Our Order (Paper 22) also clarified that our rules require that a Petitioner’s Reply be limited to addressing only issues raised in a Patent Owner Response.

Therefore, Patent Owner contends Petitioner had “a full and fair opportunity to analyze its disclosure for a structure equivalent to the interface control device 910,” and thus, has no basis “to obtain a ‘do-over’ on reply” when it specifically decided not to present that argument in its Petition.

Accordingly, we are not persuaded a denial of Petitioner’s Motion to file a Reply in the absence of a Patent Owner Response would deny Petitioner’s Due Process rights.

The Petition discussed a construction of the recited means for mediating but did not clearly adopt any particular construction: This means-plus-function term’s function is “mediating communication of data between the host computing device and the target means so that the communicated data must first pass through the security means.” Patent-Owner proposed that the corresponding structure is: (1) a field programmable gate array (FPGA); and (2) interface control device 910 (as shown in Figure 9B).

Petitioner cites Senator Kyl’s comments in the Congressional Record and Clearlamp, LLC v. LKQ Corp., 2016 WL 4734389, at *8 (N.D. Ill. Mar. 18, 2016) as supporting its contention that a new ground must necessarily rely on new Case IPR2018-00082 Patent 6,088,802 references or a new statutory basis.

The Joinder Motion seeks to join Petitioner as parties to Western Digital Corp. v. SPEX Technologies, Inc., Case IPR2018-00082 (“the 82 IPR”).

We instituted trial in Case IPR2018-01003 and granted the motion for joinder for Kingston Technology Company, Inc. to be joined as a party in the 82 IPR.

Patent 6,088,802 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 82 IPR because: (1) the Petition is substantially identical to the petition in the 82 IPR “so that the Board can efficiently resolve the common grounds” (Mot.

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.

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 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- 00082 (i.e., Western Digital Corporation and Kingston Technology Company, Inc.), 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 and Kingston Technology Company, Inc.; FURTHER ORDERED that the schedule for this proceeding shall be governed by the current schedule and any changes in the schedule for

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2018-01067 Patent No. 6,088,802 mediation, etc.) was used and the general result.

Nor has Patent Owner provided any basis to allege that Petitioners had any involvement with any of the other IPR petitions.

Patent Owner’s allegation that “Petitioners fail to identify a legitimate basis to join” the IPR is similarly incorrect.

In its Opposition, Patent Owner acknowledges that Petitioners’ IPR petition does not identify any new arguments or issues.

Patent No. 6,088,802 to disregard this policy.1 Because they are accused of infringing the same claims as Western Digital, Petitioners also explained that joinder is appropriate because it would allow the Board to efficiently resolve substantial questions of invalidity that are common to the Petitioners and Western Digital.

To the contrary, Petitioners would be substantially prejudiced by denial of the Motion, which would allow Patent Owner to evade the substantial questions of invalidity raised by WD’s IPR in the event that WD settles with the Patent Owner prior to resolution of this proceeding.

On October 16, 2017, after having reviewed two preliminary responses by SPEX and two institution denials by 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.

In compliance with post-SAS procedures, the Board instituted the 82-IPR while finding that Western Digital failed to establish a reasonable likelihood that claims 1-2, 6-7, 11-12, and 23-25 were unpatentable.

Second, Petitioners identify overall commonality (i.e., substantially identical) as their basis for joinder, conceding that the 1067-IPR involves redundant grounds on the same prior art and same claims.

Patent Owner respectfully requests the Board exercise its discretion to deny institution before the preliminary response is due on August 15, 2018.

Moreover, as explained in Section II above, the Board has already ruled that Western Digital failed to show a reasonable likelihood that claims 1-2, 6-7, 11-12, and 23-25 were unpatentable.

Petitioners Toshiba Corporation, Toshiba America Electronic Components, Inc., and Apricorn (“Joinder Petitioners”) respectfully request joinder1 pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) of the above-captioned petition for inter partes review (“Joinder Petition”)—filed contemporaneously with this Motion—with the pending inter partes review concerning the same claims of the same patent, captioned Western Digital Corporation v. SPEX Technologies, Inc., Case No. IPR2018-00082, which was recently instituted on April 25, 2018.

On October 16, 2017, Petitioner Western Digital Corporation (“WD” or “Original Petitioner”) requested inter partes review of claims 1-2, 6-7, 11-12, 23- 25, and 38-39 of U.S. Patent No. 6,088,802 (“the ‘802 patent”), citing four grounds of unpatentability.

3 Citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be allowed as of right – if an inter partes review is instituted on the basis of a petition, for example, a party that files an appropriate.

& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (The Board is “mindful of a policy preference for joining a party that does not present new issues that might complicate or delay an existing proceeding.”).

For the foregoing reasons, Joinder Petitioners respectfully request that their Petition for Inter Partes Review of the ‘802 patent be instituted, and that the proceeding be joined with Western Digital Corporation v. SPEX Technologies, Inc., Case No. IPR2018-00082.

The district court tentatively agreed with the proposed function, but limited the structures to: (1) a specific hardware component programmed or configured to perform a security operation disclosed in ’802 Patent at 18:1-47 or (2) a special purpose embedded processor, embodied on a single integrated chip and designated as MYK-82 (and referred to by the name Capstone), which includes an ARM6™ processor core and several special purpose cryptographic processing elements that have been developed by the Department of Defense (’802 Patent at 15:67-16:8).

The recited function is “enabling communication between the security means and the target means.” In the DCT Litigation, the parties agreed that the corresponding structure is conventional computer bus 615 based on the disclosure at 6:40-45.

“The functional module 42 may provide error detection and correction, encryption and decryption, compression and decompression of data, image, audio and voice, as well as other features useful in the mobile computing environment.” Id. at 8:60–64.

“Card services provides a software layer consisting of high-level functions that programmers can call to gain access to a card, determine its configuration requirements, and request the system resources it requires.” Id. at 28.

Wang improves Harari by teaching a specific system for moving data between a host computer and a peripheral communication module with a PCMCIA form factor.