude Petitioner has established a
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`reasonable likelihood of prevailing with respect to at least one challenged
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`claim, and we institute trial in this proceeding for claims 55–58 on the same
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`grounds as in IPR2018-00084.
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`B. Motion for Joinder
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`Based on authority delegated to us by the Director, we have discretion
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`to join a petitioner for inter partes review to a previously instituted inter
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`partes review. 35 U.S.C. § 315(c). Section 315(c) provides, in relevant
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`part, that “[i]f the Director institutes an inter partes review, the Director, in
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`his or her discretion, may join as a party to that inter partes review any
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`person who properly files a petition under section 311.” Id. Furthermore,
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`subsection 315(b) explains that the one year time bar thereof “shall not apply
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`to a request for joinder under subsection (c).”
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`Petitioner here argues good cause exists to join Petitioner in the 84
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`IPR because: (1) the Petition is substantially identical to the petition in the
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`4
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`IPR2018-01068
`Patent 6,003,135
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`84 IPR “so that the Board can efficiently resolve the common grounds”
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`(Mot. 6), (2) the Petition presents no new grounds (id. at 7), (3) the 84 IPR is
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`in early stages of the trial and Petitioner will participate in an “understudy
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`role,” therefore, joining Petitioner will not impact the schedule of the 84 IPR
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`(id.), and (4) joining Petitioner will simplify discovery and briefing in the 84
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`IPR (id. at 7–9).
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`Patent Owner opposes the present Motion arguing:
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`On October 16, 2017, after having reviewed two
`preliminary responses by SPEX and two institution decisions by
`the PTAB, Western Digital filed a third petition in case number
`IPR2018-00084 (“84-IPR”) alleging that claims 55-58 of the
`’135 Patent were unpatentable over the Harari, Dumas, and
`PCMCIA System Architecture references. 84-IPR, Paper 1.
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`Opp. 2. Patent Owner further contends a “joint defense group,” presumably
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`including Toshiba, “has engaged in incremental petitioning which has
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`allowed it to impermissibly benefit from SPEX’s prior arguments and the
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`Board’s prior decisions” and, therefore, no efficiencies are gained by
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`allowing the requested joinder. Opp. 2–3.
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`We are persuaded that there is efficiency in joining Petitioner as
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`parties in the 84 IPR. We are not persuaded there is any prejudice to Patent
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`Owner by granting Petitioner’s motion for joinder. Patent Owner’s
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`arguments regarding incremental petitioning were essentially addressed in
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`our Decision on Institution in the 84 IPR. Paper 14, 14–18 (addressing
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`Patent Owner’s arguments concerning exercising our discretion based on the
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`General Plastic factors). We were not persuaded by Patent Owner’s
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`arguments in that Decision on Institution and we remain unpersuaded now.
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`Accordingly, we grant Petitioner’s Motion for Joinder with the 84
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`IPR, subject to the condition that:
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`5
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`IPR2018-01068
`Patent 6,003,135
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`Petitioner here (i.e., Toshiba Corporation, Toshiba
`America Electronic Components, Inc., and Apricorn) will be
`bound by all substantive and procedural
`filings and
`representations of current Petitioner in IPR2018-00084 (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.
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`In view of the foregoing, we determine that joinder based upon the
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`above-noted condition will have little or no impact on the timing, cost, or
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`presentation of the trial on the instituted grounds. Moreover, discovery and
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`briefing will be simplified if Petitioner is joined as a party to the 84 IPR.
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`III. ORDERS
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`After due consideration of the record before us, and for the foregoing
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`reasons, it is:
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted for claims of the ’135 Patent as follows: (1) claims 55–58
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`as obvious under 35 U.S.C. § 103(a) over Harari and Anderson, and
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`(2) claims 56 and 57 as obvious under 35 U.S.C. § 103(a) over Harari,
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`Anderson, and Dumas;
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
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`IPR2018-00084 is granted, and Toshiba Corporation, Toshiba America
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`Electronic Components, Inc., and Apricorn are joined as petitioners in
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`IPR2018-00084;
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`FURTHER ORDERED that the grounds on which an inter partes
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`review was instituted in Case IPR2018-00084 remain unchanged, and no
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`other grounds are instituted in the joined proceedings;
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`6
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`IPR2018-01068
`Patent 6,003,135
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`FURTHER ORDERED that Toshiba Corporation, Toshiba America
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`Electronic Components, Inc., and Apricorn will be bound by all substantive
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`and procedural filings and representations of current Petitioner in IPR2018-
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`00084 (i.e., Western Digital Corporation), without a separate opportunity to
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`be heard, whether orally or in writing, unless and until the proceeding is
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`terminated with respect to Western Digital Corporation;
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`FURTHER ORDERED that the schedule for this proceeding shall be
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`governed by the current schedule and any changes in the schedule for
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`IPR2018-00084;
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`FURTHER ORDERED that IPR2018-01068 is terminated under
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`37 C.F.R. § 42.72, and that all future filings are to be made only in IPR2018-
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`00084;
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`FURTHER ORDERED that the case caption in IPR2018-00084 for all
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`further submissions shall be changed to add Toshiba Corporation, Toshiba
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`America Electronic Components, Inc., and Apricorn as named Petitioners,
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`and to indicate by footnote the joinder of Toshiba Corporation, Toshiba
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`America Electronic Components, Inc., and Apricorn to that proceeding, as
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`indicated in the attached sample case caption; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2018-00084.
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`PETITIONER:
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`PATENT OWNER:
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`7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`WESTERN DIGITAL CORPORATION,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN
`Petitioner,
`
`v.
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`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
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`Case IPR2018-000844
`Patent 6,003,135
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`4 Toshiba Corporation, Toshiba America Electronic Components, Inc., and
`Apricorn, which filed a Petition in Case IPR2018-01068, have been joined
`as petitioners in this proceeding.
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