`Case No. IPR2014-01409
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`MICRO MOTION, INC.
`Petitioner
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`v.
`INVENSYS SYSTEMS, INC.
`Patent Owner
`
`Patent No. 7,571,062
`Issue Date: August 4, 2009
`Title: DIGITAL FLOWMETER
`_______________
`
`Case No. IPR2014-01409
`____________________________________________________________
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`PETITIONER’S MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
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`4852-5108-9694.2
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`
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`Patent No. 7,571,062
`Case No. IPR2014-01409
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`I. RELIEF REQUESTED
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`Petitioner Micro Motion, Inc. hereby moves for joinder of IPR2014-01409
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`(petition filed today) with IPR2014-00393 (trial instituted on Aug. 4, 2014).
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`Moreover, to the extent the Board wishes to maintain synchronization of trial
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`schedules among IPR2014-00390, IPR2014-00392, IPR2014-00393 beyond the
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`one-year period under 35 U.S.C. § 316(a)(11), Petitioner Micro Motion further
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`moves for joinder of IPR2014-01409 with IPR2014-00390 (trial instituted on Aug.
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`4, 2014) and IPR2014-00392 (trial instituted on Aug. 4, 2014).
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`II. AUTHORIZATION FOR THIS MOTION
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`Prior Board authorization is not required under the Trial Practice Guide for
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`“motions filed with a petition.” 77 Fed. Reg. 48756, 48762 (Aug. 14, 2012).
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`Thus, when a “petition is accompanied by a request for joinder” under 37 C.F.R.
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`§ 42.122(b), prior Board authorization is not required. See IPR2014-00781 (Paper
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`5) (“[P]rior authorization for filing a motion for joinder—prior to one month after
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`the institution date of any inter partes review for which joinder is requested—is
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`not required.”).
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`III.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On January 31, 2014, Petitioner filed a petition (“First Petition”) for
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`inter partes review of claims 1, 12, 13, 23-25, 29, 30, 36, 40, 43, and 45 of U.S.
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`Patent No. 7,571,062 (“the ’062 patent”), which was assigned case number
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`IPR2014-00393. The First Petition was accompanied by a single declaration of Dr.
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`Michael D. Sidman.
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`2.
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`Around the same time that Petitioner filed the First Petition in
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`IPR2014-00393, Petitioner also filed petitions for inter partes review of U.S.
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`Patent No. 6,754,594 (Case No. IPR2014-00390), filed on January 30, 2014, and
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`U.S. Patent No. 8,000,906 (Case No. IPR2014-00392) filed on January 29, 2014.
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`3.
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`On August 4, 2014, the Board entered a decision (“Decision”) in
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`IPR2014-00393 instituting trial on claims 1, 29, 40, and 45. The Decision did not
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`institute an inter partes review of dependent claims 12, 13, 23-25, 30, 36, and 43.
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`4.
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`More specifically, the Decision in IPR2014-00393 instituted trial on
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`claims 1, 29, 40, and 45 on the following grounds proposed in the First Petition:
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`a. Claims 1, 29, 40, and 45 as anticipated by Romano1 under 35 U.S.C.
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`§ 102;
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`b. Claims 40 and 45 as obvious in view of Kalotay2 under 35 U.S.C.
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`§ 103; and
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`c. Claims 40 and 45 as anticipated by Miller3 under 35 U.S.C. § 102.
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`1 U.S. Patent No. 4,934,196 (issued June 19, 1990) (“Romano”).
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`2 U.S. Patent No. 5,009,109 (issued Apr. 23, 1991) (“Kalotay”).
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`5.
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`Regarding Romano, the Decision found that the First Petition
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`demonstrated a reasonable likelihood that Romano anticipates claims 1, 29, 40, and
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`45. But the Decision found that the First Petition did not demonstrate a reasonable
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`likelihood that Romano discloses the additional element in claims 24 and 43 which
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`requires a digital flowmeter having a control and measurement system that applies
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`a negative gain to reduce motion of the conduit.
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`6.
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`Regarding Kalotay, the Decision found that the First Petition
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`demonstrated a reasonable likelihood that Kalotay alone renders obvious claims 40
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`and 45. But the Decision found that Kolatay’s use of “analog” signal processing
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`does not demonstrate a reasonable likelihood that claim 1 is obvious, because the
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`flowmeter of claim 1 “use[s] digital processing to adjust a phase of the drive signal
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`to compensate for a time delay associated with components connected between the
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`sensor and the driver.” For this same reason, claims 12, 23-25, 29, and 36 were
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`found not to be obvious over Kalotay alone due to their dependency from claim 1.
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`7.
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`Regarding Miller, the Decision found that the First Petition
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`demonstrated a reasonable likelihood that Miller anticipates claims 40 and 45.
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`8.
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`On August 4, 2014, the Board also instituted trial in IPR2014-00390
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`and IPR2014-00392.
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`3 U.S. Patent No. 4,679,947 (issued July 14, 1987) (“Miller”).
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`9.
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`On even date herewith, Petitioner filed a petition (“Second Petition”)
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`for inter partes review (Case No. IPR2014-01409) challenging independent claim
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`1 and dependent claims 12, 23-25, 29, 36 (which depend from claim 1) and claim
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`43 (which depends from claim 40). The grounds of invalidity presented in the
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`Second Petition are premised upon the same references (Kalotay and Romano) that
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`were cited in the First Petition which the Board found to establish a reasonable
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`likelihood of unpatentability of claims 1, 29, 40, and 45, but the arguments based
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`on those references are different from those presented in the First Petition. The
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`Second Petition was accompanied by a single declaration of Dr. Michael D.
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`Sidman, who is the same expert who submitted a declaration in connection with
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`the First Petition.
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`10. More particularly, the Second Petition presents a single ground of
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`unpatentability: claims 1, 12, 23-25, 29, 36, and 43 are obvious under 35 U.S.C.
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`§ 103(a) over the combination of Kalotay and Romano. As further evidence of the
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`level of skill in the art, the Second Petition cites Zolock,4 Hulsing,5 Astrom &
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`Wittenmark6 to show specifically that the use of digital signal processing to
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`4 U.S. Patent No. 5,231,884.
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`5 U.S. Pat. No. 4,799,385.
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`6 “Computer Controlled Systems Theory and Design,” Astrom & Wittenmark,
`Prentice-Hall 1984.
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`compensate for delays was well known in the Coriolis prior art. Each of Zolock,
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`Hulsing, Astrom & Wittenmark were previously cited in the First Petition. While
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`the First Petiton cited all of these references, it did not argue the unpatentability of
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`any of claims 1, 12, 23, 24, 25, 29, 36 or 43 based on obviousness in light of a
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`combination of Kalotay and Romano.
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`IV. LEGAL AUTHORITY
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`The statutory provision governing joinder of inter partes reviews is
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`35 U.S.C. § 315(c), which reads as follows:
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`(c) JOINDER.—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 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.
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`The regulation governing joinder of inter partes reviews is 37 C.F.R.
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`§ 42.122(b), which reads as follows.
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`(b) Request for Joinder. Joinder may be requested by a patent owner
`or petitioner. Any request for joinder must be filed, as a motion under
`§ 42.22, no later than one month after the institution date of any inter
`partes review for which joinder is requested. The time period set forth
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`in § 42.101(b) shall not apply when the petition is accompanied by a
`request for joinder.
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`The Board has explained that “[a] motion for joinder should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified.” IPR2014-00781 (Paper 5).
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`V. DISCUSSION
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`A.
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`Reasons Why Joinder Is Appropriate
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`This motion is timely under 37 C.F.R. § 42.122(b) because it was filed no
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`later than one month after the institution date in IPR2014-00390, IPR2014-00392,
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`and IPR2014-00393. Specifically, trial was instituted on August 4, 2014, and the
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`instant motion was filed on or before September 4, 2014. Petitioner has been
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`diligent in filing this motion. See IPR2013-00250 (Paper 24) (finding petitioner
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`Ariosa was “diligent and timely in filing the [joinder] motion,” which Ariosa filed
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`exactly one month after the first proceeding was instituted).
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`Moreover, as the petitioner in both IPR2014-00393 and the presently-filed
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`inter partes review, Petitioner Micro Motion may properly request joinder. This is
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`because 35 U.S.C. § 315(c) allows “any person” who properly files a petition to be
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`joined as a party to an inter partes review. The Board has therefore held that
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`§ 315(c) “allow[s] joinder of additional grounds by the same party.” IPR2013-
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`00250 (Paper 24); see also IPR2013-00109 (Paper 15).
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`Finally, the litigation involving the ’062 patent, Invensys Systems, Inc. v.
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`Emerson Electric Co. et al., CA. No. 6:12-cv-00799-LED (E.D. Tex.), does not bar
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`the presently-filed inter partes review. The Board has explained that “[t]he one-
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`year time bar” for filing an inter partes review after being served with an
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`infringement complaint “does not apply to a request for joinder.” IPR2013-00250
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`(Paper 24) (citing 35 U.S.C. § 315(b)). As was the case in Microsoft Corp. v.
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`Proxyconn, Inc., IPR2013-00109 (Paper 15), the fact that the one-year time bar
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`does not apply to a request for joinder “is an important consideration here,”
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`because Micro Motion was served with a complaint asserting infringement of the
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`’062 patent more than a year ago, and thus “absent joinder of this proceeding with
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`[the previously instituted proceeding], the [S]econd Petition would be barred.” Id.
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`B.
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`Identification Of Any New Grounds
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`The Second Petition asserts a single ground of obviousness (combination of
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`Kalotay and Romano in light of the teaching of other prior art) against independent
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`claim 1 and dependent claims 12, 23-25, 29, 36, 43, each of which depends from
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`independent claims 1 and 40, both of which were found to be likely unpatentable
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`over these same references. Specifically, the Decision held that independent
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`claims 1 and 40 were likely anticipated by Romano and that independent claim 40
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`was likely obvious over Kalotay. The Second Petition combines these two
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`references into an obviousness rejection. In the First Petition, Petitioners argued
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`that Kalotay itself disclosed “us[ing] digital signal processing to adjust a phase of
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`the drive signal to compensate for a time delay associated with components
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`connected between the sensor and the driver” as required by claim 1 and its
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`dependent claims. The Board found that Kalotay itself did not disclose everything
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`these limitations of claim 1 require. In this petition, Petitioners argue that Kalotay
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`discloses some but not all of what these limitations of claim 1 require, and rely on
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`the combination of Kalotay with other prior art to provide all of the required
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`limitations and the motivation to combine them. Specifically, in the Second
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`Petition, Petitioners argue that Kalotay teaches (a) the presence of “components
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`connected between the sensor and the driver” with which “a time delay” would be
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`“associated”; (b) the use of “digital signal processing” to generate a “drive signal”;
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`and (c) motivations for one to use the digital signal processing capabilities of
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`Kalotay’s microprocessor to “adjust a phase of the drive signal to compensate” for
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`those delays. But in this Second Petition, Petitioners do not argue that Kalotay
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`itself teaches the actual use of its disclosed digital signal processing capabilities to
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`adjust a phase of a drive signal to compensate for those delays. Rather, in this
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`Second Petition, Petitioners rely on the facts that (d) the need to use, and the actual
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`use of, digital signal processing to compensate for time delays caused by
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`components was well known in the digital signal processing prior art in general
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`and in the digital Coriolis flowmeter prior art in particular; and (e) as found by the
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`Board in response to the First Petition, Romano specifically teaches the “use [of]
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`digital signal processing to adjust a phase of the drive signal to compensate for a
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`time delay associated with components connected between the sensor and the
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`driver” in a Coriolis flowmeter. Moreover, the Second Petition relies on the same
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`expert declarant (Dr. Michael D. Sidman) who submitted a declaration in the First
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`Petition.
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`Thus, there is substantial overlap between the issues the Board will be
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`considering in the trial of the issues raised by the First Petition with those sought to
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`be raised in the Second Petition. For example, both proceedings would consider
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`what is or is not disclosed in both the Kalotay reference and the Romano reference.
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`In particular, both proceedings would consider whether Romano teaches the “use
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`[of] digital signal processing to adjust a phase of the drive signal to compensate for
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`a time delay associated with components connected between the sensor and the
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`driver” in a Coriolis flowmeter. Further, both proceedings would consider whether
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`Kalotay discloses all of the limitations of claim 40 (on which trial has already been
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`initiated in response to the First Petition), because claim 43 (challenged in the
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`Second Petition) depends from claim 40.
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`The Second Petition raises even fewer new issues than other inter partes
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`reviews in which the Board has allowed joinder of a second petition filed by the
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`same petitioner. For example, in Ariosa Diagnostics v. Isis Innovation Ltd.,
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`IPR2012-00022 (Paper 24), the Board granted trial on Ariosa’s first petition as to
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`(1) anticipation by Lo, (2) obviousness over Lo and Simpson , (3) anticipation by
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`Kazakov, and (4) obvious over of Simpson, Schallhammer, and Kazakov; but
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`denied the first petition as to (5) anticipation by Kazakov and (6) obviousness over
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`Gocke, Robbins, and Simpson. Petitioner Ariosa then filed a second petition
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`(IPR2013-00250 (Paper 1)), requesting joinder with IPR2012-00022, wherein the
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`second petition raised the following new grounds and new references against
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`additional claims: (1) obviousness over Kazakov and Bianchi, (2) obviousness
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`over Kazakov and Mutter, (3) anticipation by Lo, (4) obviousness by Lo, Lo II,
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`and Lo III, (5) obviousness over Simpson, Schallhammer, Kazakov and Bianchi,
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`(6) obviousness over Simpson, Schallhammer, Kazakov and Mutter, and (7)
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`anticipation by Kazakov. Despite the four new references cited among seven new
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`grounds of unpatentability, Ariosa argued in support of joinder that “[t]he second
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`petition raises a limited number of new issues in that the grounds of invalidity
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`presented in the second petition are premised upon the same the grounds adopted
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`by in the Decision and add only references necessary to meet the additional
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`recitations of claims 3, 12, 13, 15 and 18.” IPR2013-00250 (Paper 4).
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`The Board granted Ariosa’s motion for joinder, finding that the second
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`petition “involves much of the same prior art that was relied upon in IPR2012-
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`00022.” IPR2013-00250 (Paper 24). Specifically, the Board noted that “[t]he only
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`additional prior art cited in the instant proceeding was added to address the
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`limitations of the dependent claims.” The Board also noted that “the Declarations
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`relied upon by Ariosa in the instant proceedings were made by Declarants, i.e., Dr.
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`Mansfield and Prof. Kazakov, who also submitted Declarations that were relied
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`upon by Ariosa in IPR2012-00022.” Id.
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`Here, Petitioner Micro Motion’s Second Petition asserts only one ground of
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`unpatentability and no new prior art references. Moreover, the Second Petition
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`relies on only a single expert declarant (Dr. Michael D. Sidman), who is the same
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`expert who submitted a declaration with the First Petition. The instant motion
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`therefore presents a simpler case for joinder than the successful motion in Ariosa.
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`C.
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`Impact On Trial Schedule
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`Petitioner believes that joinder of the instant proceeding with IPR2014-
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`00393 (and, if necessary, with IPR2014-00390 and IPR2014-00392) will not
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`unduly delay the already-instituted proceedings. Like the petitioner in Ariosa
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`Diagnostics v. Isis Innovation Ltd., IPR2012-00022 (Paper 4), Petitioner Micro
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`Motion is willing to forfeit a reasonable portion of its response period to the extent
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`that is deemed necessary to provide Patent Owner sufficient time to address the
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`additional issues raised in the Second Petition. Petitioner will also accommodate
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`any reasonable logistical or scheduling request of Patent Owner in order to
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`accommodate joinder of the proceedings, including offering Dr. Sidman to be
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`cross-examined in a single deposition in IPR2014-01409, IPR2014-00390,
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`IPR2014-00392, and IPR2014-00393, rather than in multiple depositions.
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`The Board in Ariosa Diagnostics v. Isis Innovation Ltd. found that joinder
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`would not cause “undue delay” insofar as joinder would “only add 6 additional
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`weeks beyond the original Scheduling Order.” IPR2013-00250 (Paper 24). This
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`“6 additional weeks” refers to the adjustment to Due Date 7 (oral argument) as a
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`result of joinder of IPR2013-00250 with IPR2012-00022. See IPR2012-00022
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`(Paper 37) (scheduling order). The adjustment to Due Date 1 was 90 days. Id.
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`Here, Petitioner would be amenable to similar schedule adjustments as in Ariosa.
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`The trial schedule in IPR2014-00393 is presently synchronized with the
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`schedules in IPR2014-00390 and IPR2014-00392, each of which involves the same
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`expert (Dr. Sidman), similar Coriolis technology, and overlapping prior art
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`references (including Romano and Kalotay). To the extent the Board wishes to
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`maintain synchronization of trial schedules among IPR2014-00390, IPR2014-
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`00392, IPR2014-00393 beyond the one-year period under 35 U.S.C. § 316(a)(11),
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`Petitioner Micro Motion further moves for joinder of IPR2014-01409 with both
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`IPR2014-00390 and IPR2014-00392.
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`Finally, it should be noted that 35 U.S.C. § 316(a)(11) provides that “the
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`Director may, for good cause shown, extend the 1-year period [for issuing a final
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`written decision in an inter partes review] by not more than 6 months, and may
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`adjust the time periods in this paragraph in the case of joinder under section
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`315(c).” Thus, under the statute, an adjustment of the time periods “in the case of
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`joinder” is not limited to instances of “good cause” and is not limited to extensions
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`by only 6 months. Moreover, under 37 C.F.R. § 42.100(c), adjustment “in the case
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`of joinder” does not require approval by the Chief Judge. Id. (“The time can be
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`extended by up to six months for good cause by the Chief Administrative Patent
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`Judge, or adjusted by the Board in the case of joinder.”) (emphasis added).
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`D.
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`Simplification Of Briefing And Discovery
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`Presently, no briefing or discovery has taken place in IPR2014-00390,
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`IPR2014-00392, and IPR2014-00393 since trial was only recently instituted.
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`Therefore, briefing and discovery can each take place simultaneously with briefing
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`and discovery in the presently-filed proceeding, assuming joinder is allowed and
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`the time periods are adjusted as proposed above. As in the case of joinder in
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`Ariosa Diagnostics v. Isis Innovation Ltd., IPR2013-00250 (Paper 24), “joinder of
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`the proceedings will allow for a single deposition, rather than multiple depositions,
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`of the same witnesses.”
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`Respectfully submitted,
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`Dated: September 4, 2014
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`By:
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`/Andrew S. Baluch /
`Andrew S. Baluch
`Registration No. 57,503
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Motion for Joinder was served on September 4, 2014 by placing a copy into
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`FEDERAL EXPRESS directed to the attorneys of record for the patent at the
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`following address:
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`Invensys Intellectual Property Department
`33 Commercial Street
`B51-2J
`Foxboro, MA 02035
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`By:
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`/Michelle A. Moran/
`Michelle A. Moran
`Foley & Lardner LLP
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