Paper 13
`Filed: October 13, 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 REPLY TO PATENT OWNER’S RESPONSE
`TO PETITIONER’S MOTION FOR JOINDER
`
`Attorney Docket: 130163.231151
`
`
`
`
`Filed: October 13, 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 REPLY TO PATENT OWNER’S RESPONSE
`TO PETITIONER’S MOTION FOR JOINDER
`
`Attorney Docket: 130163.231151
`
`
`
`
`
`Case IPR2014-00648
`U.S. Patent 8,217,612
`
`Atty. Docket: 130163.231151
`
`I.
`II.
`III.
`
`Table of Contents
`Summary of the Reply ..................................................................................... 1
`Response to Patent Owner’s Proposed Conditions ......................................... 2
`Patent Owner is Responsible for the Different Timing Between
`Brose’s and WRSI’S IPR Petitions ................................................................. 4
`IV. Conclusion ....................................................................................................... 5
`
`
`i
`
`
`
`Case IPR2014-00648
`U.S. Patent 8,217,612
`I.
`SUMMARY OF THE REPLY
`
`Atty. Docket: 130163.231151
`
`Petitioner WRSI filed its motion for joinder to explain the relationship
`
`between WRSI’s 648 IPR and Brose’s 416 IPR, and to propose a potential efficient
`
`way to proceed. Brose has stated that it does not oppose the partial consolidation
`
`WRSI has requested. See IPR2014-00416, Ex. 1031 at 13 (“So we are open to
`
`whatever the board wants to do with respect to the '612 patent.”). Patent Owner
`
`opposes joinder unless the Board orders WRSI to comply with Patent Owner’s
`
`proposed conditions. See IPR2014-00648, Paper 12 at 3-5. The Board stated that
`
`it is cognizant of the parties’ issues and would not take an action that would put
`
`parties in “untenable positions.” See IPR2014-00416, Ex. 1031 at 17.
`
`WRSI would be placed in an untenable position if grounds in WRSI’s 648
`
`IPR petition were denied merely because Brose’s 416 IPR petition already has
`
`been instituted. In particular, WRSI would be placed in an untenable position as to
`
`its obviousness challenge based on Itoh and Kinzl if this ground were not
`
`instituted, given that the Board has already decided that this ground should be
`
`instituted against the same claims. See IPR2014-00416, Paper 12 at 22-23, 25. If
`
`institution were not granted on the same ground in WRSI’s 846 IPR petition, then
`
`Brose could settle its 416 IPR and WRSI would be foreclosed from maintaining
`
`this ground to invalidate the ’612 patent.
`
`1
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`WRSI’s proposed partial consolidation would avoid placing WRSI in this
`
`untenable position. Denial of any joinder would also avoid placing WRSI in this
`
`untenable position, although it would require the parties and the Board to expend
`
`more resources. WRSI therefore proposed partial consolidation in the interest of
`
`efficiency.
`
`II. RESPONSE TO PATENT OWNER’S PROPOSED CONDITIONS
`
`Patent Owner has not specifically denied the Statement of Material Facts on
`
`which WRSI’s request for partial joinder is founded, and therefore those facts
`
`should be considered admitted. See 37 C.F.R. § 42.23(a). Patent Owner, however,
`
`opposes joinder unless the Board orders the conditions set forth in its opposition.
`
`Patent Owner identifies no precedent for its proposed conditions.
`
`Consistent with the Board’s prior decisions on joinder, WRSI stated it in its
`
`initial brief that it would withdraw the portions of the declaration of its expert that
`
`relate to the grounds already addressed by Brose’s expert, would agree that Brose
`
`would take the lead with respect to the consolidated grounds (as long as Brose has
`
`not settled), and only requested to file a separate paper of up to 5 pages to express
`
`any separate views. See IPR2014-00648, Paper 11 at 9-10. WRSI respectfully
`
`submits that these conditions are sufficient to proceed efficiently, and Patent
`
`Owner’s proposed conditions go too far.
`
`2
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`Patent Owner’s proposed fourth condition, that WRSI’s proposed claim
`
`constructions “be ignored,” is particularly problematic. IPR2014-00648, Paper 12
`
`at 5. WRSI’s 648 IPR petition sets forth other grounds of invalidity besides the
`
`obviousness grounds based on Itoh and Kinzl of Brose’s 416 IPR, and WRSI’s
`
`claim construction positions remain relevant to those other grounds. WRSI should
`
`be permitted to advocate claim construction positions in the 648 IPR to the extent
`
`those claim construction positions are implicated by other grounds of invalidity
`
`that may be at issue in that proceeding.
`
`Patent Owner’s first condition seeks to deny WRSI the ability to submit
`
`even a short 5-page separate paper to express any separate views. WRSI
`
`respectfully submits that permitting WRSI to submit a short separate paper is an
`
`equitable solution in the circumstances here. This is not a case where WRSI has
`
`filed a motion for joinder after the statutory deadline, as is often the case, and
`
`would have no right to pursue an IPR absent joinder. Indeed, WRSI anticipates
`
`little benefit from joinder because WRSI hopes to proceed separately on other
`
`grounds in the 648 IPR. WRSI proposed partial joinder because WRSI believes
`
`this would be more efficient, particularly for the Board. WRSI would be happy to
`
`proceed separately with a full ability to advocate for its positions, which Patent
`
`Owner professes to prefer to potentially receiving an additional 5-page brief.
`
`3
`
`
`
`Case IPR2014-00648
`Atty. Docket: 130163.231151
`U.S. Patent 8,217,612
`Patent Owner’s proposed second and third conditions merely seem to repeat
`
`the conditions which WRSI has already offered. As stated above, WRSI will not
`
`rely on its expert as to obviousness based on Itoh and Kinzl, if this ground of
`
`invalidity is consolidated with the 416 IPR.
`
`III. PATENT OWNER IS RESPONSIBLE FOR THE DIFFERENT
`TIMING BETWEEN BROSE’S AND WRSI’S IPR PETITIONS
`
`Patent Owner’s allegations of delay tactics are not only irrelevant to whether
`
`joinder would be sensible here, but also are meritless. UUSI sued WRSI later than
`
`Brose. Brose had to file its IPR petitions by February 7, 2014, and did so. UUSI
`
`did not reveal the specific claims it was asserting against WRSI (or its contentions
`
`regarding alleged infringement), until after Brose filed its IPR petitions—more
`
`than ten months after filing suit. At that point, WRSI was able to proceed with
`
`preparing the instant IPR petition knowing the particular claims in dispute between
`
`the parties.
`
`Furthermore, UUSI’s argument that WRSI “tactically waited” until after
`
`Brose’s IPRs were instituted makes no sense. See Paper 12 at 7. The rules
`
`authorize joinder to a proceeding that is pending and require filing a motion for
`
`joinder within one month of the institution date of the IPR to which joinder is
`
`requested. See 37 C.F.R. § 42.122. WRSI simply followed the rules.
`
`4
`
`
`
`Case IPR2014-00648
`U.S. Patent 8,217,612
`IV. CONCLUSION
`
`Atty. Docket: 130163.231151
`
`For the foregoing reasons and those set forth in WRSI’s initial brief, WRSI
`
`respectfully requests that the Board grant the relief set forth in WRSI’s motion.
`
`
`
`Dated: October 13, 2014
`
`Respectfully submitted,
`
`/s/ Charles H. Sanders
`Charles H. Sanders
`Reg. No. 47,053
`
`
`
`5
`
`
`
`Case IPR2014-00648
`U.S. Patent 8,217,612
`
`Atty. Docket: 130163.231151
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on October 13, 2014, (1) a copy of the
`
`foregoing Petitioner’s Reply to Patent Owner’s Response to Petitioner’s 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: October 13, 2014
`
`
`
`
`
`
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