Dell Inc.v.Elec. & Telecomm'n Research Inst.

Patent Trial and Appeal Board

Mar 26, 2015

09753245 (P.T.A.B. Mar. 26, 2015)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Entered: March 26, 2015

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DELL INC., HEWLETT-PACKARD COMPANY, and NETAPP, INC.
Petitioner,

v.

ELECTRONICS AND TELECOMMUNICATIONS RESEARCH,
INSTITUTE,
Patent Owner.
____________

Case IPR2015-00549
Patent 6,978,346 B2

Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION
Denial of Institution of Inter Partes Review and
Denial of Motion for Joinder
37 C.F.R. § 42.108(b)
37 C.F.R. § 42.122(a) and (b)
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I. INTRODUCTION
On January 8, 2015, Dell, Inc., Hewlett-Packard Company, and
NetApp, Inc. (“collectively Petitioner”) filed a Petition (“Pet.”) for inter
partes review of U.S. Patent No. 6,978,346 B2 (Ex. 1001, “the ’346
patent”). Paper 1. Patent Owner waived a Preliminary Response and
concurrently represented it did not oppose joinder. Paper 8. Petitioner filed
a Motion for Joinder (“Mot.”) to join this proceeding with VMWare, Inc. v.
Electronics and Telecommunications Research Institute, Case IPR2014-
00901 (“’901 IPR”).1 Paper 5. We entered a Decision on Institution (“Dec.
Inst.,” Paper 14) in the ’901 IPR on December 11, 2014. ’901 IPR, Paper
14. This case and the ’901 IPR both involve the ’346 patent.
The Petition for inter partes review and Motion for Joinder are
denied.
II. ANALYSIS
A. Denial of Petition for Inter Partes Review
1. Background
The Petition asserts the asserted grounds are identical to those on
which we instituted review in the ’901 IPR. Pet. 1; Mot. 7. In the ’901 IPR
we instituted trial on the ground alleging that claims 1–9 were obvious under

1 International Business Machines Corporation v. Electronics and
Telecommunications Research Institute, Case IPR2014-00949 (“’949 IPR”)
was joined previously into the ’901 IPR (’949 IPR, Paper 25) and all further
filings in the joined proceeding are made in the ’901 IPR. Petitioner seeks
joinder with the resulting ’901 IPR. Mot. 2 n. 1.
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35 U.S.C. § 103 over Mylex2 and Hathorn.3 ’901 IPR, Dec. Inst. 22.
Hathorn and Mylex also were asserted in challenges against the ’346 patent
asserted in Dell, Inc. v. Electronics and Telecommunications Research
Institute, Case IPR2013-00635 (“’635 IPR”). Petitioner in this case and in
the ’635 IPR are the same.
As relevant here,4 the ’635 Petition challenged claims of the
’346 patent on the following grounds: (1) claims 1–3 and 8 as obvious
under 35 U.S.C. § 103(a) over Weygant and Mylex (’635 IPR Pet. 20–23);
(2) claims 4 and 9 as obvious under 35 U.S.C. § 103(a) over Weygant,
Mylex, and Serviceguard5 (’635 IPR Pet. 23–39); (3) claims 5–7 as obvious
under 35 U.S.C. § 103(a) over Weygant, Mylex, and ANSI6 (’635 IPR Pet.
39–45); (4) claims 1–3 and 5–8 as anticipated under 35 U.S.C. § 102(b) by
Hathorn (’635 IPR Pet. 45–60). On March 20, 2014, we instituted trial on
the ground that claims 1–3 and 5–8 were anticipated under 35 U.S.C.
§ 102(b) by Hathorn, denying all other grounds on the merits. ’635 IPR,
Dec. Inst. 23–24. On February 27, 2015, we entered a Final Written
Decision (“Final Dec.” Paper 39) finding that claims 1–3 and 5–8 of the
’346 patent had not been shown to be unpatentable by a preponderance of
the evidence. ’635 IPR, Final Dec. 24.

2 Storage Area Networks; Unclogging LANs and Improving Data
Accessibility, Mylex Corporation, published May 29, 1998 (“Mylex,” Exs.
1006 and 1009).
3 U.S. Patent No. 5,574,950, issued Nov. 12, 1996 (“Hathorn,” Ex. 1005).
4 One ground is omitted from the list as not including Mylex or Hathorn.
5 Managing MC/Serviceguard, Hewlett-Packard Company, Jan. 1998
(“ServiceGuard,” Ex. 1004).
6 Fibre Channel Arbitrated Loop (FC-AL-2), American Nat. Standards Inst.,
1999 (“ANSI,” Ex. 1008).
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2. Legal Analysis
a. Claims 1–3 and 5–8
Petitioner is estopped from requesting inter partes review in this case.
Under 35 U.S.C. § 315(e)(1), once a Petitioner has obtained a final written
decision, that Petitioner may not request or maintain subsequent proceedings
on a ground that it “could have raised” during the prior proceeding.
Specifically, section 315(e)(1) provides:
(e) Estoppel. –
(1) Proceedings before the office.— The petitioner in an inter
partes review of a claim in a patent under this chapter that
results in a final written decision under section 318(a), or the
real party in interest or privy of the petitioner, may not request
or maintain a proceeding before the Office with respect to that
claim on any ground that the petitioner raised or reasonably
could have raised during that inter partes review.

(Emphasis added).

The first requirement for estoppel is met because the Petitioner
here and in the ’635 IPR are the same. The entry of the Final Written
Decision in the ’635 IPR satisfies the second requirement. For the
reasons that follow, we determine Petitioner could have raised the
ground asserted in this case in the ’635 IPR.
What a Petitioner “could have raised” was described broadly in
the legislative history of the America Invents Act (“AIA”) to include
“prior art which a skilled searcher conducting a diligent search would
reasonably could have been expected to discover.” 157 Cong. Rec.
S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Grassley). Indeed,
the administrative estoppel codified in § 315(e)(1), as was pointed out,
would effectively preclude petitioners from bringing subsequent
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challenges to the patent in USPTO proceedings. See id. at S1376
(statement of Sen. Kyl) (“This [estoppel] effectively bars such a party
or his real parties in interest or privies from later using inter partes
review or ex parte reexamination against the same patent, since the
only issues that can be raised in an inter partes review or ex parte
reexamination are those that could have been raised in [an] earlier
post-grant or inter partes review.”). We need not investigate what any
search might have uncovered, for the record before us shows that the
prior art references in the instant Petition were asserted in the
’635 IPR.
More specifically, the prior art Petitioner has asserted in the
instant Petition, Mylex and Hathorn, was asserted in the ’635 IPR
against all the claims of the ’346 patent. Hathorn was asserted as the
basis of an anticipation ground under 35 U.S.C. §102. ’635 IPR Pet.
45–60. Mylex was asserted as one of a combination of references in
three other obviousness grounds. Id. at 23–45. Petitioner asserted
Mylex as disclosing a RAID controller limitation in the ’635 IPR (see,
e.g., ’635 Pet. 20–21), where, in the instant Petition, the reference is
asserted as disclosing a RAID (Pet. 21). On this record, the
differences in how the references have been asserted in these
proceedings have no weight on our determination of whether the
grounds raised in the instant Petition could have been raised in the
’635 IPR. Both Mylex and Hathorn were known to Petitioner as prior
art to the ’346 patent, and Mylex has been asserted as an obviousness
reference in this Petition and in the’635 IPR. It makes no difference
to us that Petitioner may have believed Hathorn to be an anticipatory
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reference in the ’635 IPR, and that such a belief may have changed
during the trial of the ’635 IPR, where we ultimately determined in
our Final Written Decision that Hathorn did not anticipate any claim
of the ’346 patent.
On this record, we determine that the combination of Mylex
and Hathorn to show obviousness of claims of the ’346 patent
constitutes a ground that Petitioner could have raised in the ’635 IPR.
Accordingly, Petitioner is estopped under 35 U.S.C. § 315(e)(1) from
asserting that ground now.
b. Claims 4 and 9
Notwithstanding the preceding, § 315(e)(1) operates as an
estoppel only as to “review of a claim in a patent under this chapter
that results in a final written decision.” 35 U.S.C. § 315(e)(1). The
Final Written Decision in the ’635 IPR resulted in a review of claims
1–3 and 5–8, but not of claims 4 and 9. ’635 IPR, Final Dec. 24. This
Petition challenges all of claims 1–9 as obvious over Mylex and
Hathorn. Pet. 4. Thus, inter partes review of claims 4 and 9 is not
precluded by the estoppel provisions of section 315(e)(1).
35 U.S.C. § 315(b) provides:
(b) Patent Owner’s Action. – An inter partes review may not be
instituted if the petition requesting the proceeding is filed more
than 1 year after the date on which the petitioner, real party in
interest, or privy of the petitioner is served with a complaint
alleging infringement of the patent. The time limitation set
forth in the preceding sentence shall not apply to a request for
joinder under subsection (c).

(Emphasis added).

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Absent joinder, the Petition here is barred under § 315(b) if it
was filed more than a year after suit is served. The Petition shows the
cases Petitioner lists as related, including those where each Petitioner
has been the subject to a claim for infringement of the ’346 patent.
Pet. 1–2. We have taken judicial notice that each of the parties, the
Petitioner here, was served with a complaint on December 3, 2012,
more than one year before the January 8, 2015, filing date accorded to
this case. Paper 6. As discussed below, we deny Petitioner’s Motion
for Joinder as to remaining claims 4 and 9. Absent joinder, claims 4
and 9 in this Petition are subject to § 315(b), and the Petition is barred.
B. Denial of Motion for Joinder
We exercise our discretion under 35 U.S.C. § 315(c) and decline to
join claims 4 and 9 of this case to the ’901 IPR. Section 315(c) provides:
(c) JOINDER.—If 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 that the Director, after receiving a
preliminary response under section 313 or the expiration of the
time for filing such a response, determines warrants the
institution of an inter partes review under section 314.

(Emphasis added).

First, we note that Petitioner has the burden of showing that joinder
should be granted, and nothing in the record shows us that joinder would be
appropriate here for less than all the asserted claims. Further, in declining to
join claims 4 and 9 to the ’901 IPR we note that, were we to grant joinder,
the case would proceed on different claims depending on the party. The
’901 IPR has already been subject to joinder (see footnote 1) and has two
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Petitioners. Adding a third Petitioner (or more), with grounds that are
limited to a small subset of the ongoing trial, will unnecessarily complicate
the ’901 IPR. In addition, while Patent Owner does not oppose joinder
(Paper 8), we cannot ignore the additional time, effort and expense that will
fall to Patent Owner. We are also cognizant that Patent Owner’s statement
of non-opposition does not address the present circumstances of our denial
of institution on claims 1–3 and 5–8. On the present record, we are not
inclined to join Petitioner to assert a ground partially, i.e., for two claims,
but not the others.
ORDER
Accordingly, it is
ORDERED that inter partes review of U.S. Patent No. 6,978,346 is
denied; and
FURTHER ORDERED that Petitioner’s motion for joinder is denied.

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PETITIONER:
David L. McCombs
david.mccombs.ipr@haynesboone.com

Thomas W. Kelton
Thomas.kelton.ipr@haynesboone.com

John Russell Emerson
Russ.emerson.ipr@haynesboone.com

PATENT OWNER:
Mathew C. Phillips
Matthew.phillips@renaissanceiplaw.com

Derek Meeker
Derek.meeker@renaissanceiplaw.com