Oracle Corporationv.Crossroads Systems, Inc.

Patent Trial and Appeal Board

Sep 9, 2015

09965335 (P.T.A.B. Sep. 9, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Entered: September 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ORACLE CORPORATION,
Petitioner,

v.

CROSSROADS SYSTEMS, INC.,
Patent Owner.
____________

Case IPR2015-01063
Patent 6,425,035 B2
____________

Before NEIL T. POWELL, KRISTINA M. KALAN, J. JOHN LEE, and
KEVIN W. CHERRY, Administrative Patent Judges.

CHERRY, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

Motion for Joinder
37 C.F.R. § 42.122(b)

IPR2015-01063
Patent 6,425,035 B2

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I. INTRODUCTION
Oracle Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”),
requesting institution of an inter partes review of claims 1–14 of
U.S. Patent No. 6,425,035 B2 (Ex. 1001, “the ’035 patent”), which is at
issue in instituted cases IPR2014-01197 (“the ’1197 proceeding”) and
IPR2014-01226. Petitioner concurrently filed a Motion for Joinder (Paper 3,
“Joinder Motion” or “Mot.”) requesting joinder with Case IPR2015-00777
(“the ’777 proceeding”). Crossroads Systems, Inc. (“Patent Owner”) timely
filed a Preliminary Response (Paper 9, “Prelim. Resp.”). We have
jurisdiction under 35 U.S.C. § 314.
For the reasons below, Petitioner’s Joinder Motion is moot, and the
Petition is denied.
A. Related Proceedings
The ’035 patent is the subject of multiple district court proceedings.
Pet. 1; Exs. 1009, 1026, 1034–1036; Paper 7, 2–3.
Petitions in IPR2015-00822 and IPR2015-00825 also request inter
partes review of the ’035 patent. See Paper 7, 3. Further, the ’035 patent
belongs to a family of patents that are the subject of multiple inter partes
review petitions. See id. at 3–5.
In the ’777 proceeding, petitioner NetApp, Inc. filed a petition that
presented challenges corresponding to those that we did not institute in the
’1197 proceeding. NetApp Inc. v. Crossroads Systems, Inc., Case IPR2015-
00777, slip op. at 4–5 (PTAB Sept. 3, 2015) (Paper 12) (“’777 Dec.”). We
declined to institute inter partes review of those challenges in the ’777
proceeding. ’777 Dec. 8.
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II. DISCUSSION
The Joinder Motion states that “Petitioner Oracle Corporation
respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §
42.122(b) of the above-captioned inter partes review with NetApp, Inc. v.
Crossroads Systems, Inc., IPR2015-00777.” Mot. 1. Because we declined
to institute inter partes review in the ’777 proceeding, the Joinder Motion is
moot.
As for the Petition, we deny it as barred under 35 U.S.C. § 315(b).
Section 315(b) normally bars institution of inter partes review when the
petition is filed more than one year after the petitioner is served with a
complaint alleging infringement of the patent. 35 U.S.C. § 315(b);
37 C.F.R. § 42.101(b). The one-year time bar, however, does not apply to a
request for joinder. 35 U.S.C. § 315(b) (final sentence); 37 C.F.R.
§ 42.122(b).
In a “Statement of Material Facts,” Petitioner states that it “was served
with a complaint asserting infringement of U.S. Patent No. 6,425,035 more
than one year before filing the petition.” Mot. 1. Without joinder of
Petitioner in this proceeding as a party to the ’777 proceeding, the Petition
would be barred under 35 U.S.C. § 315(b). Because the Joinder Motion is
moot, the present Petition is time barred, and, therefore, we deny the Petition
because it was not filed within the time limits imposed under 35 U.S.C.
§ 315(b).
III. CONCLUSION
The Joinder Motion is moot, and the Petition is denied under
35 U.S.C. § 315(b).
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IV. ORDER
Accordingly, it is
ORDERED that the Joinder Motion is denied as moot; and
FURTHER ORDERED that the Petition is denied as to claims 1–14 of
U.S. Patent No. 6,425,035 B2, and no trial is instituted.

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Patent 6,425,035 B2

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PETITIONER:
Greg H. Gardella
Scott A. McKeown
OBLON, McCLELLAND, MAIER & NEUSTADT, LLP
cpdocketgardella@oblon.com
cpdocketmckeown@oblon.com

PATENT OWNER:
Russell Wong
James Hall
BLANK ROME, LLP
CrossroadsIPR@blankrome.com

Steven R. Sprinkle
John L. Adair
SPRINKLE IP LAW GROUP
crossroadsipr@sprinklelaw.com