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