UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`MERCEDES-BENZ USA, LLC
`Petitioner.
`
`
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`Inter Partes Review of U.S. Patent No. 6,886,956
`
`Issue Date: May 3, 2005
`
`Title: LIGHT EMITTING PANEL ASSEMBLIES FOR
`USE IN AUTOMOTIVE APPLICATIONS AND THE LIKE
`
`Case No.: IPR2015-00994
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`
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.122(b)
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC
`Petitioner.
`
`
`
`Inter Partes Review of U.S. Patent No. 6,886,956
`
`Issue Date: May 3, 2005
`
`Title: LIGHT EMITTING PANEL ASSEMBLIES FOR
`USE IN AUTOMOTIVE APPLICATIONS AND THE LIKE
`
`Case No.: IPR2015-00994
`
`
`
`MOTION FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.122(b)
`
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`
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`
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`TABLE OF CONTENTS
`STATEMENT OF THE PRECISE RELIEF REQUESTED .................. 2
`I.
`STATEMENT OF MATERIAL FACTS ..................................................... 3
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ................. 4
`A.
`Joinder is appropriate because it will not impact the Board’s
`ability to complete the review in a timely manner ............................ 5
`Joinder will promote efficiency by consolidating issues,
`avoiding duplicate efforts, and preventing inconsistencies ............. 6
`Joinder will not prejudice IDT or Toyota .......................................... 6
`C.
`Petitioner Agrees to Assume a Limited Role..................................... 7
`D.
`IV. CONCLUSION .............................................................................................. 8
`
`B.
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`1
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), petitioner Mercedes-
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`Benz USA, LLC (“Petitioner”) respectfully requests that it be joined as a party to the
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`following pending (but not yet instituted) inter partes review proceeding concerning the
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`same patent at issue here, U.S. Patent No. 6,886,956 (“the ’956 Patent”): Toyota Motor
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`Corp. v. Innovative Display Technologies LLC, IPR2015-00829 (the “Toyota IPR”).
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`Petitioner has filed concurrently herewith a “Petition for Inter Partes Review of U.S.
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`Patent No. 6,886,956” in which it asserts the exact same grounds of invalidity as have
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`been raised in the Toyota IPR. This motion is timely under 37 C.F.R. §§ 42.22 and
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`42.122(b) because it is being submitted before the Toyota IPR has been instituted.
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`Petitioner respectfully submits that joinder of these proceedings is appropriate.
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`Joinder will not impact the Board’s ability to complete its review in the statutorily
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`prescribed timeframe. Indeed, the invalidity grounds raised in this IPR are identical to
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`the invalidity grounds raised in the Toyota IPR. Accordingly, joinder will ensure the
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`Board’s efficient and consistent resolution of the issues surrounding the invalidity of
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`the ’956 Patent. Moreover, joinder will not prejudice the Toyota IPR parties because
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`the scope and timing of the Toyota IPR proceeding should remain the same.
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`Petitioner merely requests an opportunity to join with the Toyota IPR as an
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`“understudy” to Toyota, only assuming an active role in the event Toyota settles with
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`Innovative Display Technologies LLC (“IDT” or “Patent Owner”). Thus, joinder
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`2
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`will have no impact on the existing schedule in the Toyota IPR. For these reasons
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`and the reasons outlined herein, joinder should be granted.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`On April 24, 2014, IDT filed a complaint in the United States District
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`Court for the Eastern District of Texas accusing Petitioner and Mercedes-Benz U.S.
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`International, Inc. of infringing several patents, including the ’956 Patent. See
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`Innovative Display Technologies LLC v. Mercedes-Benz U.S. International, Inc. and Mercedes-
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`Benz USA, LLC, 2:14-cv-00535-JRG (E.D. Tex.) (hereinafter, “the Underlying
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`Litigation”).
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`2.
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`In its Complaint, IDT purports to be the owner of the ’956 Patent. See
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`id.
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`3.
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`On March 3, 2015, Toyota Motor Corporation (“Toyota”) filed a
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`petition for inter partes review of the ’956 Patent (the “Toyota Petition”). See IPR2015-
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`00829, Paper 2 (Mar. 3, 2015).
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`4.
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`IDT has asserted the ’956 Patent against Toyota in co-pending litigation
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`in the United States District Court for the Eastern District of Texas. See id. at 54.
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`5.
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`The Toyota Petition includes the following four grounds for invalidity:
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`a)
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`Ground 1: Claims 1, 4-6, 9, and 31 are anticipated over Decker;
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`b) Ground 2: Claims 1, 4-6, 9, and 31 are obvious over Tsuboi in
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`view of Asai, further in view of Gage and Lister;
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`3
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`c)
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`Ground 3: Claim 4 is obvious over Decker in view of Arima; and
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`d) Ground 4: Claim 4 is obvious over Decker in view of Tsuboi.
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`6.
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`The four invalidity grounds raised in Petitioner’s Petition filed in the
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`present IPR proceeding are identical to the four invalidity grounds raised in the
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`Toyota IPR Petition. See Mercedes-Benz USA, LLC, Case No. IPR2015-00994, Paper 1.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`Joinder of inter partes review proceedings is permitted under 35 U.S.C. § 315(c),
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`which provides:
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`(c) JOINDER.—If the Director institutes an inter partes review, the Director,
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`in his or her discretion, may join as a party to that inter partes review any
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`person who properly files a petition under section 311 that the Director, after
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`receiving a preliminary response under section 313 or the expiration of the time
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`for filing such a response, determines warrants the institution of an inter partes
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`review under section 314.
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`35 U.S.C. § 315(c).
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`In deciding whether to allow joinder, the Board takes into account “the
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`particular facts of each case, substantive and procedural issues, and other
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`considerations,” while remaining “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” See Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-
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`00385, Paper No. 17 (July 29, 2013) at 3. The Board also takes into account “the
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`4
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`policy preference for joining a party that does not present new issues that might
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`complicate or delay an existing proceeding.” Id. at 10 (citing 157 Cong. Rec.
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`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
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`“A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
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`(3) explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified.” Id. at 4. An analysis of each of these issues supports joinder.
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`A.
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`Joinder is appropriate because it will not impact the Board’s ability
`to complete the review in a timely manner.
`Joinder is appropriate because it will not impact the Board’s ability to complete
`
`its review of the Toyota IPR within the statutorily prescribed timeframe. This inter
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`partes review proceeding does not raise any new grounds of unpatentability over what
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`has been asserted in the Toyota IPR. Specifically, Petitioner asserts in its petition
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`identical grounds of unpatentability Toyota asserted in the Toyota IPR; Petitioner’s
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`arguments regarding the asserted references are identical to the arguments Toyota
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`raised in the Toyota IPR; and Petitioner has submitted, in support of its petition, the
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`same declaration of the technical expert that Toyota submitted in support of its
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`petition (excluding minor changes made to reflect Petitioner’s engagement of the
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`same expert). Thus, this proceeding does not raise any new issues beyond those
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`already before the Board in the Toyota IPR, which weighs in favor of joinder. See, e.g.,
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`5
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`Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-00385, Paper 17 (July 29, 2013) at 7,
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`10 (granting joinder where unpatentability grounds identical and noting “policy
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`preference for joining a party that does not present new issues that might complicate
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`or delay an existing proceeding”). Moreover, grounds not instituted in the Toyota
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`IPR can be similarly denied in this proceeding.
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`Further, joinder in this proceeding will not affect the Board’s ability to issue its
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`final determination within one year, because Petitioner agrees to a passive
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`“understudy” role and does not raise any new issues in its petition. Indeed, the
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`invalidity grounds in Petitioner’s petition are copied from Toyota’s petition.
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`Petitioner’s presence will not introduce any additional arguments, briefing, or need for
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`discovery. Accordingly, joinder of this proceeding with the Toyota IPR will not
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`require a change to any existing schedule.
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`B.
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`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies.
`Further, joinder is appropriate because it will promote efficiency by avoiding
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`duplicative reviews and filings of the same invalidity issues across multiple PTAB
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`proceedings. Any decision in the Toyota IPR will likely simplify, or even resolve, the
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`issues in the Underlying Litigation. Joinder will also eliminate any risk of inconsistent
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`results and piecemeal review. This also weighs in favor of joinder.
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`C.
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`Joinder will not prejudice IDT or Toyota.
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`6
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`Granting joinder and permitting Petitioner to assume an understudy role will
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`not prejudice IDT or Toyota. Petitioner’s proposed grounds for instituting an IPR
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`are identical to those proposed by Toyota in its petition, and therefore, joinder will
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`not impact the scope or timing of the Toyota IPR. Petitioner and Toyota are relying
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`on the same testimony of the same technical expert to support their respective
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`petitions, further avoiding any potential delay. Petitioner’s limited role will ensure that
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`Toyota and IDT do not suffer any additional cost or burden. Counsel for Toyota
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`have indicated they will not oppose joinder. If joinder is granted, IDT will not have
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`to coordinate with or respond to arguments by more parties in separate proceedings.
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`Petitioner further submits that IDT need not file a Patent Owner’s Preliminary
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`Response to this petition, and requests that the Board proceed without it. Because
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`the invalidity grounds here are exactly the same as the asserted grounds in the Toyota
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`IPR, there is nothing new for IDT to address. Alternatively, the Board can add an
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`additional deadline for IDT to respond to this petition, but this deadline will not
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`impact other deadlines in the schedule.
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`For these reasons, joinder will not prejudice any party, but rather will promote
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`the just, speedy, and inexpensive resolution of these proceedings involving the
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`’956 Patent.
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`D.
`Petitioner Agrees to Assume a Limited Role
`As long as Toyota remains in the IPR proceeding IPR2015-00829, Petitioner
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`agrees to assume a limited “understudy” role, without a separate opportunity to
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`7
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`actively participate. Accordingly, Petitioner will not file additional written
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`submissions, nor will it pose questions at depositions or argue at oral hearing without
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`the prior permission of Toyota. See e.g., Google Inc. v. B.E. Technology, LLC, IPR2014-
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`00738, Paper 9 (June 18, 2014) at 6. If Toyota settles, then Petitioner would assume
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`the primary role in Toyota’s place.
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 6,886,956 be instituted and that this proceeding
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`be joined with Toyota Motor Corp. v. Innovative Display Technologies LLC, IPR2015-00829.
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`Although Petitioner believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees that may be required
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`for this Motion to Deposit Account No. 500324.
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`Dated: April 2, 2015
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`Respectfully submitted,
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`/s/Scott W. Doyle
`Scott W. Doyle
`Registration No. 39176
`Shearman & Sterling LLP
`801 Pennsylvania Ave., NW, Ste. 900
`Washington, DC 20004
`(202) 508-8000 (telephone)
`(202) 508-8100 (fax)
`scott.doyle@shearman.com (email)
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`8
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`CERTIFICATE OF SERVICE
`The undersigned certifies that, on this 2nd day of April, 2015, a true and
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`correct copy of the foregoing MOTION FOR JOINDER PURSUANT TO
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`35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b) was served via Express Mail upon
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`the following:
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`Patent Owner Correspondence Address of Record:
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`Donald L. Otto, Esq.
`Renner, Otto, Boisselle & Sklar, LLP
`1621 Euclid Avenue, 19th Floor
`Cleveland, OH 44115
`
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Justin B. Kimble (jkimble@bcpc-law.com)
`T. William Kennedy, Jr. (bkennedy@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Avenue
`Suite 4500 – West
`Dallas, TX 75201
`
`
`/s/ Scott W. Doyle
`Scott W. Doyle (Reg. No. 39176)
`Shearman & Sterling LLP
`801 Pennsylvania Ave., NW, Ste. 900
`Washington, DC 20004
`(202) 508-8000 (telephone)
`(202) 508-8100 (fax)
`scott.doyle@shearman.com (email)
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`Courtesy copy to:
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