Paper 11
`Filed: August 29, 2014
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
`
`v.
`
`UUSI, LLC
`Patent Owner.
`
`—————
`
`Case IPR2014-00648
`Patent 8,217,612
`
`—————
`
`PETITIONER’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Attorney Docket: 130163.231151
`
`
`
`
`Filed: August 29, 2014
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
`
`v.
`
`UUSI, LLC
`Patent Owner.
`
`—————
`
`Case IPR2014-00648
`Patent 8,217,612
`
`—————
`
`PETITIONER’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Attorney Docket: 130163.231151
`
`
`
`
`
`Case IPR2014-00648
`U.S. Patent 8,217,612
`
`Atty. Docket: 130163.231151
`
`Table of Contents
`
`I.
`II.
`III.
`
`Page
`Introduction and Statement of Requested Relief ............................................. 1
`Statement of Material Facts ............................................................................. 2
`Statement of Reasons for Requested Relief .................................................... 4
`A.
`Legal Standard ....................................................................................... 4
`B.
`Argument ............................................................................................... 5
`1.
`Partial Consolidation is Appropriate ........................................... 5
`2. WRSI’s Joinder Request Does Not Raise Any New
`Grounds of Unpatentability ......................................................... 7
`Joinder Would Have No Impact or Minimal Impact on
`the Trial Schedule for the Existing Review ................................ 7
`Joinder Would Simplify Briefing and Discovery ....................... 8
`4.
`IV. Conclusion ..................................................................................................... 10
`
`
`3.
`
`i
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`I.
`INTRODUCTION AND STATEMENT OF REQUESTED RELIEF
`
`Petitioner Webasto Roof Systems, Inc. (“WRSI”) hereby requests joinder in
`
`Brose North America, Inc. and Brose Fahrzeugteile GmbH & Co. Kg, Hallstadt v.
`
`UUSI, LLC, Case IPR2014-00416 (“the 416 IPR”). See 35 U.S.C. § 315(c); 37
`
`C.F.R. §§ 42.22 and 42.122(b). Both WRSI’s IPR2014-00648 (“the 648 IPR”) and
`
`Brose North America, Inc. and Brose Fahrzeugteile GmbH & Co. KG, Hallstadt’s
`
`(collectively, “Brose’s”) 416 IPR involve the same patent: US 8,217,612 (“the
`
`’612 patent”). WRSI’s petition in the present 648 IPR involves some overlap in
`
`invalidity positions and prior art with Brose’s 416 IPR, which was instituted on
`
`August 1, 2014.
`
`Brose’s 416 IPR was instituted against claims 1, 2, and 5-8 on multiple
`
`grounds involving Itoh (US 4,870,333), Kinzl (US 4,468,596), or both, including
`
`obviousness based on Itoh and Kinzl. See IPR2014-00416, Paper 12 at 6, 25-26.
`
`WRSI’s 648 IPR petition similarly asserts obviousness of claims 1, 2, and 5-8
`
`based on Itoh and Kinzl. See IPR2014-00648, Paper 4 at 16-31. The remaining
`
`grounds in WRSI’s petition either do not involve Itoh or Kinzl or involve them in
`
`combination with other primary references: anticipation of claims 6-8 based on
`
`Bernard (GB 2026723); obviousness of claims 1, 2, and 5-8 based on Lamm (DE
`
`4000730A1), Itoh and Bernard; and obviousness of claims 1, 2, and 5-8 based on
`
`Duhame (US 5,218,282) and Kinzl. See id. at 8-16, 31-60.
`
`1
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`WRSI requests that its assertion of obviousness of claims 1, 2, and 5-8 based
`
`on Itoh and Kinzl be consolidated with Brose’s 416 IPR, which has already been
`
`instituted on the same grounds against the same claims. See 35 U.S.C. § 315(c)-
`
`(d); 37 C.F.R. § 42.122. This consolidation would permit the obviousness grounds
`
`based on Itoh and Kinzl to be addressed in one proceeding.
`
`Although WRSI would not oppose consolidation of the remaining grounds
`
`of its 648 IPR petition with Brose’s 416 IPR, WRSI believes that this would not
`
`provide as much efficiency because the other grounds involve additional primary
`
`references. WRSI is also concerned that full consolidation would result in an
`
`excessively large proceeding and lead to scheduling difficulties. WRSI therefore
`
`respectfully proposes that the Patent Trial and Appeal Board (“Board”) find that it
`
`would not be reasonable to permit those other grounds to be raised in Brose’s 416
`
`IPR, and instead address those grounds in WRSI’s 648 IPR petition independently.
`
`WRSI has consulted Brose and Patent Owner. Brose and Patent Owner may
`
`take a position after reviewing the motion.
`
`II.
`
`1.
`
`STATEMENT OF MATERIAL FACTS
`
`UUSI filed suit against Brose North America alleging infringement of the
`
`’612 patent and served the complaint on February 7, 2013. See IPR2014-00416,
`
`Paper 4 at 1.
`
`2
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`2.
`A little over two months later, UUSI filed suit against WRSI alleging
`
`infringement of the ’612 patent and served the complaint on April 16, 2013. See
`
`UUSI, LLC v. Webasto Roof Sys., Inc., No. 2:13-cv-11704 (E.D. Mich.).
`
`3.
`
`On February 7, 2014, Brose filed its original 416 IPR petition. See
`
`IPR2014-00416, Paper 1.
`
`4.
`
`On April 16, 2014, WRSI filed its petition in the present 648 IPR. See
`
`IPR2014-00648, Paper 2. A chart of the invalidity grounds set forth in WRSI’s
`
`648 IPR petition is provided below.
`
`Claims
`Grounds
`
`6-8
`A Bernard (anticipation)
`1, 2, 5-8
`B Itoh and Kinzl
`C Lamm, Itoh, and Bernard 1, 2, 5-8
`D Duhame and Kinzl
`1, 2, 5-8
`
`See id., Paper 4 at 8-60.
`
`5.
`
`On July 24, 2014, Patent Owner filed its preliminary response to WRSI’s
`
`648 IPR petition. See id., Paper 9.
`
`6.
`
`On August 1, 2014, the Board instituted Brose’s 416 IPR. A chart of the
`
`grounds instituted by the Board is provided below.
`
`
`A
`B
`C
`
`Grounds
`Itoh (anticipation)
`Itoh (obviousness)
`Itoh and Kinzl
`
`Claims
`1, 2, and 6-8
`1, 2, and 5-8
`1, 2, and 5-8
`
`3
`
`
`
`Case IPR2014-00648
`U.S. Patent 8,217,612
`
`Atty. Docket: 130163.231151
`
`Itoh and Zuckerman
`D
`Itoh, Kinzl, and Zuckerman
`E
`F Kinzl (anticipation)
`G Kinzl (obviousness)
`H Kinzl and Itoh
`
`1, 2, and 5
`1, 2, and 5
`6-8
`6-8
`6-8
`
`See IPR2014-00416, Paper 12 at 25-26.
`
`7.
`
`Both WRSI’s 648 IPR petition and Brose’s instituted 416 IPR raise
`
`obviousness of claims 1, 2 and 5-8 based on Itoh and Kinzl. See IPR2014-00416,
`
`Paper 12 at 25-26; IPR2014-00648, Paper 4 at 16-31.
`
`8.
`
`The remaining grounds in WRSI’s petition either do not involve Itoh or
`
`Kinzl or involve them in combination with other primary references. See
`
`IPR2014-00648, Paper 4, 8-16, 31-60.
`
`9.
`
`This motion is timely because it is submitted within one month of the
`
`August 1, 2014 institution date of the Brose’s 416 IPR. See 37 C.F.R. § 42.122(b).
`
`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`
`A. Legal Standard
`35 U.S.C. § 315(c) authorizes joinder of a petitioner to an IPR after the
`
`patent owner has filed a preliminary response:
`
`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
`
`4
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`the expiration of the time for filing such a response, determines
`warrants the institution of an inter partes review under section 314.
`
`The Board has discretion to determine how handle multiple proceedings, including
`
`transfer or consolidation of proceedings. See id. § 315(d); see also 37 C.F.R.
`
`§ 42.122(a). The Board construes its rules “to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); see also
`
`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15 at 4 (Feb. 25, 2013).
`
`In determining whether to exercise its discretion to order joinder, the Board
`
`considers a number of factors, including (1) why joinder is appropriate; (2) any
`
`new ground of unpatentability; (3) the impact, if any, joinder would have on the
`
`trial schedule for the existing review; and (4) how briefing and discovery may be
`
`simplified. See Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4
`
`(Apr. 24, 2013).
`
`B. Argument
`1.
`Partial Consolidation is Appropriate
`The Board is authorized to join WRSI as a party in the 416 IPR because the
`
`416 IPR has been instituted and Patent Owner has filed its preliminary response to
`
`WRSI’s 648 IPR petition. See 35 U.S.C. § 315(c). Partial consolidation is
`
`appropriate “to secure the just, speedy, and inexpensive resolution of” the 417 and
`
`648 IPR proceedings. 37 C.F.R. § 42.1(b); see also Microsoft, IPR2013-00109,
`
`Paper 15 at 4.
`
`5
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`WRSI’s ground of invalidity based on Itoh and Kinzl against claims 1, 2,
`
`and 5-8 should be consolidated with the same ground already instituted against the
`
`same claims in the 416 IPR. It would be more efficient and inexpensive to address
`
`the invalidity of those claims once in the 416 IPR based on this combination, rather
`
`than address the same claims based on the same combination in two separate
`
`proceedings. See Smith & Nephew, Inc. v. Bonutti Skeletal Innovations LLC,
`
`IPR2013-00629, Paper 18 at 2 (June 30, 2014) (“This joinder involves two
`
`proceedings that address the same claims of the same patent using the same
`
`grounds.”).
`
`WRSI does not request further consolidation, although WRSI would not
`
`oppose any reasonable approach that the Board believes would simplify the
`
`proceedings. WRSI respectfully suggests that the Board should deny full
`
`consolidation of the 648 IPR petition with the 416 IPR. WRSI’s remaining
`
`grounds of invalidity in the 648 IPR petition involve primary prior art references
`
`that are not at issue in the 416 IPR. WRSI does not believe that consolidating
`
`those grounds in the 416 IPR would provide comparable efficiency benefits.
`
`Furthermore, WRSI is concerned that full consolidation would complicate, rather
`
`than simplify the proceedings, by creating an excessively large IPR proceeding and
`
`attendant scheduling challenges.
`
`6
`
`
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`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`Consequently, WRSI respectfully proposes that the Board decide that WRSI
`
`cannot raise those remaining grounds in the 416 IPR, and independently address
`
`those grounds in its Decision on Institution of WRSI’s 648 IPR petition.
`
`2. WRSI’s Joinder Request Does Not Raise Any New Grounds
`of Unpatentability
`
`WRSI’s proposed consolidation raises no new grounds of unpatentability.
`
`3.
`
`Joinder Would Have No Impact or Minimal Impact on the
`Trial Schedule for the Existing Review
`
`WRSI does not request any extension of the trial schedule which has already
`
`been proposed for the 416 IPR, and would coordinate with Brose and Patent
`
`Owner regarding any scheduling adjustments. WRSI further believes that the
`
`partial consolidation WRSI has proposed above should have little, if any, impact
`
`on the trial schedule for the 416 IPR.
`
`The Board has already decided to institute a trial as to claims 1, 2, and 5-8
`
`based on the combination of Itoh and Kinzl in the 416 IPR. Since Patent Owner
`
`has filed its preliminary response in the 648 IPR, the Board is free to institute as to
`
`this ground of WRSI’s petition and to consolidate it into the 416 IPR. See 35
`
`7
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`U.S.C. § 315(c)-(d); see also 37 C.F.R. § 42.122(a). The Board can address the
`
`remainder of WRSI’s 650 petition at a later date.1
`
`Moreover, there is ample room in the schedule to move back initial
`
`deadlines by a month or more, if necessary, to permit the partial consolidation.
`
`The ’612 patent has already expired and therefore Patent Owner will not be able to
`
`seek amendment of the claims. In the Board’s proposed schedule, there are twelve
`
`weeks between the close of briefing on the petition and the date for oral argument.
`
`These twelve weeks primarily are used to accommodate: reply briefing on a
`
`motion to amend, a deposition of a reply witness on the motion to amend,
`
`observations on the cross-examination of the reply witness, and responses to the
`
`observations. Since the Board will not need to decide any motion to amend, there
`
`is no time needed for any of those activities. DUE DATES 1-2 could be moved
`
`back at least a month without any impact on the remainder of the schedule.
`
`Joinder Would Simplify Briefing and Discovery
`
`4.
`The partial consolidation WRSI proposes would simply briefing and
`
`discovery because the same invalidity grounds against the same claims would not
`
`need to be briefed twice, in separate proceedings.
`
`1 The deadline for the Board’s decision on institution of WRSI’s 650 petition is
`
`October 24, 2014, because Patent Owner filed its preliminary response on July 24,
`
`2014. See 35 U.S.C. § 314(b).
`
`8
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`To simply the proceedings, WRSI is willing to withdraw the portions of the
`
`declaration of its expert, Dr. Hamid A. Toliyat, see IPR2014-650, Exhibit 1003,
`
`that relate to the grounds already addressed by Brose’s expert, Dr. C. Arthur
`
`MacCarley, IPR2014-417, Exhibit 1001. See, e.g., SAP America Inc. v. Clouding
`
`IP, LLC, IPR2014-00306, Paper 13 at 4 (May 19, 2014) (“SAP has stated that it
`
`will withdraw the declaration of Dr. Grimshaw, which was submitted in support of
`
`SAP’s Petition in IPR2014-00306, and instead rely on the declaration of Dr.
`
`Hutchinson, which was submitted in support of Unified’s Petition in IPR2013-
`
`00586.”). Accordingly, only Dr. MacCarley would address the grounds being
`
`consolidated.
`
`WRSI also proposes that WRSI and Brose can coordinate to file
`
`consolidated papers with respect to the consolidated grounds. See, e.g., Enzymotec
`
`Ltd. v. Neptune Technologies and Bioresources, Inc., IPR2014-00556, Paper 72 at
`
`8 (July 24, 2014) (“Aker and Enzymotec will file papers, except for motions that
`
`do not involve the other party, as consolidated filings.”). WRSI is willing to allow
`
`Brose to take the lead with respect to these consolidated papers, and to only file
`
`separate papers, limited to 5 pages, to express any separate views. See, e.g., id. If
`
`WRSI were to file such a separate paper, Patent Owner could be permitted a
`
`corresponding number of pages to respond to the separate paper. See, e.g., id.
`
`(“Neptune may respond separately to any separate Enzymotec filing. Any such
`
`9
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`response by Neptune to an Enzymotec filing may not exceed the number of pages
`
`in the Enzymotec filing and is limited to issues raised in the Enzymotec filing….”).
`
`Similarly, WRSI is willing to allow Brose to take the lead at the hearing and to
`
`only make separate arguments on points where it has separate views, if any.
`
`IV. CONCLUSION
`
`For the foregoing reasons, WRSI respectfully requests that the Board:
`
`(1) institute WRSI’s 648 IPR petition as to claims 1, 2, and 5-8 based on
`
`Itoh and Kinzl;
`
`(2) consolidate those grounds of invalidity against those claims with the 416
`
`IPR;
`
`(3) join WRSI to the 416 IPR for the purpose of participating as to those
`
`grounds;
`
`(4) deny full consolidation of WRSI’s 648 IPR petition with the 416 IPR;
`
`and
`
`(5) render a decision on institution of WRSI’s 648 IPR petition in due
`
`course.
`
`
`
`Dated: August 29, 2014
`
`Respectfully submitted,
`
`/s/ Charles H. Sanders
`Charles H. Sanders
`Reg. No. 47,053
`
`
`
`10
`
`
`
`Case IPR2014-00648
`U.S. Patent 8,217,612
`
`Atty. Docket: 130163.231151
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on August 29, 2014, (1) a copy of the
`
`foregoing Motion for Joinder was served by email directed to the attorneys of
`
`record for Patent Owner in the 648 IPR at the following addresses:
`
`Monte L. Falcoff (mlfalcoff@hdp.com)
`Hemant M. Keskar (hkeskar@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`
`and (2) a courtesy copy was provided by email directed to the attorneys of record
`
`in the 416 IPR at the following addresses:
`
`Monte L. Falcoff (mlfalcoff@hdp.com)
`Michael R. Nye (mnye@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`Attorneys for Patent Owner UUSI, LLC
`
`Craig D. Leavell (craig.leavell@kirkland.com)
`Alyse Wu (alyse.wu@kirkland.com)
`KIRKLAND & ELLIS LLP
`Attorneys for Petitioners Brose North America, Inc.
`and Brose Fahrzeugteile GmbH & Co KG, Hallstadt
`
`/s/ Charles H. Sanders
`Charles H. Sanders
`Reg. No. 47,053
`
`
`
`
`
`Dated: August 29, 2014
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