IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT: RE43,707
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`INVENTOR: TOM KIMPE ET AL.
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`FILED: DECEMBER 28, 2011
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`ISSUED: OCTOBER 2, 2012
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`TITLE: METHODS, APPARATUS, AND DEVICES FOR NOISE REDUCTION
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`CASE NO.: IPR2014-00778
`___________________________________________________________
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`MOTION FOR JOINDER TO RELATED INTER PARTES REVIEW (37
`C.F.R. § 42.122(b))
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`03220.23279/6112949.2
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`PATENT: RE43,707
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`INVENTOR: TOM KIMPE ET AL.
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`FILED: DECEMBER 28, 2011
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`ISSUED: OCTOBER 2, 2012
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`TITLE: METHODS, APPARATUS, AND DEVICES FOR NOISE REDUCTION
`
`CASE NO.: IPR2014-00778
`___________________________________________________________
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`MOTION FOR JOINDER TO RELATED INTER PARTES REVIEW (37
`C.F.R. § 42.122(b))
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`03220.23279/6112949.2
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`Petitioner Eizo Corporation (“Eizo”) files this Motion for Joinder of inter
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`partes review, Case No. IPR2014-00778 (“Second Petition”), with the inter partes
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`review, Case No. IPR2014-00358 (“First Petition”), pursuant to 35 U.S.C. § 315(c)
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`and 37 C.F.R. § 42.122(b).
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`No fee is required for consideration of this Motion. Petitioner Eizo has paid
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`the fee for the First and Second Petitions for inter partes review. Should this be
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`incorrect, the Patent Office is authorized to charge the necessary fee Quinn
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`Emanuel Urquhart & Sullivan deposit account no. 505708.
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`I.
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`APPLICABLE RULES
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`37 C.F.R. § 42.122(b) states in pertinent part:
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`Request for joinder. Joinder may be requested by a patent owner or petitioner.
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`Any request for joinder must be filed, as a motion under § 42.22, no later than
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`one month after the institution date of any inter partes review for which
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`joinder is requested.
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`II. RELIEF REQUESTED
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`In this Motion, Petitioner Eizo requests that the Second Petition be joined
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`with the First Petition.
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`III. STATEMENT OF MATERIAL FACTS
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`1.
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`Patent Owner Barco N.V. (“Barco”) filed a patent infringement action
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`against Eizo on September 2, 2011, alleging infringement of U.S. Patent No.
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`03220.23279/6112949.2
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`IPR2014-00778
`Motion for Joinder
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`7,639,849 ("the ‘849 patent") in the Northern District of Georgia, Atlanta Division,
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`Case No. 1:11-CV-2964 (“the Litigation”). Over three months later, Patent Owner
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`surrendered its patent and filed a broadening reissue application of the ‘849 patent
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`in the United States Patent & Trademark Office ("USPTO") on December 28,
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`2011. The broadening reissue application sought to add new claims 38-115 while
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`leaving original claims 1-37 unchanged.
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`2.
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`In light of the reissue initiated by Barco, Eizo asked the Court to stay
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`the proceedings of the Litigation. Eizo’s reasons for seeking the stay included: (1)
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`with the patent under review by the USPTO, the scope of the patent and
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`number/scope of final claims were unsettled; (2) until the scope of the patent is
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`settled by the USPTO, litigation is premature, a waste of resources, and would
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`force the parties to litigate a patent that could well be gone by the conclusion of the
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`litigation; (3) courts routinely grant stays when no trial date has been set and the
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`case is in the early stages of discovery; and (4) there is no prejudice to either party
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`to litigate the case once the patent has been finalized. The Court agreed with Eizo
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`and stayed the matter on April 20, 2012. The stay remains in place.
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`3.
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`Eizo prepared and filed a request for inter partes reexamination (the
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`“IP Reexam”) on July 18, 2012, seeking reexamination of all 37 of the original
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`claims of the '849 patent.
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`03220.23279/6112949.2
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`IPR2014-00778
`Motion for Joinder
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`4. While the decision on whether or not to grant the request for the IP
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`Reexam remained pending, the USPTO issued a first action Notice of Allowance
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`in the broadening reissue application on August 2, 2012, finding all 115 claims
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`allowable without rejecting any of the claims over prior art. The broadening
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`reissue application issued as U.S. Patent No. RE 43,707 (“the ‘707 patent”) on
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`October 2, 2012, with the original claims 1-37 and newly added claims 38-115
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`unchanged during prosecution.
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`5.
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`Since the '707 patent issued prior to the grant of the IP Reexam, the
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`USPTO considered whether to grant the request for the IP Reexam based on the
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`original claims 1-37 as well as claims 38-115 added in the reissue. The USPTO
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`issued an Order on October 15, 2012 granting reexamination of original claims 1-
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`35 and 37 as well as claims 38-45, 47-53, 55-63, 83, 84, 89, 90, 95-97, 105, 106
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`and 108-115 added by reissue concurrently with an Office Action rejecting the
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`claims. Barco filed a Response on December 17, 2012, adding new claims 116-
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`120.
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`6.
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`At the time that the IP Reexam was granted on October 15, 2012,
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`inter partes reexamination was no longer an available procedure at the USPTO. In
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`addition, under the Rules at the time, an inter partes review of the ‘707 patent was
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`unavailable until nine months after its issue date of October 2, 2012, which was
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`July 2, 2013.
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`03220.23279/6112949.2
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`IPR2014-00778
`Motion for Joinder
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`7. With no option to file an inter partes procedure for any of the claims
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`of the ‘707 patent until July 2, 2013, Eizo filed a request on December 28, 2012,
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`for an ex parte reexamination (“Ex Parte Reexam”) of claims 36, 46, 54, 64-82,
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`85-88, 91-94, 98-104, and 107 of the ‘707 patent (collectively, the “Ex Parte
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`Reexam Claims”), which were the claims not included in the IP Reexam.
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`8.
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`On January 17, 2013, Barco amended its complaint in the Litigation,
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`asserting infringement of the ‘707 patent for the first time.
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`9.
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`On March 19, 2013, the USPTO granted the request for Ex Parte
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`Reexam on all grounds and issued a Non-Final Office Action rejecting all of the
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`Ex Parte Reexam Claims.
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`10. Barco filed a Response to the Non-Final Office Action in the Ex Parte
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`Reexam on May 18, 2013 that amended claims 66, 67, 76, 80-82, 85, 91, 100 and
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`101, canceled claim 92, and added new claims 121-135. Claims 121-135 were
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`renumbered as claims 116-130, respectively.
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`11. On September 20, 2013, the USPTO issued a Final Office Action in
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`the Ex Parte Reexam in which claims 64, 65, 67-73, 77-79, 81, 82, 91, 98 and 99
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`remained rejected, new claims 116-118 were rejected, claims 36, 46, 54, 66, 74-76,
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`80, 85-88, 93, 94, 100-104 and 107 were confirmed, and new claims 119-130 were
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`found patentable.
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`03220.23279/6112949.2
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`IPR2014-00778
`Motion for Joinder
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`12. Barco filed a Response to the Final Office Action in the Ex Parte
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`Reexam on November 20, 2013, seeking to amend claims 68, 71, 74, 98, 117, and
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`118 and to cancel claims 67, 81, 82, and 116, and then filed a corrected Response
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`on November 22, 2013, to correct the formatting of the claim amendments.
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`13. On December 23, 2013, the USPTO issued an Advisory Action in the
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`Ex Parte Reexam withdrawing the rejections of claims 68-73, 98, 99, 117, and 118
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`and maintaining the rejections of claims 64, 65, 77-79 and 91.
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`14. Barco filed a Response to the Advisory Action in the Ex Parte
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`Reexam on January 7, 2014, amending claims 64, 65, 77, 79, and 91.
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`15. As of January 17, 2014, which was one year from the date that Barco
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`had amended its complaint to assert infringement of the ‘707 patent for the first
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`time, the USPTO had not issued a decision regarding the entry of the amendments
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`to claims 64, 65, 77, 79, and 91. Without knowing whether the amendments would
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`or would not be entered, Eizo filed the First Petition on January 17, 2014 seeking
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`inter partes review of claims 36, 46, 54, 64, 65, 77-79, 93, 94, 101-104, and 107 of
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`the ‘707 patent. As of January 17, 2014, claims 36, 46, 54, 64, 65, 77-79, 93, 94,
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`102-104, and 107 had not been amended. Claim 101 had been amended to be in
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`independent form, and thus had the same scope as original claim 101. The First
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`Petition did not seek inter partes review of claims 66, 68-76, 80, 85-88, 91, 98-100
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`and 116-129 because these claims had been amended or added during the Ex Parte
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`03220.23279/6112949.2
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`IPR2014-00778
`Motion for Joinder
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`Reexam and could not be subject to inter partes review until a Reexamination
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`Certificate was issued.
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`16. Before the USPTO issued a decision on whether to enter the
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`amendments in Barco’s Response of January 7, 2014, Barco filed another
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`Response in the Ex Parte Reexam on January 28, 2014, seeking to cancel claims
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`77-79, 93 and 94.
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`17. On February 26, 2014, the USPTO issued a Notice of Intent to Issue
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`Ex Parte Reexamination Certificate. The Notice identified the status of the claims
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`as follows: claims 36, 46, 54 and 107 were confirmed; claims 64-66, 68-76, 80,
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`85-88, 91, and 98-104 were amended; claims 67, 77-79, 81, 82, and 92-94 were
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`canceled; new claims 117-130 were found patentable; and new claim 116 was
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`canceled.
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`18. The Ex Parte Reexamination Certificate issued on March 31, 2014.
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`Because new claim 116 had been canceled, claims 117-130 were renumbered as
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`claims 116-129, respectively, in the Ex Parte Reexamination Certificate.
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`19. On April 4, 2014, the USPTO issued an Action Closing Prosecution
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`(“ACP”) in the IP Reexam in which all pending claims remained rejected except
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`for claims 20 and 21. Barco subsequently Filed Comments after ACP on May 5,
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`2014, seeking to cancel claims 1-5, 7, 8, 10, 11, 14, 15, 17-19, 22-24, 27-30, 33,
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`03220.23279/6112949.2
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`IPR2014-00778
`Motion for Joinder
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`34, 37-45, 47-49, 53, 55-63, 83, 84, 89, 90, 95-97, 105, 106, and 116-120 and
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`amend claims 6, 12, 13, 31, 32, 35, 50, 108, and 114.
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`20. Eizo filed the Second Petition on May 20, 2014 seeking the inter
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`partes review of claims 64-66, 68-76, 80, 85-88, 91, 98-100 and 116-129. Each of
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`these claims had been amended or added by Barco during the Ex Parte Reexam
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`and could not have been the subject of the First Petition.
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`IV. ARGUMENT
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`
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`The Board has authority under 35 U.S.C. § 315(c) to join a properly-filed
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`second inter partes review petition to a related inter partes review proceeding. This
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`request for joinder is timely and the time periods set forth in 37 C.F.R. § 42.101(b)
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`do not apply to the Second Petition because of this request for joinder. 37 C.F.R. §
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`42.122(b).
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`
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`This request for joinder should be granted because it will be more efficient
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`to conduct the inter partes review as part of a single proceeding, there is no
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`discernible prejudice to either party, and Petitioner has been diligent and timely in
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`filing the motion and Second Petition.
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`A. GRANTING THE MOTION WOULD MAKE CONDUCTING
`THE REVIEWS MORE EFFICIENT
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`
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`Granting this joinder of the First and Second Petitions will make conducting
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`the inter partes review more efficient for the Board and for the parties. Both
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`Petitions involve the same patent, the ‘707 patent. Both Petitions also involve the
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`03220.23279/6112949.2
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`IPR2014-00778
`Motion for Joinder
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`same parties, Eizo and Barco. Moreover, not only do the claims in the two
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`Petitions share claim limitations in common, but there is a substantial overlap of
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`the prior art cited in the two Petitions.1 Given the two Petitions involve the same
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`patent, the same parties, common claim limitations and common prior art, it would
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`be a waste of resources to have separate proceedings handled by different panels to
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`conduct the review of the two Petitions.
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`B. NO PREJUDICE
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`
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`Granting the joinder of the First and Second Petitions would not prejudice
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`the parties or the proceedings of the two Petitions. In particular, the grounds for
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`invalidating the claims of the two Petitions rely on many of the same references,
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`thus minimizing the burden of the parties in analyzing the prior art. Similarly,
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`since the claims of the two Petitions share multiple common limitations, the
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`number of issues raised by the joinder of the Petitions will not be substantially
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`increased.
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`The joinder of the Petitions would also not prejudice the conduct of the
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`reviews or the Litigation. The Petitions were filed within four months of each
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`other, so there would not be much if any delay from granting the joinder. In
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`1 For example, claim 101 in the Second Petition depends from claim 100 in the
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`First Petition, and thus includes all of the limitations of claim 100. In addition,
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`both petitions rely on the Kamada, Nakai, Mizukoshi, and Greene references.
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`03220.23279/6112949.2
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`IPR2014-00778
`Motion for Joinder
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`addition, the Litigation has remained stayed because of the ongoing USPTO
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`proceedings involving the ‘707 patent, which includes the still pending IP Reexam.
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`Given the accelerated process of inter partes review as compared to inter partes
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`reexamination and the still pending IP Reexam of the ‘707 patent, any delay from
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`granting the joinder will have little if any impact on the timing for a potential
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`lifting of the stay and thus not prejudice either party.
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`C.
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`PETITIONER EIZO HAS BEEN DILIGENT AND TIMELY IN
`FILING THE SECOND PETITION AND THIS MOTION
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`Eizo has been diligent in filing the Second Petition and timely in filing this
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`motion to join the First and Second Petitions. As explained above, the claims in
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`the Second Petition for which Eizo is seeking review only became subject to a
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`potential inter partes review when they issued in the Reexamination Certificate on
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`March 31, 2014. Eizo prepared and filed the Second Petition less than two months
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`after the issue date of the Reexamination Certificate and within four months of the
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`filing date of the First Petition. Accordingly, Eizo has in no way unduly delayed
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`seeking inter partes review of the claims in the Second Petition.
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`In addition, Eizo has filed this motion within the time required by 37 C.F.R.
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`§ 42.122(b).
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`03220.23279/6112949.2
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`IPR2014-00778
`Motion for Joinder
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`V. CONCLUSION
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`For the foregoing reasons, Eizo asks that the motion for joinder of the Second
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`Petition with the First Petition be granted.
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`Respectfully submitted,
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`Eizo Corporation,
`Petitioner
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`By: /Marc K. Weinstein/
`Marc K. Weinstein
`Registration No. 43,250
`QUINN, EMANUEL, URQUHART & SULLIVAN, LLP
`Tel: +813-5510-1711
`Fax: +813-5510-1712
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`03220.23279/6112949.2
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`10
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`U.S. Patent RE43,707
`Petition for Inter Partes Review
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that, on July 21, 2014, I caused a true and correct copy
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`of the foregoing Motion for Joinder to Related Inter Partes Review (37
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`C.F.R. § 42.122(b)) to be served via FedEx Priority Overnight on the
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`following:
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`Kerry T. Hartman
`Hartman Patents PLLC
`3399 Flint Hill Pl.
`Woodbridge, VA 22192
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`By: /Marc K. Weinstein/
`Marc K. Weinstein
`Registration No. 43,250
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`03220.23279/6112949.2
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