`Trials@uspto.gov
` Entered: October 28, 2014
`571.272.7822
`
`
`
`
`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 B2)
`Case IPR2014-00650 (Patent 7,579,802 B2)1
`_______________
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`
`PERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Motions for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`1 This decision addresses issues that are identical in two cases. The parties
`are not authorized to use this heading style in their papers.
`
`
`
`
`
`IPR2014-00648 (Patent 8,217,612 B2)
`IPR2014-00650 (Patent 7,579,802 B2)
`
`
`
`
`
`Petitioner Brose North America, Inc. (“Brose”) filed inter partes
`
`review petitions in Cases IPR2014-00416 (“the ’416 review”) and IPR2014-
`
`00417 (“the ’417 review”). Several months later, Petitioner Webasto Roof
`
`Systems, Inc. (“Webasto”) filed inter partes review petitions in Cases
`
`IPR2014-00648 (“the ’648 review”), IPR2014-00649 (“the ’649 review”),
`
`and IPR2014-00650 (“the ’650 review”), including some challenges that
`
`overlapped with Petitioner Brose’s challenges. After decisions to institute
`
`trials with respect to ’416 and ’417 reviews, but before any decision to
`
`institute with respect to the ’648, ’649 and ’650 reviews, Petitioner Webasto
`
`moved for joinder2 of the ’648 review with the ’416 review and for joinder3
`
`of the ’650 review with the ’417 review in order to “partially consolidate”
`
`overlapping grounds.
`
`Arguments were made by both Petitioner Webasto and Patent Owner
`
`with respect to each requested joinder. See IPR2014-00648, Papers 12 and
`
`13; and IPR2014-00650, Papers 12 and 13.
`
`Decisions to Institute were filed on October 17, 2014 with respect to
`
`the ’648 and ’650 reviews. The decisions did not institute a trial with
`
`respect to any of the overlapping grounds.
`
`In order to determine the parties’ positions with respect to joinder
`
`after issuance of Decisions to Institute in the ’648 and ’650 inter partes
`
`reviews, the panel initiated a conference call which was held on October 27,
`
`2014. That conference call included counsel for Petitioner Brose, Petitioner
`
`Webasto, and Patent Owner. During the conference call, Petitioner Webasto
`
`
`2 IPR2014-00648, Paper 11.
`3 IPR2014-00650, Paper 11.
`
`
`
`
`2
`
`
`
`IPR2014-00648 (Patent 8,217,612 B2)
`IPR2014-00650 (Patent 7,579,802 B2)
`
`indicated that, based on changed circumstances, it is no longer interested in
`
`
`
`
`joining as a party the ’416 and ’417 inter partes reviews.
`
`Accordingly, it is
`
`ORDERED that Petitioner’s motions for joinder are DENIED.
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`IPR2014-00648 (Patent 8,217,612 B2)
`IPR2014-00650 (Patent 7,579,802 B2)
`
`
`
`
`For PETITIONER:
`
`Charles Sanders
`Timothy Rousseau
`Phong Dinh
`GOODWIN PROCTER LLP
`csanders@goodwinprocter.com
`trousseau@goodwinprocter.com
`pdinh@goodwinprocter.com
`
`
`
`For PATENT OWNER:
`
`Monte L. Falcoff
`Michael R. Nye
`Hemant M. Keskar
`HARNESS, DICKEY & PIERCE, P.L.C.
`mlfalcoff@hdp.com
`mnye@hdp.com
`hkeskar@hdp.com
`
`
`
`
`
`4
`
`
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