IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Patent No. RE43,563 E
`
`Filing Date: June 15, 2011
`Issue Date: August 7 , 2012
`Title: BELLY COVERING GARMENT
`
`MOTION FOR JOINDER TO RELATED
`
`INSTITUTED INTER PARTES REVIEW 137 C.F.R. § 42.122§b H
`
`DMC Exhibit 2113_001
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION
`
`Petitioner
`
`V.
`
`DESTINATION MATERNITY CORPORATION
`
`Patent Owner
`
`Patent No. RE43,563 E
`
`Filing Date: June 15, 2011
`Issue Date: August 7 , 2012
`Title: BELLY COVERING GARMENT
`
`MOTION FOR JOINDER TO RELATED
`
`INSTITUTED INTER PARTES REVIEW 137 C.F.R. § 42.122§b H
`
`DMC Exhibit 2113_001
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`STATEMENT OF RELIEF REQUESTED .................................................. ..l
`
`II.
`
`STATEMENT OF MATERIAL FACTS ...................................................... ..l
`
`III.
`
`LEGAL STANDARDS AND APPLICABLE RULES ................................ ..7
`
`IV. ARGUI\/IENT ................................................................................................. ..8
`
`A. Multiple Reasons Show that Joinder Is Appropriate .......................... ..8
`
`1.
`
`2.
`
`3.
`
`Considerations of Efficiency Support Joinder .......................... ..9
`
`Considerations ofFairness and Equity Support Joinder ......... .. 10
`
`Public Policy Considerations Support Joinder ....................... .. 12
`
`The New Grounds of Unpatentability in the Third ’5 63 Petition
`Result from Prior Art Not Known to Target When It Filed Its
`Previous Petitions .............................................................................. .. 14
`
`Joinder Would Minimally Impact the Current Trial Schedule
`and Any Such Impact Could Be Ameliorated Through
`Consolidation of Briefing and Discovery ......................................... ..l4
`
`B.
`
`C.
`
`V.
`
`CONCLUSION ............................................................................................ .. l5
`
`dn1s.us.53784623.03
`
`DMC Exhibit 2113_002
`
`
`
`LIST OF EXHIBITS
`
`Exhibit 1040:
`
`Target’s First Set of Requests for Production to DMC (served
`Mar. 12, 2013)
`
`Exhibit 1041 :
`
`Target’s First Set of Interrogatories to DMC (served Mar. 12,
`2013)
`
`Exhibit 1042:
`
`Pertinent Pages Excerpted from DMC’s Objections and Second
`Supplemental Responses to Target’s First Set of Interrogatories
`(served Oct. 14, 2013)
`
`Exhibit 1043:
`
`Letter from Counsel for DMC, Dated October 11, 2013,
`
`Memorializing DMC’s Supplemental Production ofDocuments
`Bearing Bates Nos. DMC0119316-DMC0119453
`
`Exhibit 1044:
`
`Exhibit 1045:
`
`Letter from Counsel for DMC, Dated September 27, 2013,
`Memorializing DMC’s Supplemental Production of Documents
`Bearing Bates Nos. DMC0064438—DMC0116976
`
`English Translation and Japanese-Language Version of a
`Preliminary Notice of Rejection, Dated June 26, 2012, in
`Japanese Patent Application No. 2010-510393, as Produced by
`DMC Bearing Bates Nos. DMC0116962-DMC0116968
`
`Exhibit 1046:
`
`Japanese Patent Application No. 2010-510393
`
`Exhibit 1047:
`
`International Publication No. WO 2008/ 1 505 95
`
`Exhibit 1048:
`
`E-mail from Counsel for DMC, Dated March 7, 2014,
`
`Confirming that the Document Produced by DMC Bearing
`Bates Nos. DMC0116962-DMC0116968 Is Not Confidential
`
`Exhibit 1049:
`
`Exhibit 1050:
`
`Declaration of Debbie Cairns in Support of Defendants’
`Uncontested Motion to Serve Defendants’ First Supplemental
`Invalidity Contentions, Dated October 14, 2013
`
`E-mail from Park IP Translation Delivery, Dated October 2,
`2013, at 11:46 PM, Conveying a Certified English Translation
`of Japanese Registered Utility Model No. 3086624 (“Asada”)
`
`dn1s.us.53784623.03
`
`-11-
`
`DMC Exhibit 2113_003
`
`
`
`LIST OF EXHIBITS §CONT.[
`
`Exhibit 1051:
`
`Japanese-Language Version and Certified English Translation
`of a Decision of Rejection Dated December 25, 2013, in
`Japanese Patent Application No. 2010—510393
`
`Exhibit 1052:
`
`Changes to Implement Inter Partes Review Proceedings, Post-Grant
`Review Proceedings, and Transitional Program for Covered Business
`Method Patents, 77 Fed. Reg. 48679, 48680 (Aug. 14, 2012)
`
`dn1s.us.53784623.03
`
`-iii-
`
`DMC Exhibit 2113_004
`
`
`
`I.
`
`STATEMENT OF RELIEF RE§ QUESTED
`
`Pursuant to 35 U.S.C. § 3l5(c) and 37 C.F.R. § 42.122(b), Petitioner Target
`
`Corporation (“Target” or “Petitioner”) seeks with this Motion to have its Petition
`
`for Inter Partes Review of claims 1-4, 6-8, 10-14, 16, 20, and 21 of U.S. Patent
`
`No. RE43,563 (“Third ’563 Petition”), filed contemporaneously herewith, joined
`
`with the instituted inter partes review, Target Corp. v. Destination Maternity
`
`Corp, IPR20l3-00531 (Ex. 1029) (“1PR20l3-00531”).
`
`Target is also the petitioner in a co-pending instituted inter partes review
`
`(“IPR”), Target Corp. v. Destination Maternity Corp, IPR20l3-00530 (Ex. 1027)
`
`(“IPR20l3—00530”). IPR20l3—00530, IPR20l3—0053l, and the Third ’563 Petition
`
`all seek IPR of claims of U.S. Patent No. RE43,563 (EX. 1001) (the “’563 Patent”).
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On October 4, 2012, Patent Owner, Destination Maternity
`
`Corporation (“DMC” or “Patent Owner”), filed a presently copending lawsuit
`
`against Target involving the ’563 Patent, Destination Maternity Corp. V. Target
`
`Corp, et al., Case No. 2:12-cv-5680-AB (ED. Pa.) (the “’563 Concurrent
`
`Litigation”). Target was served with DMC’s complaint that same day.
`
`2.
`
`On August 27, 2013, Target filed two petitions seeking IPR of claims
`
`of the ’563 Patent. IPR20l3-00530 requested review of claims 1-4 and 6-8, and
`
`IPR2013-00531 requested review of claims 1, 10-14, 16, 20, a11d 21. (Exs. 1026,
`
`d1ns.us.53784623.03
`
`-1-
`
`DMC Exhibit 2113_005
`
`
`
`1028.) These two sets of challenged claims collectively contain the entire set of
`
`claims in the ’5 63 Patent that DMC has asserted in the ’5 63 Concurrent Litigation.
`
`3.
`
`Concurrently with this Motion, Target is filing its Third ’563 Petition,
`
`challenging claims 1-4, 6-8, 10-14, 16, 20, and 21 of the ’563 Patent, but on new
`
`grounds—i.e., in View of Japanese Registered Utility Model No. 3086624 (“JP
`
`U3086624” or “Asada”) alone and in combination with other prior art references.
`
`4.
`
`5.
`
`Asada is prior art to the ’563 Patent under 35 U.S.C. § 102.
`
`Although Target requested in document requests and interrogatories
`
`served on DMC in the ’563 Concurrent Litigation in March 2013 that DMC
`
`produce all prior art to the ’563 Patent known to DMC, DMC did not produce
`
`Asada, or amend its interrogatory responses to identify Asada, until October 2013:
`
`a.
`
`Target requested on March 12, 2013 that DMC identify and
`
`produce all prior art to the ’563 Patent known to DMC.
`
`(EX. 1040, at 21
`
`(Request No. 41); Ex. 1041, at 18 (lnterrogatory No. 14).)
`
`b.
`
`DMC learned of Asada (JP U3086624) on or before June 26,
`
`2012, when DMC “[r]eceiVed” “JP-U-3086624” from the “Japan Patent
`
`Office.” (EX. 1042, at 34-35). Nonetheless, DMC did not produce a copy of
`
`Asada to Target until October 1 1, 2013, (Id, Ex. 1043), nearly six weeks
`
`d1ns.us.53784623.03
`
`DMC Exhibit 2113_006
`
`
`
`after Target filed IPR2013-00530 and IPR2013-00531 on August 27, 2013.1
`
`c.
`
`Similarly, DMC did not supplement its interrogatory responses
`
`to identify Asada—or “JP-U-3086624”—until October 14, 2013, (Ex. 1042,
`
`at 34-3 5), nearly seven weeks after Target filed1PR2013-00530 and
`
`IPR2013-00531 on August 27, 2013.
`
`6.
`
`On February 14, 2014, the Board instituted trial in IPR20l3-005 30 on
`
`claims 1-4 and 6-8 of the ’563 Patent—all of the claims Target challenged in
`
`IPR2013-00530. IPR20l3-00530, Paper 13 (Ex. 1027).
`
`7.
`
`On the same day, the Board instituted trial in IPR2013-00531 on
`
`claims 1, 10-14, 16, and 20 of the ’563 Patent—all of the challenged claims in
`
`IPR2013-00531 except for claim 21. IPR2013-00531, Paper 10 (EX. 1029).
`
`8.
`
`Claim 21 of the ’563 Patent requires that “the belly panel [of claim 1]
`
`defines a tubular structure that is shaped and formed as straight-sided cylinder.”
`
`(Id. at 10-11.) The Board found that the prior art submitted in IPR2013-00531
`
`likely does not sufficiently show the “straight-sided cylinder” element of claim 21
`
`1 DMC’s Second Supplemental Response to Target’s First Set of Interrogatories,
`
`served on October 14, 2013, reveals that DMC labeled JP U3086624 with Bates
`
`Nos. DMC01l9337-DMC01 19345.
`
`(Ex. 1042, at 34-35.) That Bates range
`
`falls within the larger Bates range of DMC0l 193 16-DMC0l 1945 3, which
`
`documents DMC produced to Target on October 11, 2013. (Ex. 1043.)
`
`dn1s.us.53784623.03
`
`-3-
`
`DMC Exhibit 2113_007
`
`
`
`because “the required shape of claim 21 refers to the belly panel’s residual shape,”
`
`as opposed to the shape imparted by a wearer’s body. (See id at 10-11, 15.)
`
`9.
`
`Asada discloses maternity pants having an “abdomen—covering
`
`portion that is expandable, contractible, and foldable using a stretch knit .
`
`.
`
`.
`
`[which] expands and contracts in response to a change in .
`
`.
`
`. size of [the wearer’s]
`
`abdomen from during a pregnancy to post-partum.” (Ex. 1035, at 2.) Asada’s
`
`figures 1 and 2 are reproduced below.
`
`In?
`
`'
`
`{M
`
`{an}
`
`in
`
`Eur!
`
`;iriri|lH1.|lll
`
`
`
`
`
`
`
`
`
`Fig. 1, (a) and (b)
`
`Fig. 2, (a), (b), and (c)
`
`(Ex. 1034, at 2, Ex. 1035, figs. 1, 2.)
`
`10. Asada’s element 2, identified in figure 1, above, “denotes an
`
`expandable and contractible, and foldable abdoinen-covering portion using a
`
`stretch knit,” (id. 1] [0009]), which “covers the entire abdomen at full term,” (id. 11
`
`[0015]). Figure 2, above, shows the “matemity pants shown in Fig. 1 worn from
`
`an early stage of a pregnancy until post-partum.” (Id at 2-3, fig. 2; see also id 1111
`
`dms.us.53784623.03
`
`DMC Exhibit 2113_008
`
`
`
`[0012]-[0014].)
`
`11.
`
`On Friday, September 27, 2013, DMC produced to Target in the ’563
`
`Concurrent Litigation 52,539 pages of documents labeled with Bates Nos.
`
`DMC0064438-DMC0116976. (Ex. 1044.) Included among these documents, at
`
`Bates Nos. DMC0116962-DMC0116968, was an Office Action issued by the
`
`Japan Patent Office on June 26, 2012 (the “Japanese Office Action”). (Ex. 1045.2)
`
`12.
`
`The Japanese Office Action rejected, as being anticipated or obvious,
`
`claims 1, 2, and 4-8 in Japanese Patent Application No. 2010-5 103 93 (the
`
`“Japanese Application”). (Exs. 1045, 1046.)
`
`13.
`
`The Japanese Application and the ’563 Patent are related members of
`
`the same patent family. Specifically, the Japanese Application claims priority to
`
`PCT Application No. PCT/US08/617 39 (International Publication No. WO
`
`2008/150595), (EX. 1046, at 1), which, in turn, claims priority to U.S. Pat. App.
`
`No. 11/756,242 (“the ’242 Application”),
`
`1047, at 1). The ’563 Patent also
`
`claims priority to the ’242 Application.
`
`(EX. 1001, at 1.)
`
`14.
`
`The Japanese Office Action issued on June 26, 2012. (Ex. 1045.)
`
`And although the ’563 Patent did not issue until six weeks later—August 7, 2012,
`
`(Ex. 1001, at 1)—DMC did not submit or otherwise reveal Asada to the PTO.
`
`15.
`
`Target first learned of the Japanese Office Action and, as a result, the
`
`2 DMC has agreed that Exhibit 1045 is not confidential. (See EX. 1048.)
`
`dms.us.53784623.03
`
`-5-
`
`DMC Exhibit 2113_009
`
`
`
`Japanese Application, on Wednesday, October 2, 2013, while reviewing DMC’s
`
`September 27, 2013 document production discussed in paragraph 11, above.
`
`(EX.
`
`1049 11 14, at 3.) On that same date, based on reviewing the Japanese Office
`
`Action, Target first learned of and obtained the Japanese-language version of
`
`Asada, (id), which served as the basis for several of the claim rejections made in
`
`the Japanese Office Action, (Ex. 1045, at DMC0116964).
`
`16. After learning of and obtaining the Japanese-language version of
`
`Asada on October 2, 2013, Target promptly sought a certified English translation
`
`but was unable to obtain one until 11:46 p.m. E.T. that night. (Ex. 1050.)
`
`17. As of the most recent Office Action issued by the Japan Patent Office
`
`on December 25, 2013, the claims of DMC’s Japanese Patent Application still
`
`stand rejected in view of Asada.
`
`(Ex. 1051.)
`
`18.
`
`Shortly after institution, the Board issued an identical Scheduling
`
`Order in lPR20l3-00530 (see Paper 14) and IPR20l3-00531 (see Paper 11). The
`
`Board also scheduled a March 13, 2014 conference call to discuss both cases.
`
`19.
`
`The present Motion and Target’s Third ’563 Petition are being filed
`
`just over six weeks before the Patent Owner’s first deadline, on April 28, 2014,
`
`under the Board’s Scheduling Order. (See id.)
`
`20. Apart from Asada and U.S. Pat. No. 8,185,970 to Summers, et al.
`
`(“Summers”) (Ex. 1037), Target relies on the same prior art in the Third ’563
`
`dn1s.us.53784623.03
`
`-6-
`
`DMC Exhibit 2113_010
`
`
`
`Petition as in 1PR2013-00531, less U.S. Pat. No. 6,276,175 to Browder
`
`(“Browder”) (EX. 1004).
`
`III. LEGAL STANDARDS AND APPLICABLE RULES
`
`The Board has discretion to join a properly filed IPR petition to a previously
`
`instituted IPR proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b), see also
`
`Dell Inc. v. Network—l Sec. Solutions, Inc, IPR20l3-00385, Paper 19, at 4-6; Sony
`
`Corp. V. Yissum Res. & Dev. Co. of the Hebrew Univ. ofJerusalem, IPR20l3-
`
`00326, Paper 15, at 3-4; Microsoft Corp. V. Proxyconn, Ina, IPR2013-00109,
`
`Paper 15, at 3-4. This request for joinder is timely, and the time periods set forth
`
`in 37 C.F.R. § 42.101(b) do not apply to Target’s Third ’563 Petition because it is
`
`accompanied by this request for joinder. 35 U.S.C. § 315(c), 37 C.F.R. §
`
`42.122(b). “The Board will determine whether to grant joinder on a case—by—case
`
`basis, taking into account the particular facts of each case, substantive and
`
`procedural issues, and other considerations.” Dell, IPR2013-00385, Paper 19, at 3.
`
`As the moving party, Target has the burden of proof in establishing
`
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`
`A motion for joinder should:
`
`(1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted
`
`in the petition; (3) explain what impact (if any) joinder would have on
`
`the trial schedule for the existing review; and (4) address specifically
`
`how briefing and discovery may be simplified.
`
`dn1s.us.53784623.03
`
`DMC Exhibit 2113_011
`
`
`
`Dell, IPR2013-00385, Paper 19, at 4. In the case of joinder, the Board may adjust
`
`the one-year time period for a final determination in an IPR. Id. at 3; 35 U.S.C. §
`
`3l6(a)(l 1); 37 C.F.R. §42.l00(c), Microsoft, lPR20l3-00109, Paper 15, at 4.
`
`IV. ARGUMENT
`
`A. Multiple Reasons Show that Joinder Is Appropriate
`
`Joinder is appropriate here for reasons including efficiency, fairness, equity,
`
`and public policy. Joining the Third ’5 63 Petition with lPR2013-00531 will allow
`
`for numerous efficiencies in these proceedings, especially in view of the Board’s
`
`identical scheduling orders in, and Target’s willingness to consolidate, IPR20l3-
`
`00530 and lPR2013—00531. Target’s Third ’563 Petition challenges claims based
`
`on Asada, which DMC (1) knew of prior to the ’563 Patent’s issuance but did not
`
`submit to the PTO, and (2) withheld from Target for many weeks after Target
`
`submitted its petitions in lPR2013-00530 and lPR201 3-005 31 and until after
`
`Target’s one—year deadline under 35 U.S.C. § 315(b). Moreover, the Supreme
`
`Court has made clear that there is a strong public policy in favor of rooting out
`
`invalid patents. See Medtronic, Inc. V. Mirowski Family Ventures, LLC, 134 S. Ct.
`
`843, 851-52 (2014), Lear, Inc. v. Adkins, 395 U.S. 653, 656, 670 (1969). As set
`
`forth in the Third ’563 Petition, Asada discloses the “straight-sided cylinder”
`
`element of claim 21 that the Board found lacking in lPR2013-00531, (see Paper
`
`10, at 10-11, 15), and numerous other claims of the ’563 Patent read on Asada.
`
`dnis.us.53784623.03
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`-3-
`
`DMC Exhibit 2113_012
`
`
`
`For these reasons, further discussed below, good cause exists for joinder.
`
`1.
`
`Considerations ofEfficiency Support Joiuder
`
`Several factors support that joinder will allow for efficiencies in these
`
`proceedings. First, all of the petitions in question involve the same two parties,
`
`Target and DMC, and the same patent, the ’563 Patent. Second, the Third ’563
`
`Petition challenges claims 1-4, 6-8, 10-14, I6, 20, and 21 ofthe ’563 Patent, which
`
`is the exact same claim set challenged, collectively, in IPR20l3-00530 and
`
`IPR20l3-00531. The Board is already familiar with the claimed subject matter and
`
`has already addressed the construction of the challenged claims in its decisions
`
`instituting trial in IPR20l3-00530 (see Paper 13, at 4-8) and IPR20l3-00531 (see
`
`Paper 10, at 4-1 1). Third, other than Asada and Summers (which is used only in
`
`combinations challenging dependent claims), the Third ’563 Petition relies on the
`
`same prior art, less Browder, as both IPR20l3-00530 and IPR20l3-00531. Thus,
`
`the Board is already familiar with all but two of the references cited in the Third
`
`’5 63 Petition. See, e.g., Ariosa Diagnostics v. Isis Innovation Ltd. , IPR20l3-
`
`00250, Paper 24, at 5 (permitting joinder in part because “[t]here is an overlap in
`
`the cited prior art”). Fourth, the Third ’563 Petition relies, in part, on the
`
`declaration of Frances Harder, the same expert who has provided testimony in
`
`support of Target’s arguments in both IPR20l3-00530 and IPR20l3-00531. Fifth,
`
`in view of the identical Scheduling Orders in IPR20l3-00530 and IPR20l3-005 31,
`
`d1ns.us.53784623.03
`
`DMC Exhibit 2113_013
`
`
`
`both cases are already on the same timetable and, to the extent the Board desires to
`
`formally consolidate those cases, see 37 C.F.R. § l22(a), Target will not object.
`
`Finally, any prejudice to DMC will be minimal—and certainly not undue—
`
`for the reasons above; because DMC has long known of Asada; and because Target
`
`has filed the present Motion, and its Third ’563 Petition, over six weeks before
`
`DMC’s response to IPR20l3-00531 is due. Indeed, by now DMC should be well
`
`familiar with Asada, since the Japan Patent Office has relied on Asada several
`
`times in rejecting claims of DMC’s Japanese patent application related to the ’5 63
`
`Patent.
`
`(See, e. g., Exs. 1045, 1046, 1051.) Thus, joinder is appropriate for all of
`
`these reasons and due to the efficiencies resulting from the substantial overlap
`
`between the Third ’563 Petition and the instituted proceedings.
`
`2.
`
`Considerations 0fFa1'r11ess and Equity Support Joinder
`
`As the Patent Owner, DMC was in the best position to disclose Asada to
`
`both the PTO, during prosecution of the ’5 63 Patent, and Target, prior to Target’s
`
`one-year deadline under 35 U.S.C. § 3l5(b). DMC, however, did neither. Thus,
`
`several factors support that joinder will prevent unfairness and inequity to both
`
`Target and the public at large.
`
`First, during the ’5 63 Concurrent Litigation, Target requested on March 12,
`
`2013 that DMC identify and produce all prior art to the ’5 63 Patent known to
`
`DMC. But although DMC apparently had been aware of Asada since at least June
`
`dn1s.us.53784623.03
`
`-10-
`
`DMC Exhibit 2113_014
`
`
`
`26, 2012, (Ex. 1042, at 34-35), DMC did not produce a copy of Asada to Target
`
`until October 11, 2013, (Id; EX. 1043; see supra note 1), and DMC did not
`
`supplement its interrogatory responses to identify Asada until October 14, 2013,
`
`(Ex. 1042, at 34-3 5)—nearly six weeks and seven weeks, respectively, after Target
`
`filed its IPR petitions on August 27 , 2013. DMC should not be permitted to
`
`diminish the effectiveness of the IPR process by withholding prior art that it is in
`
`the best position to disclose. See EX. 1052, Changes to Implement Inter Partes
`
`Review Proceedings, Post-Grant Review Proceedings, and Transitional Program
`
`for Covered Business Method Patents, 77 Fed. Reg. 48679, 48680 (Aug. 14, 2012)
`
`(stating that “[t]he purpose of the AIA and [37 C.F.R. Part 42] is,” in part, “to
`
`establish a more efficient and streamlined patent system that will improve patent
`
`quality”). This is especially true here, where the withheld art discloses maternity
`
`pants with a belly panel in its residual shape (ie, not on a wearer) that is shaped
`
`and formed as straight—sided cylinder—the aspect of claim 21 that the Board found
`
`missing from the art submitted in 1PR2013-00531 (see Paper 10, at 10-11, 15).
`
`Second, despite having a duty of candor to the PTO under 37 C.F.R. § 156,
`
`DMC did not submit Asada to the PTO during prosecution of the application that
`
`issued as the ’563 Patent. DMC learned of Asada when the Japanese Office Action
`
`issued on June 26, 2012, (Ex. 1042, at 34-35; EX. 1045, at DMC0116962), but the
`
`’563 Patent did not issue until August 7, 2012—six weeks later, (Ex. 1001, at 1).
`
`dn1s.us.53784623.03
`
`-11-
`
`DMC Exhibit 2113_015
`
`
`
`Thus, DMC could have submitted Asada to the PTO and sought to withdraw the
`
`’563 Patent from issuance. See 37 C.F.R. §§ 1.313(a),
`
`And even if DMC did
`
`not itself seek to withdraw the ’563 Patent from issuance, the PTO could have
`
`elected to do so had it been aware of Asada. See id. §§ 1.313(a), (b).
`
`Third, because Target’s one-year IPR deadline has passed, Target would be
`
`prejudiced absent joinder, because its Third ’563 Petition would be barred under §
`
`315 (b). As noted in prior orders of the Board, “[t]his is an important
`
`consideration.” Sony, IPR2013-00326, Paper 15, at 4; Microsoft, IPR2013-00109,
`
`Paper 15, at 4. In light of DMC’s withholding of Asada from both Target and the
`
`PTO, permitting joinder of the Third ’5 63 Petition will prevent unfairness to both
`
`Target and the public at large, both of whom have thus far been deprived of the
`
`benefit of PTO review of the ’563 Patent’s claims in view of Asada. See Old
`
`Reliable Wholesale, Inc. V. Cornell Corp, 635 F.3d 539, 548 (Fed. Cir. 2011)
`
`(“[T]he PTO has acknowledged expertise in evaluating prior art and assessing
`
`patent validity”).
`
`3.
`
`Public Policy Considerations Support Joimler
`
`Joinder is further supported by public policy considerations and the public
`
`interest in seeing invalid patents formally invalidated. The Board is charged with
`
`considering the “effect .
`
`.
`
`. on the economy” and “the integrity of the patent
`
`system,” among other considerations, when implementing and applying its rules,
`
`dn1s.us.53784623.03
`
`-12-
`
`DMC Exhibit 2113_016
`
`
`
`including those relating to joinder. See 35 U.S.C. § 316(b); see also 37 C.F.R. §
`
`1.5 6(a) (“A patent by its very nature is affected with a public interest. The public
`
`interest is best served .
`
`.
`
`. when, at the time an application is being examined, the
`
`Office is aware of and evaluates the teachings of all information material to
`
`patentability.”). There is an “important public interest in permitting full and free
`
`competition in the use of ideas which are in reality a part of the public domain”
`
`and a corresponding “strong federal policy favoring free competition in ideas
`
`which do not merit patent protection.” Lear, 395 U.S. at 656, 670. The Supreme
`
`Court recently confirmed these policies, stating that although the “public interest .
`
`.
`
`. favors the maintenance of a well—functioning patent system,
`
`the ‘public’ also
`
`77 CC
`
`has a ‘paramount interest in seeing that patent monopolies .
`
`.
`
`. are kept within their
`
`legitimate scope.”’ Medtronic, 134 S. Ct. at 851 (quoting Precision Instrument
`
`Mfg. Co. V. Auto. Maint. Mach. C0., 324 U.S. 806, 816 (1945)).
`
`These important public policy considerations further support joinder,
`
`because, as shown in the Third ’563 Petition, numerous claims of the ’563 Patent
`
`read on Asada—and most notably claim 21, for which the Board did not institute
`
`trial in IPR20l3-O05 31. Indeed, in view of § 315(b), these considerations should
`
`weigh especially heavy here, where DMC could have submitted Asada to the PTO
`
`long ago, before the ’5 63 Patent issued, but chose not to do so.
`
`dn1s.us.53784623.03
`
`-13-
`
`DMC Exhibit 2113_017
`
`
`
`B.
`
`The New Grounds of Unpatentability in the Third ’563 Petition
`Result from Prior Art Not Known to Target When It Filed Its
`Previous Petitions
`
`The Third ’563 Petition challenges only claims previously challenged in
`
`IPR20l3-O05 30 and IPR20l3-00531. For the reasons set forth above, however,
`
`the Third ’5 63 Petition challenges those claims, for the first time, in view of Asada
`
`alone and in combination with other prior art references. Thus, although the Third
`
`’563 Petition presents new grounds of unpatentability based on Asada, such new
`
`grounds are presented because Asada was not known to Target at the time it filed
`
`IPR20l3-00530 and IPR20l3-00531.
`
`C.
`
`Joinder Would Minimally Impact the Current Trial Schedule and
`Any Such Impact Could Be Ameliorated Through Consolidation
`of Briefing and Discovery
`
`To the extent that the Board decides to institute trial in the Third ’5 63
`
`Petition, Target will agree to place all three cases involving the ’5 63 Patent on the
`
`same post—institution schedule. Target does not object to formal consolidation of
`
`IPR20l3-00530 and IPR20l3-00531, and also does not object to consolidated
`
`briefing and discovery in all three cases. Further, Target is willing to forfeit a
`
`reasonable portion of its response period to the extent that is deemed necessary to
`
`provide DMC sufficient time to address the additional issues raised in the Third
`
`’5 63 Petition. Target will also accommodate any reasonable logistical or
`
`scheduling request of DMC in order to accommodate joinder of the proceedings.
`
`d1ns.us.53784623.03
`
`-14-
`
`DMC Exhibit 2113_018
`
`
`
`Thus, joining the Third ’563 Petition with IPR2013-00531 will not unduly delay
`
`resolution of those proceedings or the related IPR2013-00530 proceeding and will
`
`help “secure the just, speedy, and inexpensive resolution” of the proceedings. See
`
`37 C.F.R. §42.1(b); see also 35 U.S.C. § 316(b).
`
`V.
`
`CONCLUSION
`
`For all of the foregoing reasons, Target respectfully requests that the Board
`
`grant the present Motion and join Target’s Third ’563 Petition with IPR2013-
`
`00531 under Rule 42.122(b). To the extent the Board believes that Target’s
`
`challenge to claims other than claim 21 of the ’563 Patent (and claim 1, from
`
`which claim 21 depends)—for which the Board did not institute trial in IPR2013-
`
`00531—shou1d not be joined to IPR2013-00531 because doing so would present a
`
`new or duplicative issue or would unduly prejudice DMC, Target requests in the
`
`alternative that only Target’s grounds for challenging claim 21 (and underlying
`
`claim 1) set forth in Target’s Third ’563 Petition be joined with lPR2013-00531.
`
`Dated: March 14, 2014
`
`By:
`
`/s/ Norman J. Hedges
`Norman J. Hedges
`Reg. No. 44,151
`Customer No. 27268
`
`FAEGRE BAKER DANIELS LLP
`
`300 N. Meridian St., Ste. 2700
`
`Indianapolis, IN 46204-1750
`Telephone: 317-237-0300
`Facsimile:
`317-237-1000
`
`Norman.Hedges@FaegreBD.com
`
`dms.us.53784623.03
`
`-15-
`
`DMC Exhibit 2113_019
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.105, I hereby certify thatI caused a true and
`correct copy of the foregoing Motion for Joinder to Related Instituted Inter Partes
`Review to be served via Federal Express Priority Overnight service and via e-mail,
`as a PDF file attachment, on March 14, 2014 on the following:
`
`Paul A. Taufer
`
`Michael L. Burns
`
`DLA PIPER LLP (US)
`One Liberty Place
`1650 Market Street, Suite 4900
`Philadelphia, Pennsylvania 19103 -7 300
`Telephone: 215-656-3385
`Facsimile:
`215-606-3385
`
`Paul.Taufer(a;dlapiper.com
`Michael.Bums@d1apiper.com
`
`Dated: March 14, 2014
`
`By:
`
`/s/ Norman J. Hedges
`Norman J. Hedges
`Reg. No. 44,151
`Customer No. 27268
`
`FAEGRE BAKER DANIELS LLP
`
`300 N. Meridian St., Ste. 2700
`Indianapolis, IN 46204-1750
`Telephone: 317-237-0300
`Facsimile:
`317-237-1000
`
`Norman.Hedges@.FaegreBD.com
`
`DMC Exhibit 2113_02O
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