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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`ARTSANA USA, INC.
`Petitioner
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`v.
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`KOLCRAFT ENTERPRISES, INC.
`Patent Owner
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`___________
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`Case IPR2015-00582
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`Patent 8,388,501
`___________
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`MOTION FOR JOINDER TO RELATED
`INSTITUTED INTER PARTES REVIEW (37 C.F.R. § 42.122(b))
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`TABLE OF CONTENTS
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`STATEMENT OF RELIEF REQUESTED ........................................................... 1
`I.
`II. STATEMENT OF MATERIAL FACTS ................................................................ 1
`III. LEGAL STANDARDS AND APPLICABLE RULES ........................................... 4
`IV. ARGUMENT .......................................................................................................... 5
`A. Joinder is Appropriate in this Case .............................................................. 5
`B. No “New” Grounds of Unpatentability are Asserted in the Second
`Petition .......................................................................................................... 6
`C. Joinder Will Not Result in Unnecessary Delay ............................................ 7
`V. CONCLUSION....................................................................................................... 8
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`i
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §42.122(b), Petitioner Artsana
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`USA, Inc. (“Artsana” or “Petitioner”) files this Motion for Joinder of the
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`concurrently filed Second Petition for Inter Partes Review (“Second Petition”),
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`with the previously instituted inter partes review styled as Artsana USA, Inc. v.
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`Kolcraft Enterprises, Inc., Case No. IPR2014-01053("First IPR Proceeding").
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On July 8, 2013, Patent Owner, Kolcraft Enterprises, Inc. (“Kolcraft”
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`or “Patent Owner”), filed suit against Petitioner, in a case styled Kolcraft
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`Enterprises, Inc. v. Artsana USA, Inc., No. 1:13-cv-04863 (N.D. Ill.) (“Co-Pending
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`Litigation”), asserting at least claims 1, 9, and 14 of U.S. Patent No. 8,388,501
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`(“the ‘501 patent”). Petitioner was served with Patent Owner’s Complaint on July
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`11, 2013.
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`2.
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`On June 27, 2014 Petitioner filed a Petition for Inter Partes Review
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`(hereinafter, “First Petition”) requesting review of claims 1-20 of the ‘501 Patent,
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`now instituted as Artsana USA, Inc. v. Kolcraft Enterprises, Inc., Case No.
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`IPR2014-01053 (i.e., “First IPR Proceeding”). In its First Petition, Petitioner
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`raised seven grounds of unpatentability based on five prior art references:
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`(1) U.S. Patent No. 3,223,098 to Dole (“Dole”) (Ex. 1003);
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`(2) U.S. Patent No. 2,948,287 to Rupert (“Rupert”) (Ex. 1006);
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`1
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`(3) The Graco Pack ‘N Play Model No. 386-11-01 Owner’s Manual
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`(“Graco”) (Ex. 1004);
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`(4) The Century Fold-n-Go Care Center Manual (“Century”) (“Ex. 1005);
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`and
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`(5) A certified copy of the publication of Tyco’s Sesame Street Cozy
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`Quilt Gym, which was taken from the Declaration of Denny Conley
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`and accompanying Exhibits filed on July 18, 1995 in a litigation
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`styled, Tyco Industries, Inc. v. TinyLove, LTD and The Maya Group,
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`Inc, (D.N.J. 1995) (No. 95-1135) (Ex. 1009)1.
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`3.
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`4.
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`On September 15, 2014, the Co-Pending Litigation was stayed.
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`On December 19, 2014, the Board instituted the First IPR Proceeding
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`on claims 1-5 and 8 of the ‘501 patent based on Ground 3 from the First Petition;
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`however, the Board did not authorize inter partes review on Grounds 4-7 because
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`they were based in part on Tyco, Ex. 1009, which the Board concluded “ha[d] not
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`been established to be a patent or printed publication.” Ex. 1017 at p. 29-33.
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`Shortly after institution of the First IPR Proceeding, the Board issued a Scheduling
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`Order (see IPR2014-01053, Paper 15). Patent Owner’s response to the First
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`Petition is not due until March 12, 2015. Id. at pg. 6.
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`1Throughout this motion, Petitioner refers to this reference from the First Petition
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`as “Tyco, Ex. 1009.”
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`2
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`5.
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`On December 31, 2014, Petitioner filed a Request for Rehearing (First
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`IPR Proceeding, Paper 16) seeking reconsideration of the determinations: (1) that
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`Tyco, Ex. 1009 did not constitute a printed publication, and (2) the refusal to
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`institute a review on Grounds 4-7 as asserted in the Petition. At the time of filing
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`of this Motion for Joinder, Petitioner’s Request for Rehearing remains pending
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`before the Board.
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`6.
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`Petitioner is concurrently filing its Second Petition, challenging
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`claims 1-20 of the ‘501 patent on grounds substantially identical to Grounds 4-7 of
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`the First Petition, with a 1995 Tyco Playtime™ Catalog © 1994 (Ex. 1015) (“Tyco,
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`Exhibit 1015”) which shows the same Tyco Cozy Quilt Gym as Tyco, Ex. 1009
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`that the Board concluded “ha[d] not been established to be a patent or printed
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`publication.” Ex. 1017 at p. 29-33.
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`7.
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`Subsequent to the filing of the First Petition, Petitioner located the
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`Tyco, Exhibit 1015 which Petitioner was unable to locate prior to filing its First
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`Petition.
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`8.
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`Apart from Tyco, Exhibit 1015, Petitioner relies on the same prior art
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`as in the First Petition, namely, Dole, Rupert, Graco, and Century in its proposed
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`obviousness rejections herein.
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`3
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`III. LEGAL STANDARDS AND APPLICABLE RULES
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`The Board has discretion to join a properly-filed second petition for inter
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`partes review to an already instituted inter partes review proceeding. 35 U.S.C. §
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`315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v. Network-1 Sec. Solutions, Inc.,
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`IPR2013-00385, Paper 19, at 4-6; Sony Corp. v. Yissum Res. & Dev. Co. of the
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`Hebrew Univ. of Jerusalem, IPR2013-00326, Paper 15, at 3-4; Microsoft Corp. v.
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`Proxyconn Inc., IPR2013-00109, Paper 15, at 3-4. This request for joinder is
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`timely. The time period set forth in 37 C.F.R. § 42.101(b) does not apply to
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`Petitioner’s Second Petition because it is accompanied by this Motion for Joinder.
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`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). “The Board will determine whether to
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`grant joinder on a case-by-case basis, taking into account the particular facts of
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`each case, substantive and procedural issues, and other considerations.” Dell,
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`IPR2013-00385, Paper 19, at 3.
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`
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`As the moving party, Petitioner has the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). In Dell, the
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`Board held that:
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`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.
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`4
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`Id., IPR2013-00385, Paper 19, at 4. In the case of joinder, the Board may adjust
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`the one-year time period for a final determination in an IPR. Id. at 3; 35 U.S.C. §
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`316(a)(11); 37 C.F.R. § 42.100(c); Microsoft, IPR2013-00109, Paper 15, at 4.
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`IV. ARGUMENT
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`A. Joinder is Appropriate in this Case
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`
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`Joinder of Petitioner’s Second Petition with the First IPR Proceeding is
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`appropriate in this case. Joinder will serve judicial efficiency because the grounds
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`set forth in the Second Petition, based in part on Tyco, Exhibit 1015, cannot
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`otherwise be fully and fairly litigated in the First IPR Proceeding. The Second
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`Petition involves the same patent, the same parties, and substantively the same
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`prior art references as in the First IPR Proceeding. See, e.g., Ariosa Diagnostics v.
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`Isis Innovation Ltd., IPR2013-00250, Paper 24, at pg. 5 (permitting joinder in part
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`because “[t]here is an overlap in the cited prior art”). All proposed grounds set
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`forth in Petitioner’s Second Petition rely on Tyco, Exhibit 1015, which is
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`substantively identical to Tyco, Exhibit 1009 cited in the First Petition, except that
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`there can be no question as to Tyco, Exhibit 1015’s status as a “printed
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`publication.”
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`A final written decision in a joined inter partes review has the potential to
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`resolve the Co-Pending Litigation. See 35 U.S.C. 315(e)(1). Without joinder, both
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`parties will be required to expend significant resources to revisit the validity of the
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`5
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`‘501 patent in view of Tyco, Exhibit 1015, in the Co-Pending litigation, rather than
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`“secure the just, speedy, and inexpensive resolution” of these issues before the
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`Board. See 37 C.F.R. § 42.1(b).
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`Joinder is also appropriate because absent joinder, Petitioner would be
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`prejudiced in this case. Without Joinder, Petitioner’s Second Petition would be
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`barred under 35 U.S.C. § 315(b).
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`
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`Joinder is further supported by public policy considerations and the public
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`interest in seeing invalid patents formally invalidated. The Supreme Court has
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`made clear that there is a strong public policy in favor of rooting out invalid
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`patents. See Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843,
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`851-52 (2014); Lear, Inc. v. Adkins, 395 U.S. 653, 656, 670 (1969).
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`B. No “New” Grounds of Unpatentability are Asserted in the Second
`Petition
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`In the present Second Petition, grounds 1-4 are substantively identical to
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`
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`grounds 4-7 in the First Petition. As discussed above, the only difference is that
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`the grounds set forth in the Second Petition rely upon the undisputable printed
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`publication Tyco, Exhibit 1015, which is virtually identical to the prior Tyco,
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`Exhibit 1009 in the First Petition. Tyco, Exhibit 1015 resolves any question as to
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`whether the Tyco Cozy Quilt Gym was available as a “printed publication.”
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`To the extent the grounds and challenged claims in the Second Petition may
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`be viewed as “new,” in view of the First IPR Proceeding, the Board previously
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`6
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`found no prejudice to either party in granting joinder in such a situation. See
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`Microsoft, IPR2013-00109, Paper 7, pgs. 3-4 (granting joinder of second petition
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`that raised new grounds of unpatentability against patent claims that had been
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`challenged in the first petition (but for which a trial was not instituted) and new
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`grounds of unpatentability against patent claims that were not challenged in the
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`first petition).
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`C. Joinder Will Not Result in Unnecessary Delay
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`Joinder will not unduly delay the First IPR Proceeding. As discussed above,
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`the Second Petition involves the same patent, the same parties, and substantively
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`the same prior art as in the First Petition. Both Patent Owner and the Board are
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`already familiar with the claimed subject matter and prior art. Petitioner’s reliance,
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`in part, on the testimony of the same expert, Jerome J. Drobinski, in both its
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`petitions reduces the number of potential depositions and scheduling concerns. In
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`addition, Mr. Drobinski’s testimony submitted in support of grounds 1-4 of the
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`Second Petition is substantively identical to his testimony submitted in support of
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`grounds 4-7 of the First Petition. Finally, the Second Petition adopts the Board's
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`construction of the challenged claims in the First IPR Proceeding. Exhibit 1017 at
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`pgs. 4-6.
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`Patent Owner’s response to the First Petition is not due until March 12, 2015
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`which is more than seven weeks after the filing of this Motion and the Second
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`7
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`Petition. Petitioner will stipulate to extending the due date for Patent Owner’s
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`response and is also willing to shorten a reasonable portion of its response period
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`to the extent deemed necessary to provide Patent Owner sufficient time to address
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`any additional issues raised in the Second Petition. Finally, the Board is permitted
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`by law to adjust the one-year time for a final determination in an IPR. 35 U.S.C. §
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`316(a)(11); 37 C.F.R. § 42.100(c). Joining the Second Petition with the First IPR
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`Proceeding will not unduly delay resolution of the proceedings and will help
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`“secure the just, speedy, and inexpensive resolution” of the proceedings. 37 C.F.R.
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`§ 42.1(b); 35 U.S.C. § 316(b).
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`V. CONCLUSION
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`For at least the foregoing reasons, Petitioner respectfully requests that the
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`Board grant the present Motion and join Petitioner’s Second Petition with the First
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`IPR Proceeding, IPR2014-01053, under 37 C.F.R. § 42.122(b).
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`
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`Dated: January 20, 2015
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`Volpe and Koenig, P.C.
`United Plaza
`30 South 17th Street
`Philadelphia, PA 19103-4009
`Telephone: (215) 568-6400
`Facsimile: (215) 568-6499
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`Respectfully submitted,
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`By: /Anthony S. Volpe/
`Anthony S. Volpe, Reg. No. 28,377
`Ryan W. O’Donnell, Reg. No. 53,401
`Email: patents@vklaw.com
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`8
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that
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`on January 20, 2015, a complete and entire copy of this Motion for Joinder to
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`Related Instituted Inter Partes Review (37 C.F.R. § 42.122(b)) and all supporting
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`exhibits were provided via UPS, cost prepaid to the Patent Owner by serving the
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`correspondence address of record as follows:
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`HANLEY, FLIGHT & ZIMMERMAN, LLC
`150 S. WACKER DRIVE
`SUITE 2200
`CHICAGO, IL 60606
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`/Anthony S. Volpe/
`Anthony S. Volpe
`Registration No. 28,377
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`Dated: January 20, 2015
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`Volpe and Koenig, P.C.
`30 S. 17th Street, Suite 1800
`Philadelphia, PA 19103
`Tel: 215-568-6400
`Fax: 215-568-6488
`Email: patents@vklaw.com
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`9
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