`Filed: October 13, 2014
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————
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`WEBASTO ROOF SYSTEMS, INC.
`Petitioner,
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`v.
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`UUSI, LLC
`Patent Owner.
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`—————
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`Case IPR2014-00650
`Patent 7,579,802
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`—————
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`TO PETITIONER’S MOTION FOR JOINDER
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`Attorney Docket: 130163.231151
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`Case IPR2014-00650
`U.S. Patent 7,579,802
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`Atty. Docket: 130163.231151
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`I.
`II.
`III.
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`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
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`i
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`Case IPR2014-00650
`U.S. Patent 7,579,802
`I.
`SUMMARY OF THE REPLY
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`Atty. Docket: 130163.231151
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`Petitioner WRSI filed its motion for joinder to explain the relationship
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`between WRSI’s 640 IPR and Brose’s 417 IPR, and to propose a potential efficient
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`way to proceed. Brose has stated it opposes addition of claims 11, 15, and 16 to its
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`417 IPR, but has not voiced opposition to consolidation as to the same claims at
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`issue in the 417 IPR (claims 1 and 6-9). See IPR2014-00417, Ex. 1043 at 14-15.
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`Patent Owner also opposes joinder as to claims 11, 15, and 16, and opposes joinder
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`as to claims 1 and 6-9 unless the Board orders WRSI to comply with Patent
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`Owner’s proposed conditions. See IPR2014-00650, Paper 12 at 4, 15. The Board
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`stated that it is cognizant of the parties’ issues and would not take an action that
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`would put parties in “untenable positions.” See IPR2014-00417, Ex. 1043 at 17.
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`WRSI would be placed in an untenable position if grounds in WRSI’s 650
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`IPR petition were denied merely because Brose’s 417 IPR petition already has
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`been instituted. In particular, WRSI would be placed in an untenable position as to
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`its obviousness challenge based on Itoh and Kinzl if this ground were not instituted
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`against claims 1 and 6-9, given that the Board has already decided that this ground
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`should be instituted against the same claims. See IPR2014-00417, Paper 11 at 26.
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`If institution were not granted on the same ground in WRSI’s 648 IPR petition,
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`then Brose could settle its 417 IPR and WRSI would be foreclosed from
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`maintaining this ground to invalidate the ’802 patent.
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`1
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`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`WRSI’s proposed partial consolidation would avoid placing WRSI in this
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`untenable position. Denial of any joinder would also avoid placing WRSI in this
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`untenable position, although it would require the parties and the Board to expend
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`more resources. WRSI therefore proposed partial consolidation in the interest of
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`efficiency.
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`WRSI appreciates the Board’s sensitivity to the private parties’ interests, and
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`WRSI similarly has no desire to disadvantage Brose. WRSI has no objection to
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`proceeding against claim 11 based on Itoh, Kinzl, and Jones and against claims 15
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`and 16 based on Itoh and Kinzl separately in the 650 IPR (assuming institution on
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`these grounds) to avoid Brose’s concern about potential estoppel if these claims
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`were consolidated into Brose’s 417 IPR.
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`II. RESPONSE TO PATENT OWNER’S PROPOSED CONDITIONS
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`Patent Owner has not specifically denied the Statement of Material Facts on
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`which WRSI’s request for partial joinder is founded, and therefore those facts
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`should be considered admitted. See 37 C.F.R. § 42.23(a). Patent Owner, however,
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`opposes joinder unless the Board orders the conditions set forth in its opposition.
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`Patent Owner identifies no precedent for its proposed conditions.
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`Consistent with the Board’s prior decisions on joinder, WRSI stated it in its
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`initial brief that it would withdraw the portions of the declaration of its expert that
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`relate to the grounds already addressed by Brose’s expert, would agree that Brose
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`2
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`U.S. Patent 7,579,802
`would take the lead with respect to the consolidated grounds (as long as Brose has
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`not settled), and only requested to file a separate paper of up to 7 pages to express
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`any separate views and claims not addressed by Brose. See IPR2014-00650, Paper
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`11 at 11-13. WRSI respectfully submits that these conditions are sufficient to
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`proceed efficiently, and Patent Owner’s proposed conditions go too far.
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`Patent Owner’s proposed fourth condition, that WRSI’s proposed claim
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`constructions “be ignored,” is particularly problematic. IPR2014-00650, Paper 12
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`at 5. WRSI’s 6450 IPR petition sets forth other grounds of invalidity besides the
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`obviousness grounds based on Itoh and Kinzl of Brose’s 417 IPR, and WRSI’s
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`claim construction positions remain relevant to those other grounds. WRSI should
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`be permitted to advocate claim construction positions in the 650 IPR to the extent
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`those claim construction positions are implicated by other grounds of invalidity
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`that may be at issue in that proceeding.
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`Patent Owner’s first condition seeks to deny WRSI the ability to submit
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`even a short 7-page separate paper to express any separate views and any claims
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`that Brose has not addressed in its 417 IPR.1 WRSI respectfully submits that
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`permitting WRSI to submit a short separate paper is an equitable solution in the
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`circumstances here. This is not a case where WRSI has filed a motion for joinder
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`1 If none of claims 11, 15, or 16 are consolidated with the 417 IPR, then WRSI
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`would request to submit no more than a 5-page separate paper.
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`3
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`Case IPR2014-00650
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`U.S. Patent 7,579,802
`after the statutory deadline, as is often the case, and would have no right to pursue
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`an IPR absent joinder. Indeed, WRSI anticipates little benefit from joinder
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`because WRSI hopes to proceed separately on other grounds in the 650 IPR.
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`WRSI proposed partial joinder because WRSI believes this would be more
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`efficient, particularly for the Board. WRSI would be happy to proceed separately
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`with a full ability to advocate for its positions, which Patent Owner professes to
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`prefer to potentially receiving a short additional brief.
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`Patent Owner’s proposed second and third conditions merely seem to repeat
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`the conditions which WRSI has already offered. As stated above, WRSI will not
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`rely on its expert for obviousness of claims 1 and 6-9 based on Itoh and Kinzl, if
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`this ground of invalidity is consolidated with the 417 IPR.
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`III. PATENT OWNER IS RESPONSIBLE FOR THE DIFFERENT
`TIMING BETWEEN BROSE’S AND WRSI’S IPR PETITIONS
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`Patent Owner’s allegations of delay tactics are not only irrelevant to whether
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`joinder would be sensible here, but also are meritless. UUSI sued WRSI later than
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`Brose. Brose had to file its IPR petitions by February 7, 2014, and did so. UUSI
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`did not reveal the specific claims it was asserting against WRSI (or its contentions
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`regarding alleged infringement), until after Brose filed its IPR petitions—more
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`than ten months after filing suit. At that point, WRSI was able to proceed with
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`preparing the instant IPR petition knowing the particular claims in dispute between
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`the parties.
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`4
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`Case IPR2014-00650
`Atty. Docket: 130163.231151
`U.S. Patent 7,579,802
`Furthermore, UUSI’s argument that WRSI “tactically waited” until after
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`Brose’s IPRs were instituted makes no sense. See Paper 12 at 7. The rules
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`authorize joinder to a proceeding that is pending and require filing a motion for
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`joinder within one month of the institution date of the IPR to which joinder is
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`requested. See 37 C.F.R. § 42.122. WRSI simply followed the rules.
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`IV. CONCLUSION
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`For the foregoing reasons and those set forth in WRSI’s initial brief, WRSI
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`respectfully requests that the Board grant the relief set forth in WRSI’s motion.
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`Dated: October 13, 2014
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`Respectfully submitted,
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`/s/ Charles H. Sanders
`Charles H. Sanders
`Reg. No. 47,053
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`5
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`Case IPR2014-00650
`U.S. Patent 7,579,802
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`Atty. Docket: 130163.231151
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on October 13, 2014, (1) a copy of the
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`foregoing Motion for Joinder was served by email directed to the attorneys of
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`record for Patent Owner in the 650 IPR at the following addresses:
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`Monte L. Falcoff (mlfalcoff@hdp.com)
`Hemant M. Keskar (hkeskar@hdp.com)
`HARNESS, DICKEY & PIERCE, P.L.C.
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`and (2) a courtesy copy was provided by email directed to the attorneys of record
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`in the 417 IPR at the following addresses:
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`Monte L. Falcoff (mlfalcoff@hdp.com)
`Michael R. Nye (mnye@hdp.com)
`Harness, Dickey & Pierce, P.L.C.
`Attorneys for Patent Owner UUSI, LLC
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`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
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`Dated: October 13, 2014
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`
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`/s/ Charles H. Sanders
`Charles H. Sanders
`Reg. No. 47,053
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