Filed on behalf of UUSI, LLC
`By: Monte L. Falcoff (m1fa1coff@hdp.com1
`Hemant M. Keskar (hkeskar@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 Corporate Drive, Ste. 200
`Troy, MI 48098
`Telephone: (248) 641-1600
`Facsimile: (248) 641-0270
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner
`
`V.
`
`UUSI, LLC
`Patent Owner
`
`Case |PR2014—O0648
`
`Patent 8,217,612
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION FOR
`
`JOINDER
`
`
`
`
`By: Monte L. Falcoff (m1fa1coff@hdp.com1
`Hemant M. Keskar (hkeskar@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 Corporate Drive, Ste. 200
`Troy, MI 48098
`Telephone: (248) 641-1600
`Facsimile: (248) 641-0270
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEBASTO ROOF SYSTEMS, INC.
`Petitioner
`
`V.
`
`UUSI, LLC
`Patent Owner
`
`Case |PR2014—O0648
`
`Patent 8,217,612
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION FOR
`
`JOINDER
`
`
`
`
`
`Case IPR2014—OO648
`
`Patent 8,217,612
`
`I.
`
`INTRODUCTION ................................................................. ..3
`
`ll.
`
`JOINDER ACCEPTABLE IF CERTAIN CONDITIONS
`
`ARE IMPOSED TO REDUCE HARM ................................................ ..4
`
`III.
`
`REASONS FOR DENYING JOINDER
`
`ABSENT UUSl’S PROPOSED CONDITIONS .................................... ..5
`
`1.
`
`WEI3ASTO’S GROUND B AND
`
`BROSE’S GROUND 3 ARE NOT “THE SAME” ....... ..5
`
`2.
`
`MODIFYING BROSE’S SCHEDULE
`
`WILL NOT REDUCE HARM TO UUSI ................. ..6
`
`3.
`
`WEI3ASTO’S DELAY TACTICS
`
`SHOULD NOT BE REWARDED .......................... ..7
`
`4.
`
`5.
`
`DENYING JOINDER WILL NOT HARM WEBASTO....8
`
`UUSI RECOMMENDS SETTING
`
`A COMMON DATE FOR ORAL ARGUMENTS ........ ..8
`
`IV.
`
`CONCLUSION ................................................................... ..9
`
`
`
`Page 2 Ofll
`
`
`
`Case IPR20l4—O0648
`
`Patent 8,217,612
`
`I.
`
`INTRODUCTION
`
`Petitioner Webasto Roof Systems, Inc. (“Webasto”) seeks to join Ground B
`
`of its IPR20l4—00648 (“Webasto IPR”), which alleges that Claims 1, 2, and 5-8 of
`
`U.S. Patent No. 8,217,612 (“the ’612 patent”) are obvious over Itoh and Kinzl,
`
`with Ground 3 of IPR2014—00416 filed by Brose et al. (“Brose IPR”), which
`
`alleges that Claims 1, 2, and 5 -8 are obvious over Itoh, Kinzl, and ordinary skill in
`
`the art. Webasto IPR, Paper 11 at 2.
`
`Patent Owner UUSI, LLC (“UUSI”) will agree to Webasto’s proposed
`
`joinder if the Patent Trial and Appeal Board (“Board”) orders UUSI’s proposed
`
`conditions as set forth below, which will create efficiencies with minimal harm to
`
`all parties and the Board. If the Board does not order UUSI’s conditions then UUSI
`
`opposes joinder since, without these conditions, joinder will not reduce the burden
`
`on the Board and UUSI, and will harm UUSI. If the Board does not order UUSl’s
`
`conditions then, in lieu ofjoinder, UUSI requests the Board to set a common date
`
`for oral arguments for the Brose IPR and, if instituted, the Webasto IPR for the
`
`‘6l2 patent in addition to Brose lPR20l4—0O4l7 and Webasto lPR20l4—0O650, if
`
`«
`
`instituted, for U.S. Patent No. 7,579,802 (“the ’802 patent”).
`
`Page 3 ofll
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`
`
`Case IPR2014-00648
`
`Patent 8,217,612
`
`II.
`
`JOINDER ACCEPTABLE IF CERTAIN CONDITIONS ARE IMPOSED To
`
`REDUCE HARM
`
`UUSI finds that efficiencies will occur with minimal harm to all parties and
`
`the Board if the Board orders the following procedural conditions:
`
`(1) Both petitioners must speak with a “single Voice” for Brose’s Ground 3
`
`and Webasto’s Ground B throughout all of the IPR proceedings including
`
`depositions, reply briefs, and the oral arguments. In other words, Brose will take
`
`the lead, and Webasto cannot file any supplemental briefs, ask deposition
`
`questions, or the like on this proposed Ground B.
`
`(2) Webasto’s eXpert’s Declaration must be stricken and ignored with regard
`
`to Webasto’s Ground B and the facts and conclusions regarding the combination of
`
`the Itoh and Kinzl references discussed therein. Furthermore, if Webasto’s expert
`
`testifies during his deposition on the combination of the Itoh and Kinzl references
`
`then such testimony cannot be used in support of Brose’s Ground 3 or Webasto’s
`
`Ground B.
`
`(3) No evidence of ordinary skill in the art or the like presented in or
`
`attached to the IPR Petition or eXpert’s Declaration solely filed by Webasto can be
`
`used in support of Brose’s Ground 3 and Webasto’s Ground B. Thus, this causes
`
`these proposed grounds to be identical and not alternate in nature.
`
`Page 4 ofll
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`
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`Case IPR2014—O0648
`
`Patent 8,217,612
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`(4) The proposed claim constructions asserted by Webasto regarding Claims
`
`1, 2, and 5 -8 be ignored such that only the Brose ones shall be proffered on behalf
`
`of both Petitioners (without UUSI admitting to the correctness or incorrectness of
`
`either of these claim constructions at this time).
`
`If the Board orders the preceding conditions then UUSI agrees to joinder for
`
`the.‘6l2 patent. If the preceding conditions are not ordered then UUSI opposes the
`
`joinder for the following reasons since UUSI will be disadvantageously harmed.
`
`III.
`
`REASONS FoR DENYING JOINDER ABSENT UUS|’s PROPOSED
`
`CONDITIONS
`
`1. WEBASTO’S GROUND B AND BRosE’s GROUND 3 ARE Nor
`
`“THE SAME”
`
`V
`
`Citing IPR2013—OO629 (“Smith IPR”), Webasto contends that these grounds
`
`are “the same” and therefore should be joined. Webasto IPR, Paper 11 at 6.
`
`Webasto’s contention, however, is meritless because the facts of the Smith IPR are
`
`inapposite, and the grounds Webasto seeks to join are not “the same.” Specifically,
`
`Webasto’s reliance on the Smith IPR is misplaced because all parties in the Smith
`
`IPR including the Patent Owner jointly moved to join a later—filed IPR with the
`
`earlier-filed Smith IPR since the grounds sought to be joined in the two IPRs were
`
`identical. Further, all parties agreed to a single deposition of Patent Owner’s
`
`expert, agreed to maintain the schedule of the earlier—f1led Smith IPR, and agreed
`
`to terminate the later—filed IPR. Smith IPR, Paper 18 at 2-5.
`
`Page 5 of 11
`
`
`
`Case IPR2O 14-00648
`
`Patent 8,217,612
`
`In contrast, the parties in the Webasto and Brose IPR’s have neither moved
`
`jointly for joinder nor reached any agreements similar to those reached in the
`
`Smith IPR. Indeed, UUSI opposes joinder absent the UUSI—proposed conditions.
`
`Further, the parties have not yet agreed to maintain the schedule of the earlier-filed
`
`Brose IPR. Therefore, the Smith IPR does not support Webasto’s proposition for
`
`joinder, and Webasto’s motion for joinder should be denied.
`
`Additionally, the grounds sought to be joined here are not “the same”
`
`because Webasto’s Ground B relies only on Itoh and Kinzl Whereas Brose’s
`
`Ground 3 relies on Itoh and Kinzl and additionally on ordinary skill in the art as
`
`interpreted by its expert MacCarley and “Apparent Constructions [allegedly]
`
`Advocated by UUSI.” Brose IPR, Paper 5 at 27, 40, an 41. Thus UUSI will be
`
`burdened with the need to take the deposition of Webasto’s expert on its different
`
`
`Ground B. Furthermore Webasto desires to submit a supplemental reply brief,
`
`expert testimony, and oral arguments on their differences. Therefore, these grounds
`
`are not “the same” and should not be joined.
`
`2. MODIFYING BRosE’s SCHEDULE WILL Nor REDUCE HARM TO
`
`UUSI
`
`Ifj oinder is granted, Webasto suggests that there is “ample room” (12
`
`weeks) in Brose IPR’s schedule to move back initial deadlines. Id. at 8. If,
`
`however, the Board denies joinder, institutes the Webasto IPR, and issues a
`
`schedule for the Webasto IPR, since the Webasto’s IPR was filed 16 weeks after
`
`Page 6 of 11
`
`
`
`Case lPR20l4-00648
`
`Patent 8,217,612
`
`Brose’s, UUSI will get an additional four weeks’ time to properly defend
`
`Webasto’s assault on its patent. Accordingly, granting joinder and moving back
`
`deadlines in the Brose IPR will not reduce harm to UUSI, particularly since UUSI
`
`will have to deal with two experts in Brose IPR, and Webasto’s motion for joinder
`
`should therefore be denied.
`
`- 3. WEBASTO’S DELAY TACTICS SHOULD Nor BE REWARDED
`
`Webasto had nearly 10 months after being sued on April 16, 2013 and
`
`before Brose filed its IPR on February 7, 2014 within which to consider whether to
`
`join the Brose IPR. Both Petitioners had acted in concert on many procedural
`
`matters during the lawsuits and therefore presumably knew that they both intended
`
`to file the present lPR’s. But Webasto apparently made a tactical decision to wait
`
`on filing its IPR.
`
`Further, when Webasto filed its IPR on April 16, 2014, Webasto knew the
`
`grounds Brose alleged in its IPR for nearly 10 weeks after Brose filed its IPR.
`
`Webasto could have moved for joinder concurrently when it filed its IPR or soon
`
`thereafter. But Webasto did not do so. Instead, Webasto again tactically waited
`
`until after UUSI filed preliminary responses to both the Brose and Webasto IPRS
`
`for both ‘6l2 and ‘802 patents and until after the Board instituted the Brose IPRS
`
`for both ‘6l2 and ‘802 patents, and then moved for joinder on August 29, 2014.
`
`Page 7 ofll
`
`
`
`Case lPR2014—OO648
`
`Patent 8,217,612
`
`Thus, Webasto moved for joinder after waiting well over six months after
`
`the filing of the Brose IPR and four months after the filing of its IPR. While
`
`Webasto’s joinder petition is not barred, its tactically delayed request for joinder
`
`due to its apparently repetitive Wait—and—see strategy undermines its credibility to
`
`fairly argue that joinder does not prejudice UUSI and that the Board should adjust
`
`the schedule already in place for the Brose IPR to accommodate Webasto’s
`
`strategically delayed joinder request. UUSI will be unfairly harmed if it must now
`
`depose Webasto’s expert and respond to the different Ground B halfway through
`
`UUSI’s response period. Therefore, equity requires that the Board deny Webasto’s
`
`motion for joinder absent the UUSI—proposed conditions.
`
`4.
`
`DENYING JOINDER WILL Nor HARM WEBASTO
`
`While UUSI will be harmed and prejudiced as explained above ifjoinder is
`
`granted, Webasto will not be harmed or prejudiced ifjoinder is denied and if its
`
`IPR is instituted because Webasto will incur no additional burden ifjoinder is
`
`denied. Therefore, the Board should not hesitate in denying joinder.
`
`5.
`
`UUSI RECOMMENDS SETTING A CoMMoN DATE FOR ORAL
`
`ARGUMENTS
`
`In lieu ofjoinder, UUSI requests the Board to set a common date for oral
`
`arguments for the Brose IPRs and, if instituted, the Webasto IPRs for the ‘6l2 and
`
`‘802 patents. Since UUSI will not amend any claims in any of these IPRS (since
`
`the patents in dispute have or will soon expire) and as long as the common hearing
`
`Page 8 ofll
`
`
`
`date does not shorten response/reply timing for any party, UUSI believes the
`
`common hearing date will provide definite efficiency benefits to the Board and all
`
`Case IPR20l4—00648
`
`Patent 8,217,612
`
`the parties}
`
`IV.
`
`CONCLUSION
`
`For the reasons set forth above, UUSI respectfully requests the Board to (i)
`
`order UUSI’s conditions and grant Webasto’s motion for joinder, (ii) deny
`
`Webasto’s motion for joinder if it does not order UUSI’s conditions, or (iii) deny
`
`Webasto’s motion for joinder and order a common hearing date for all the IPRs
`
`instituted for the ‘802 and ‘6l2 patents.
`
`
`
` 0.‘ 37,617
`
`ant M. Keskar
`
`Respectfully submitted
`
`Dated:
`
`Q/V By:
`
`Reg. No. 61,776
`Attorneys for Patent Owner UUSI
`
`1 UUSI does not request a common hearing date for Webasto’s IPR20l4-00649 for
`US. Patent No. 7,548,037 (“the ’037 patent”), if trial is instituted, since Webasto
`has asserted a considerable quantity of different references and the claims of the
`‘037 patent are very different than those of the ‘802 and ‘6l2 patents.
`
`Page 9 ofll
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`
`
`Case IPR2014-00648
`
`Patent 8,217,612
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(E)(4)
`
`It is hereby certified that today, Q
`
`I 2014, a copy of the foregoing doc-
`
`ument was served Via electronic mail upon the following:
`
`Charles H. Sanders (Reg. No. 47,053)
`csanders@,goodwinprocter.com
`GOODWIN PROCTER LLP
`Exchange Place
`53 State Street
`Boston, MA 02109
`Telephone: (617) 570-1315
`Fax: (617)801-8804
`
`Timothy J. Rousseau (Reg. No. 59,454)
`trousseau@goodwin;y_octer.com
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, New York 10018
`Telephone: (212) 813-8000
`Fax: (212)355-3333
`
`Phong T. Dinh (Reg. No. 67,475)
`(pdinh@goodwinprocter.com)
`GOODWIN PROCTER LLP
`
`901 New York AVenue., NW
`
`Washington, D.C. 22201
`Telephone: (202) 346-4320
`Fax: (202) 346-4444
`Attorneys ofRecordfor Webasto RoofSystems, Inc.
`
`Craig D. Leavell
`Cr21_ig_.leaVe_l1@kirkland.com
`KIRKLAND & ELLIS LLP
`
`Alyse Wu
`alyse.wu@,kirkland.com
`KIRKLAND & ELLIS LLP
`
`300 North LaSalle
`
`Chicago, IL 60654.
`Phone: 312-862-2105
`
`300 North LaSalle
`
`Chicago, IL 60654
`Phone: 312-862-3340
`
`Fax: 312-862-2200
`Fax: 312-862-2200
`Attorneys ofRecordfor Brose North America, Inc. and Brose Fahrzeugteile GmbH
`& Co KG, Hallstadt
`
`Page 10 ofll
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`
`
`Case IPR2014—0O648
`
`Patent 8,217,612
`
`Dated: Z77 7?
`
`By:
`
`
`
`Monte L. Falcff
`
`Reg. No. 37,617
`Hemant M. Keskar
`
`188945704
`
`Reg. No. 61,776
`Attorneys for Patent Owner UUSI
`
`Page 11 of11
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