UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BUTAMAXTM ADVANCED BIOFUELS LLC
`Petitioner
`
`V.
`
`GEVO, INC.
`Patent Owner
`
`CASE IPR Unassigned
`Patent 8,273,565 B2
`
`BUTAMAXTM ADVANCED BIOFUELS LLC’S MOTION FOR
`JOINDER WITH RELATED INSTUTITED INTER PARTES
`REVIEW UNDER 37 C.F.R. §§ 42.22 AND 42.122(B)
`
`Mail Stop ’PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BUTAMAXTM ADVANCED BIOFUELS LLC
`Petitioner
`
`V.
`
`GEVO, INC.
`Patent Owner
`
`CASE IPR Unassigned
`Patent 8,273,565 B2
`
`BUTAMAXTM ADVANCED BIOFUELS LLC’S MOTION FOR
`JOINDER WITH RELATED INSTUTITED INTER PARTES
`REVIEW UNDER 37 C.F.R. §§ 42.22 AND 42.122(B)
`
`Mail Stop ’PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
`
`Petitioner (??Butamaxu) requests that the instant proceeding be joined with
`
`Case 1PR2013-00539 for at least the following reasons: (1) joinder is appropriate
`
`under the governing law, rules, and precedent; (2) this Motion for Joinder is timely
`
`filed; (3) the two proceedings concern the same parties, same patent, and
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`overlapping prior art; (4) Butamax relies on testimony from the same expert
`
`witness in both proceedings; (5) joinder would neither complicate the issues in nor
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`unduly delay the existing schedule of Case 1PR2013-00539; (6) briefing and
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`discovery can be simplified to minimize schedule impact; (7) joinder will not
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`prejudice patent owner, Gevo, Inc.; and (8) joinder will secure a just, speedy, and
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`inexpensive resolution in both proceedings.
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`RELIEF REQUESTED
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`Butamax respectfully requests joinder under 35 U.S.C. § 315(c) of the
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`instant inter partes review proceeding with related and instituted proceeding, Case
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`1PR2013-00539.
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`GOVERNING LAW, RULES, AND PRECEDENT
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`Title 35 U.S.C. § 3 15(c) states:
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`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
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`
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`BUTAMAX’S MOTION FOR JOINDER WITH CASE IPR2013-00539
`Patent No. 8,273,565 B2
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`Director, after receiving a preliminary response under section 313 or
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`the expiration of the time for filing such a response, determines
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`warrants the institution of an inter partes review under section 314.
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`Title 37 C.F.R. § 42.122(b) states:
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`Joinder may be requested by a patent owner or petitioner. Any request
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`for joinder must be filed, as a motion under §42.22, no later than one
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`month after the institution date of any inter partes review for which
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`joinder is requested. The time period set forth in §42.101(b) shall not
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`apply when the petition is accompanied by a request for joinder.
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`In accordance with the governing law and rules, the Board has identified
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`certain matters that must be addressed in motions for joinder of inter partes review
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`proceedings. Kyocera Corp. v. Softview, LLC, Case 1PR2013-00004, Paper 15 at 4
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`(April 24, 2013). Specifically, motions for joinder under 37 C.F.R. § 42.122(b)
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`must (1) provide the reasons why joinder is appropriate; (2) identify any new
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`grounds of unpatentability being raised in the subsequent petition; (3) explain what
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`impact (if any) there will be on the trial schedule for the existing review; and (4)
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`address how briefing and/or discovery may be simplified to minimize schedule
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`impact. Id.; see also, Samsung Elecs. Co. Ltd. v. UnW Sci. Batteries, LLC, Case
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`1PR2013-00236, Paper 22 at 3 (Oct. 17, 2013).
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`The Board has allowed joinder of inter partes review proceedings when a
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`
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`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
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`second petition concerned additional grounds of unpatentability raised by the same
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`petitioner and against the same patent from the first proceeding. For example, in
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`Microsoft Corp. v. Proxyconn, Inc., Case 1PR2013-00109, the Board granted the
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`petitioner’s motion for joinder on the bases that (i) the two proceedings involved
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`the same patent and same parties; (ii) there was an overlap in the cited prior art; (iii)
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`there was no discernable prejudice to either party; (iv) the petitioner had been
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`diligent and timely in filing the motion for joinder; and (v) joinder would not
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`unduly delay the schedule of the existing proceeding. Case 1PR2013-00109, Paper
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`15 at 4-5 (Feb. 25, 2013). The Board in Microsoft found that permitting joinder
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`would "help ’secure the just, speedy, and inexpensive resolution’ of these
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`proceedings." Id. at 3 (citing 37 C.F.R. § 42.1(b)); see also, LaRoselndus., LLCv.
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`Capriola Corp., Case 1PR2013-00121, Paper 11 (June 28, 2013); ABB, Inc. v.
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`ROY-G-BIV Corp., Case 1PR2013-00282, Paper 15 (Aug. 9, 2013) and Case
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`IPR2013-00286, Paper 14 (Aug. 9, 2013); Ariosa Diagnostics v. Isis Innovation,
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`Ltd., Case 1PR2013-00250, Paper 24 (Sept. 3, 2013); and Cardiocom, LLC v.
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`Robert Bosch Healthcare Sys., Inc., Case 1PR2013-00469, Paper 21 (Jan. 28,
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`2014).
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`-4-
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`
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`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
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`STATEMENT OF MATERIAL FACTS
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`1.
`
`On August 30, 2013, Butamax filed a Petition for Inter Partes Review
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`of U.S. Patent No. 8,273,565 B2 ("the ’565 patent"), seeking cancellation of claims
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`1-19. Case 1PR2013-00539, Paper 4 (Aug. 30, 2013) ("First Petition").
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`2.
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`Butamax’s First Petition raised five Grounds for Unpatentability of
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`claims 1-19 of the ’565 patent. Id.
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`3.
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`On March 4, 2014, the Board instituted trial on claims 1-9, and 10-19
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`of the ’565 patent. Id., Paper 9 at 29 (Mar. 4, 2014).
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`4.
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`Butamax is filing a Second Petition for Inter Partes Review of claims
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`5 and 10 of the ’565 patent concurrently with this Motion.
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`5.
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`Butamax’s Second Petition relies on prior art references already
`
`before the Board in Case 1PR2013-00539, such as Flint, Intl. Appi. Pubi. No. WO
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`2011/1033000 A2 and its U.S. Prov. Appi. No. 61/305,333 (Case 1PR2013-00539,
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`BMX1003 and BMX1004); Anthony, U.S. Pat. Appl. Publ. 2010/0081179 (Case
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`1PR2013-00539, BMX1005); Puig, S., et al., Cell 120:99-110 (2005) (Case
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`1PR2013-539, BMX 1006); and Ojeda, L., et al., Journal of Biological Chemistry
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`281(26): 17661-17669 (2006) (Case 1PR2013-00539, BMX1007)
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`-5-
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`
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`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
`
`6.
`
`Butamax’s Second Petition relies on the expert testimony of Dr.
`
`Dennis J. Thiele. Dr. Thiele also provided testimony in Case 1PR2013-00539.
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`(Case 1PR2013-00539, BMX 1002).
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`7.
`
`Butamax’s Second Petition introduces new prior art references only to
`
`address dependent claim limitations (Valadi (BMX1027); and Dundon,
`
`(BMX 1029)).
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`ARGUMENT
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`This Motion for Joinder addresses the four criteria identified by the Board in
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`Kyocera Corp. v. Soft -view, LLC, Case 1PR2013-0004, Paper 15. Each is presented
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`below.
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`A. Joinder is appropriate under the governing law, rules, and precedent
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`Joinder of these proceedings is appropriate under the governing law, rules,
`
`and precedent. First, the Director is permitted by law to join as a party to an
`
`inter
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`partes review any person who properly files a petition under 35 U.S.C. § 311,
`
`should the Director determine that the petition warrants the institution of trial.
`
`See
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`35 U.S.C. § 315(c). Therefore, upon institution of trial in the instant proceeding,
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`Butamax respectfully requests joinder with Case IPR20 13-00539.
`
`I Me
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`
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`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
`
`Second, this Motion for Joinder is timely filed under 37 C.F.R. § 42.122(b)-
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`i.e., within one month of the Board’s March 4, 2014 decision to institute trial in
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`Case 1PR2013-00539. See id., Paper 9; 37 C.F.R. § 42.122(b).
`
`Third, joinder of these proceedings is appropriate according to the Board’s
`
`rationale applied in previous cases. Discussed supra, the Board has granted
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`numerous requests for joinder of inter partes review proceedings under
`
`circumstances similar to the instant proceeding. For example, in Ariosa
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`Diagnostics v. Isis Innovation, Ltd., the Board granted the petitioner’s motion for
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`joinder (to which the patent owner was opposed), finding that:
`
`Petitioner’s motion was filed concurrently with the second Petition
`
`and is, therefore, timely under 37 C.F.R. § 42.122(b). Moreover, [the
`
`existing trial] and this proceeding involve the same parties and the
`
`same patent. This proceeding challenges claims that are dependent on
`
`claims challenged in [the existing trial]. This proceeding also involves
`
`much of the same prior art that was relied upon in [the existing trial].
`
`The only additional prior art cited in the instant proceeding was added
`
`to address the limitations of the dependent claims. In addition, the
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`Declarations relied upon by [the petitioner] in the instant proceedings
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`were made by Declarants.. .who also submitted Declarations that were
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`relied upon by [the petitioner] in [the existing trial].
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`-7-
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`
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`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
`
`Case 1PR2013-00250, Paper 24 at 2-3 (internal citations omitted);
`
`see also, Case
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`1PR2013-00109, Paper 15; Case 1PR2013-00282, Paper 15; Case 1PR2013-00286,
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`Paper 14; Case 1PR2013-00121, Paper 11; Case 1PR2013-00469, Paper 21.
`
`Here, just as in Ariosa Diagnostics, the Second Petition is timely filed; the
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`two proceedings involve the same parties and same patent; the Second Petition
`
`challenges claims that are dependent from claims at issue in the existing trial; the
`
`Second Petition relies on much of the same prior art as the existing trial; and the
`
`Second Petition relies on testimony from the same expert witness who submitted
`
`testimony in the existing trial. Thus, in accordance with the Board’s previously
`
`applied rationale, joinder of these proceedings is appropriate and will "secure the
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`just, speedy, and inexpensive resolution in every proceeding." 37 C.F.R. § 42.1(b).
`
`B. The two proceedings involve similar issues and overlapping prior art
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`Case 1PR2013-00539 and the instant proceeding involve similar substantive
`
`issues and overlapping prior art. Butamax’s Second Petition concerns the same
`
`patent and involves the same parties - Butamax and Gevo - as Case
`
`IPR2013-00539. Butamax’s Second Petition obviates purported deficiencies the
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`Board noted with the First Petition by raising additional grounds for
`
`unpatentability and relying on the same key prior art references at issue in Case
`
`
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`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
`
`1PR2013-00539 (i.e., Flint (BMX1003), Anthony (BMX1005), Puig (BMX1006),
`
`and Ojeda (BMX1007)). Butamax’s Second Petition introduces new prior art
`
`references only to address dependent claim limitations in claim 10 (Valadi
`
`(BMX 1027); and Dundon, (BMX 1029)).
`
`Moreover, the challenged claims in the Second Petition were previously
`
`before the Board in Case 1PR2013-00539. And Butamax’s Second Petition relies
`
`on the expert testimony of Dr. Dennis J. Thiele - the same expert who provided a
`
`Declaration in Case IPR2013-00539 (Case 1PR2013-00539, BMX1002). This
`
`substantial overlap in substantive matters between the instant proceeding and Case
`
`IPR20 13-00539 "facilitates scheduling of the joined actions and minimizes delay."
`
`ABB, Inc. v. ROY-G-BIV Corp., Case 1PR2013-00282, Paper 15 at 3.
`
`C. Joinder will not unduly delay the schedule of Case 1PR2013-00539
`
`Joinder of the two proceedings will not unduly delay the schedule of Case
`
`1PR2013-00539. The substantive issues in Case 1PR2013-00539 would not be
`
`unduly complicated by joining the instant proceeding because of the substantial
`
`overlap in substantive matters -
`
`i.e., same parties, same patent, overlapping prior
`
`art, same expert witness, and overlapping claimed subject matter.
`
`
`
`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
`
`At most, joinder of the two proceedings would require only minor
`
`adjustments to the schedule and should not unduly delay the final hearing or final
`
`decision in Case 1PR2013-00539. Title 35 U.S.C. § 3 16(a)(1 1) allows the Director
`
`to "adjust the time periods.. .in the case ofjoinder." See also, 37 C.F.R. § 42.100(c).
`
`Accordingly, the Board has granted extensions in other trial schedules to
`
`accommodate joinder. See Case 1PR2013-00250, Paper 24 at 5 ("[W]hile some
`
`adjustments to the schedule have been necessary, there is not undue delay.");
`
`see
`
`also, Case IPR2013-00109, Paper 15 at 4-5. Petitioner Butamax is willing to make
`
`appropriate revisions to the schedule to maximize efficiency of the proceedings.
`
`D. Briefing and discovery can be simplified to minimize schedule impact
`
`Briefing and discovery in the instant proceeding can be simplified to
`
`minimize any impact on the schedule of Case 1PR2013-00539 in several ways.
`
`First, should it wish, Gevo should be able to expeditiously prepare a Patent Owner
`
`Preliminary Response in the instant proceeding because Gevo has already
`
`contemplated similar challenges in Case 1PR2013-00539.
`
`Second, there is a substantial overlap in claimed subject matter between the
`
`two proceedings. The claims at issue in the instant proceeding (claim 5 and claim
`
`10) depend from claims at issue in Case 1PR2013-00539 (claims 1, 2, and 4). This
`
`- 10-
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`
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`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
`
`overlap simplifies briefing and discovery because there is no substantially new
`
`claimed subject matter to be considered.
`
`Third, Butamax relies on testimony from the same expert witness in both
`
`proceedings (Dr. Thiele). Discovery can be greatly simplified by arranging for a
`
`single deposition of Dr. Thiele.
`
`E. Gevo is not prejudiced by joinder
`
`Gevo is not prejudiced by joinder of these two proceedings. Discussed
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`supra, the substantial overlap in claimed subject matter, prior art references, and
`
`expert witness testimony allows Gevo to efficiently prepare briefs and engage in
`
`discovery without significant burden, expense, or delay. Further, any adjustments
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`to the trial schedule in Case 1PR2013-00539 resulting from joinder should be
`
`minor. Any harm to Gevo is outweighed by the public interest in obtaining a
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`speedy and efficient resolution of all the patentability issues of the
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`’565 patent in a
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`single proceeding.
`
`CONCLUSION
`
`For the foregoing reasons, Butamax respectfully requests that the instant
`
`proceeding be joined with Case 1PR2013-00539. Joinder will ensure ajust, speedy,
`
`and inexpensive resolution in both proceedings.
`
`-11-
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`
`
`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this filing to Deposit Account 19-0036 (Customer ID No. 45324).
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`
`Deborah. Sterling Ph.D.
`Lead Attorney for Petitioner Butamax
`Registration No. 62,732
`
`Date: (cid:9)
`
`,
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`18235801
`
`- 12 -
`
`
`
`BUTAMAX’S MOTION FOR JOINDER WITH CASE 1PR2013-00539
`Patent No. 8,273,565 B2
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned "Butamax’s
`
`Motion for Joinder with Related Instituted Inter Partes Review Under 37 C.F.R.
`
`§ss 42.22 and 42.122(b)" was served in its entirety on April 4, 2014, upon the
`
`following parties via FEDEX fi :
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave, NW
`Suite 700
`Washington, DC 20004
`Patent owner’s correspondence
`address of record for
`US. Patent No. 8,273, 565
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`
`A. Sterling Ph.D.
`Debo (cid:9)
`Lead Attorney for Petitioner Butamax
`Registration No. 62,732
`
`Date: (cid:9)
`
`LtQQIL
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`18235801
`
`- 13 -
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