throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
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`Paper No. 13
`Entered: November 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`
`
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`
`

`

`IPR2018-01068
`Patent 6,003,135
`
`
`I.
`
`INTRODUCTION
`
`Toshiba Corporation, Toshiba America Electronic Components, Inc.,
`
`and Apricorn (collectively “Toshiba” or “Petitioner”), filed a Petition (Paper
`
`5, “Pet.”) for inter partes review of claims 55–58 of U.S. Patent No.
`
`6,003,135 (“the ’135 Patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319.
`
`A few days after filing the Petition, Petitioner filed a Motion for Joinder.
`
`Paper 6 (“Joinder Motion” or “Mot.”).
`
`The Joinder Motion seeks to join Petitioner as parties to Western
`
`Digital Corp. v. SPEX Technologies, Inc., Case IPR2018-00084 (“the 84
`
`IPR”). Mot. 1. The Joinder Motion indicates Western Digital Corp.
`
`(“WDC”), Petitioner in the 84 IPR, does not oppose Toshiba’s request to
`
`join the 84 IPR. Mot. 3. SPEX Technologies, Inc. (“SPEX” or “Patent
`
`Owner”) filed an Opposition to the Motion. Paper 9 (“Opp.” or
`
`“Opposition”). Petitioner filed a Reply to Patent Owner’s Opposition.
`
`Paper 11 (“Reply”).
`
`As explained further below, we institute trial in this inter partes
`
`review on the same grounds as instituted in IPR2018-00084, and we grant
`
`Petitioner’s Motion for Joinder.
`
`
`
`
`
`
`
`2
`
`

`

`IPR2018-01068
`Patent 6,003,135
`
`
`II. DISCUSSION
`A.
`Institution of Trial
`
`In the 84 IPR, WDC challenged claims 55–58 of the ’135 Patent on
`
`the following grounds:
`
`References
`
`Basis
`
`Claims challenged
`
`Harari1 and Anderson2
`Harari, Anderson, and Dumas3
`
`§ 103
`§ 103
`
`55–58
`56 and 57
`
`IPR2018-00084 Paper 1, 2–3. After considering the Petition and the Patent
`
`Owner’s Preliminary Response in the 84 IPR, we instituted trial for the
`
`above-identified grounds of unpatentability. See IPR2018-00084 Paper 14,
`
`2, 37.
`
`Prior to the 84 IPR, Kingston Technology Company, Inc. filed
`
`petitions in IPR2017-00825 and IPR2017-01021 challenging the same
`
`claims (55–58) of the ’135 patent although applying different references in
`
`those challenges. We instituted trial in IPR2017-01021 (Case IPR2017-
`
`01021, Papers 7, 20) and denied institution in IPR2017-00825 (Case
`
`IPR2017-00825, Paper 8). After we instituted trial in the 84 IPR, Kingston
`
`Technology Company, Inc. filed a petition in IPR2018-01002 and a motion
`
`for joinder as a petitioner in the 84 IPR. We dismissed that Petition as
`
`estopped under 35 U.S.C. § 315(e)(1) in view of the final written decision
`
`issued in Case IPR2017-01021 (filed by Kingston Technology Company
`
`
`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).
`
`3
`
`

`

`IPR2018-01068
`Patent 6,003,135
`
`challenging the same claims based on different art). Case IPR2018-01002,
`
`Paper 12, 10.
`
`Petitioner here (Toshiba Corporation, Toshiba America Electronic
`
`Components, Inc., and Apricorn) represents that this Petition is substantially
`
`identical to WDC’s Petition in IPR2018-00084 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
`
`substantially identical to the Petition in IPR2018-00084. Compare Pet., with
`
`IPR2018-00084 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 IPR2018-00084, 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 55–58 on the same
`
`grounds as in IPR2018-00084.
`
`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). Section 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).”
`
`Petitioner here argues good cause exists to join Petitioner in the 84
`
`IPR because: (1) the Petition is substantially identical to the petition in the
`
`4
`
`

`

`IPR2018-01068
`Patent 6,003,135
`
`84 IPR “so that the Board can efficiently resolve the common grounds”
`
`(Mot. 6), (2) the Petition presents no new grounds (id. at 7), (3) the 84 IPR is
`
`in early stages of the trial and Petitioner will participate in an “understudy
`
`role,” therefore, joining Petitioner will not impact the schedule of the 84 IPR
`
`(id.), and (4) joining Petitioner will simplify discovery and briefing in the 84
`
`IPR (id. at 7–9).
`
`Patent Owner opposes the present Motion arguing:
`
`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.
`
`Opp. 2. Patent Owner further contends a “joint defense group,” presumably
`
`including Toshiba, “has engaged in incremental petitioning which has
`
`allowed it to impermissibly benefit from SPEX’s prior arguments and the
`
`Board’s prior decisions” and, therefore, no efficiencies are gained by
`
`allowing the requested joinder. Opp. 2–3.
`
`We are persuaded that there is efficiency in joining Petitioner as
`
`parties in the 84 IPR. We are not persuaded there is any prejudice to Patent
`
`Owner by granting Petitioner’s motion for joinder. Patent Owner’s
`
`arguments regarding incremental petitioning were essentially addressed in
`
`our Decision on Institution in the 84 IPR. Paper 14, 14–18 (addressing
`
`Patent Owner’s arguments concerning exercising our discretion based on the
`
`General Plastic factors). We were not persuaded by Patent Owner’s
`
`arguments in that Decision on Institution and we remain unpersuaded now.
`
`Accordingly, we grant Petitioner’s Motion for Joinder with the 84
`
`IPR, subject to the condition that:
`
`5
`
`

`

`IPR2018-01068
`Patent 6,003,135
`
`
`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.
`
`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 Petitioner is joined as a party to the 84 IPR.
`
`
`
`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 ’135 Patent as follows: (1) claims 55–58
`
`as obvious under 35 U.S.C. § 103(a) over Harari and Anderson, and
`
`(2) claims 56 and 57 as obvious under 35 U.S.C. § 103(a) over Harari,
`
`Anderson, and Dumas;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2018-00084 is granted, and Toshiba Corporation, Toshiba America
`
`Electronic Components, Inc., and Apricorn are joined as petitioners in
`
`IPR2018-00084;
`
`FURTHER ORDERED that the grounds on which an inter partes
`
`review was instituted in Case IPR2018-00084 remain unchanged, and no
`
`other grounds are instituted in the joined proceedings;
`
`6
`
`

`

`IPR2018-01068
`Patent 6,003,135
`
`
`FURTHER ORDERED that 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;
`
`FURTHER ORDERED that the schedule for this proceeding shall be
`
`governed by the current schedule and any changes in the schedule for
`
`IPR2018-00084;
`
`FURTHER ORDERED that IPR2018-01068 is terminated under
`
`37 C.F.R. § 42.72, and that all future filings are to be made only in IPR2018-
`
`00084;
`
`FURTHER ORDERED that the case caption in IPR2018-00084 for all
`
`further submissions shall be changed to add Toshiba Corporation, Toshiba
`
`America Electronic Components, Inc., and Apricorn as named Petitioners,
`
`and to indicate by footnote the joinder of Toshiba Corporation, Toshiba
`
`America Electronic Components, Inc., and Apricorn to that proceeding, as
`
`indicated in the attached sample case caption; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the record of IPR2018-00084.
`
`
`
`PETITIONER:
`
`
`
`
`PATENT OWNER:
`
`
`
`7
`
`

`

`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-000844
`Patent 6,003,135
`
`
`
`
`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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