`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 IPR2014-00650
`Patent 7,579,802
`
`—————
`
`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 IPR2014-00650
`U.S. Patent 7,579,802
`
`Atty. Docket: 130163.231151
`
`Table of Contents
`
`I.
`II.
`III.
`
`Page
`Introduction and Statement of Requested Relief ............................................. 1
`Statement of Material Facts ............................................................................. 3
`Statement of Reasons for Requested Relief .................................................... 5
`A.
`Legal Standard ....................................................................................... 5
`B.
`Argument ............................................................................................... 6
`1.
`Partial Consolidation is Appropriate ........................................... 6
`2. WRSI’s Joinder Request Only Raises Limited New
`Grounds of Unpatentability ......................................................... 9
`Joinder Would Have No Impact or Minimal Impact on
`the Trial Schedule for the Existing Review .............................. 10
`Joinder Would Simplify Briefing and Discovery ..................... 11
`4.
`IV. Conclusion ..................................................................................................... 13
`
`
`3.
`
`i
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`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 IPR2014-00417 (“the 417 IPR”). See 35 U.S.C. § 315(c); 37
`
`C.F.R. §§ 42.22 and 42.122(b). Both WRSI’s IPR2014-00650 (“the 650 IPR”) and
`
`Brose North America, Inc. and Brose Fahrzeugteile GmbH & Co. KG, Hallstadt’s
`
`(collectively, “Brose’s”) 417 IPR involve the same patent: US 7,579,802 (“the
`
`’802 patent”). WRSI’s petition in the present 650 IPR involves some overlap in
`
`invalidity positions and prior art with Brose’s 417 IPR, which was instituted on
`
`August 1, 2014.
`
`Brose’s 417 IPR was instituted against claims 1, 6-9, and 14 on multiple
`
`grounds involving Itoh (US 4,870,333), Kinzl (US 4,468,596), or both, including
`
`obviousness based on Itoh and Kinzl. See IPR2014-00417, Paper 11 at 5, 26.
`
`WRSI’s 650 IPR petition asserts obviousness of claims 1, 6-9, and 15-16 based on
`
`Itoh and Kinzl. See IPR2014-00650, Paper 4 at 10-25. WRSI also asserts
`
`obviousness of claim 11 based on Itoh, Kinzl, and Jones (US 4,831,509). See id. at
`
`25-27. The remaining grounds in WRSI’s petition involve either Itoh or Kinzl:
`
`obviousness of claims 1, 6-9, and 15-16 based on Lamm (DE 4000730A1) and
`
`Itoh; obviousness of claim 11 based on Lamm, Itoh and Duhame (US 5,218,282);
`
`1
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`and obviousness of claims 1, 6-9, 11 and 15-16 based on Duhame and Kinzl. See
`
`id. at 28-60.
`
`WRSI requests that its assertion of obviousness of claims 1 and 6-9 based on
`
`Itoh and Kinzl be consolidated with Brose’s 417 IPR, which has already been
`
`instituted on the same grounds against the same claims. For efficiency, WRSI also
`
`requests that (a) obviousness of claims 15-16 based on Itoh and Kinzl and (b)
`
`obviousness of claim 11 based on Itoh, Kinzl, and Jones be consolidated with
`
`Brose’s 417 IPR. See 35 U.S.C. § 315(c)-(d); 37 C.F.R. § 42.122. This partial
`
`consolidation would permit all claims asserted to be obvious based on
`
`combinations involving Itoh and Kinzl as primary references to be addressed in
`
`one proceeding.
`
`Although WRSI would not oppose consolidation of the remaining grounds
`
`of its 650 IPR petition with Brose’s 417 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 417
`
`IPR, and instead address those grounds in WRSI’s 650 IPR petition independently.
`
`2
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`WRSI has consulted Brose and Patent Owner. Brose has not taken a
`
`position on this motion at this time. Patent Owner may oppose some aspects of the
`
`proposed partial consolidation.
`
`II.
`
`1.
`
`STATEMENT OF MATERIAL FACTS
`
`UUSI filed suit against Brose North America alleging infringement of the
`
`’802 patent and served the complaint on February 7, 2013. See IPR2014-00417,
`
`Paper 4 at 1.
`
`2.
`
`A little over two months later, UUSI filed suit against WRSI alleging
`
`infringement of the ’802 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 417 IPR petition. See
`
`IPR2014-00417, Paper 2.
`
`4.
`
`On April 16, 2014, WRSI filed its petition in the present 650 IPR. See
`
`IPR2014-00650, Paper 2. A chart of the invalidity grounds set forth in WRSI’s
`
`650 IPR petition is provided below.
`
`Claims
`Grounds
`
`1, 6-9, and 15-16
`A Itoh and Kinzl
`11
`B Itoh, Kinzl, and Jones
`1, 6-9, and 15-16
`C Lamm and Itoh
`D Lamm, Itoh, and Duhame 11
`E Duhame and Kinzl
`1, 6-9, 11, and 15-16
`
`See id., Paper 4 at 10-60.
`
`3
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`5.
`On July 24, 2014, Patent Owner filed its preliminary response to WRSI’s
`
`650 IPR petition. See id., Paper 9.
`
`6.
`
`On August 1, 2014, the Board instituted Brose’s 417 IPR. A chart of the
`
`grounds instituted by the Board is provided below.
`
`Grounds
`
`Itoh (anticipation)
`A
`Itoh (obviousness)
`B
`C Kinzl (anticipation)
`D Kinzl (obviousness)
`E
`Itoh and Kinzl
`F
`Itoh and Zuckerman
`G
`Itoh, Kinzl, and Zuckerman
`
`Claims
`1, 7-9, and 14
`1, 6-9, and 14
`7, 9, and 14
`7, 9, and 14
`1, 6-9, and 14
`7-9 and 14
`7-9 and 14
`
`See IPR2014-00417, Paper 11 at 26.
`
`7.
`
`Both WRSI’s 650 IPR petition and Brose’s instituted 417 IPR raise
`
`obviousness of claims 1 and 6-9 based on Itoh and Kinzl. See IPR2014-00417,
`
`Paper 11 at 26; IPR2014-00650, Paper 4 at 10-25.
`
`8. WRSI’s 650 IPR petition additionally raises obviousness of claims 15-16
`
`(which are not currently at issue in Brose’s 417 IPR) based on Itoh and Kinzl. See
`
`IPR2014-00650, Paper 4, at 10-25. WRSI’s invalidity arguments against
`
`independent claim 15 are very similar to those against independent claim 7. See id.
`
`at 23-25 (referring to the elements of claim 7 for all but one element of claim 15).
`
`Claim 16 is dependent on claim 15.
`
`4
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`9.
`In Patent Owner’s preliminary response, Patent Owner argued against
`
`combining Itoh and Kinzl but raised no argument specific to claim 15 or 16. See
`
`IPR2014-00650, Paper 9 at 4-5.
`
`10. WRSI’s 650 IPR petition also asserts obviousness of claim 11 (which is not
`
`currently at issue in Brose’s 417 IPR) in view of Itoh, Kinzl, and Jones. See
`
`IPR2014-00650, Paper 4, at 25-27. Claim 11 is dependent on claim 7. WRSI
`
`relies on Itoh and Kinzl for all elements of claim 7. See IPR2014-00650, Paper 4
`
`at 17-22. WRSI relies on Jones only for the additional features recited by claim
`
`11. See id. at 25-27.
`
`11. The remaining grounds in WRSI’s 650 IPR petition involve either Itoh or
`
`Kinzl in combination with other primary references. See IPR2014-00650, Paper 4,
`
`at 28-60.
`
`12. This motion is timely because it is submitted within one month of the
`
`August 1, 2014 institution date of the Brose’s 417 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
`
`5
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`Director, after receiving a preliminary response under section 313 or
`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 417 IPR because the
`
`417 IPR has been instituted and Patent Owner has filed its preliminary response to
`
`WRSI’s 650 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
`
`6
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`650 IPR proceedings. 37 C.F.R. § 42.1(b); see also Microsoft, IPR2013-00109,
`
`Paper 15 at 4.
`
`First, WRSI’s ground of invalidity based on Itoh and Kinzl against claims 1
`
`and 6-9 should be consolidated with the same ground already instituted against the
`
`same claims in the 417 IPR. It would be more efficient and inexpensive to address
`
`the invalidity of those claims one time in the 417 IPR based on this combination,
`
`rather than address the same claims based on the same combination in two separate
`
`proceedings. See, e.g., 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.”).
`
`Second, WRSI’s ground of invalidity based on Itoh and Kinzl against claims
`
`15-16 should be consolidated with the 417 IPR. It would be more efficient and
`
`inexpensive to address these two additional claims in the 417 IPR, rather than have
`
`different proceedings for different claims based on the same combination of prior
`
`art. See Enzymotec Ltd. v. Neptune Technologies and Bioresources, Inc., IPR2014-
`
`00556, Paper 72 at 5 (July 24, 2014) (granting joinder, explaining, “Enzymotec’s
`
`assertion that claims 2 and 25, as well as claims 3 and 26, are unpatentable as
`
`anticipated is based on the prior art already of record in IPR2014-00003. Thus, we
`
`are persuaded that the impact of joinder on the previous proceeding will be
`
`7
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`minimal from both a procedural and substantive view point.”). Moreover, WRSI’s
`
`invalidity arguments against independent claim 15 are very similar to those against
`
`independent claim 7. See IPR2014-00650, Paper 4 at 23-25 (referring to the
`
`elements of claim 7 for all but one element of claim 15). Patent Owner only raised
`
`general arguments against invalidity based on Itoh and Kinzl, not any arguments
`
`specific to claims 15-16. See id., Paper 9 at 4-5. Therefore, there is no reason to
`
`expect that claims 15-16 will present any significant new issues.
`
`Third, WRSI’s ground of invalidity based on Itoh, Kinzl, and Jones against
`
`claim 11 should be consolidated with the 417 IPR. Claim 11 is dependent on claim
`
`7, and WRSI relies on Itoh and Kinzl for all elements of claim 7. See IPR2014-
`
`00650, Paper 4 at 17-22. WRSI relies on Jones only for the additional features
`
`recited by claim 11. See id. at 25-27. It would be more efficient and inexpensive
`
`to address the invalidity of dependent claim 11 in the 417 IPR than to address this
`
`dependent claim in a separate proceeding, given that the same combination of prior
`
`art is asserted against the base independent claim in the 417 IPR. See Wintek Corp.
`
`v. TPK Touch Solutions, Inc., IPR2014-00541, Paper 14 at 3 (June 17, 2014)
`
`(granting joinder, explaining, “The ’902 patent is involved in each of IPR2014-
`
`00541 and IPR2014-00567, as noted above, and there is overlap in the cited prior
`
`art in the two proceedings.”).
`
`8
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`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 650 IPR petition with the 417 IPR. WRSI’s remaining
`
`grounds of invalidity in the 650 IPR petition involve primary prior art references
`
`that are not at issue in the 417 IPR. WRSI does not believe that consolidating
`
`those grounds in the 417 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.
`
`Consequently, WRSI respectfully proposes that the Board decide that WRSI
`
`cannot raise those remaining grounds in the 417 IPR, and independently address
`
`those grounds in its Decision on Institution of WRSI’s 650 IPR petition.
`
`2. WRSI’s Joinder Request Only Raises Limited New
`Grounds of Unpatentability
`
`As to claims 1 and 6-9, WRSI’s proposed consolidation raises no new
`
`grounds of unpatentability. The only new grounds of unpatentability which WRSI
`
`proposes should be addressed in the 417 IPR are (1) invalidity of claims 15-16
`
`based on Itoh and Kinzl and (2) invalidity of claim 11 based on Itoh, Kinzl, and
`
`Jones. WRSI submits that it would be more efficient and economical to address
`
`these few additional claims in the 417 IPR than in a separate proceeding for the
`
`9
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`reasons stated above. See Enzymotec, IPR2014-00556, Paper 72 at 5-6; Wintek,
`
`IPR2014-00541, Paper 14 at 3.
`
`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 417 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 417 IPR.
`
`The Board has already decided to institute a trial as to claims 1 and 6-9
`
`based on the combination of Itoh and Kinzl in the 417 IPR. Since Patent Owner
`
`has filed its preliminary response in the 650 IPR, the Board is free to institute as to
`
`other claims and to consolidate those claims into the 417 IPR. See 35 U.S.C.
`
`§ 315(c)-(d); see also 37 C.F.R. § 42.122(a). The Board would only need to
`
`institute on claims 15-16 based on Itoh and Kinzl and on claim 11 based on Itoh,
`
`Kinzl, and Jones. Independent claim 15 is very similar to independent claim 7, as
`
`to which the Board has already instituted a trial based on Itoh and Kinzl. Claims
`
`11 and 16 are short dependent claims that only add specific features. The Board
`
`10
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`can institute on these claims on these specific grounds in WRSI’s 650 petition,
`
`while addressing 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 ’802 patent will expire in November 2014 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 invalidity grounds based on Itoh and Kinzl as primary
`
`references 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).
`
`11
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`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, see 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, Dr. MacCarley would address the grounds already instituted in
`
`the 417 IPR, and Dr. Toliyat would only address the additional grounds raised by
`
`WRSI’s petition with respect to claim 11 and 15-16. If the Board adopts this
`
`approach and also separately institutes the remaining grounds raised by WRSI’s
`
`petition in a separate proceeding, WRSI proposes that the parties can coordinate to
`
`make Dr. Toliyat available for a single deposition for both proceedings within the
`
`ordinary time limits.
`
`WRSI also proposes that WRSI and Brose can coordinate to file
`
`consolidated papers with respect to the consolidated grounds. See, e.g.,
`
`Enzymotec, IPR2014-00556, Paper 72 at 8 (“Aker and Enzymotec will file papers,
`
`except for motions that do not involve the other party, as consolidated filings.”).
`
`12
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`WRSI is willing to allow Brose to take the lead with respect to these consolidated
`
`papers, and to only file separate papers, limited to 7 pages, to express any separate
`
`views and the few additional claims. See, e.g., id. (“Aker will identify each such
`
`filing as a consolidated filing and will be responsible for completing all
`
`consolidated filings. Enzymotec may file an additional paper, not to exceed seven
`
`pages ….”). 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 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 WRSI has separate
`
`views, if any, and to address the few additional claims.
`
`IV. CONCLUSION
`
`For the foregoing reasons, WRSI respectfully requests that the Board:
`
`(1) institute WRSI’s 650 IPR petition as to claims 1, 6-9, and 15-16 based on
`
`Itoh and Kinzl and claim 11 based on Itoh, Kinzl and Jones;
`
`(2) consolidate those grounds of invalidity against those claims with the 417
`
`IPR;
`
`13
`
`
`
`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`(3) join WRSI to the 417 IPR for the purpose of participating as to those
`
`grounds;
`
`(4) deny full consolidation of WRSI’s 650 IPR petition with the 417 IPR;
`
`and
`
`(5) render a decision on institution of the remainder of WRSI’s 650 IPR
`
`petition in due course.
`
`
`
`Dated: August 29, 2014
`
`Respectfully submitted,
`
`/s/ Charles H. Sanders
`Charles H. Sanders
`Reg. No. 47,053
`
`
`
`14
`
`
`
`Case IPR2014-00650
`U.S. Patent 7,579,802
`
`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 650 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 417 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
`
`
`
`Dated: August 29, 2014
`
`
`
`/s/ Charles H. Sanders
`Charles H. Sanders
`Reg. No. 47,053