UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`Case IPR2016-00113
`Patent 6,012,007
`____________
`
`PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
`
`
`
`
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`Case IPR2016-00113
`Patent 6,012,007
`____________
`
`PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`
`
`
`
`BACKGROUND ............................................................................................ 1
`
`BACKGROUND .......................................................................................... .. 1
`
`ARGUMENT .................................................................................................. 1
`
`ARGU1\/[ENT ................................................................................................ .. 1
`
`
`
`
`
`
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`CASES
`American Honda Motor Co., Inc. v. Signal IP, Inc.,
` IPR2015-01004 (PTAB Oct. 1, 2015) ......................................................... 1
`
`
`STATUTES
`35 U.S.C. § 315 ............................................................................................... 1
`
`35 U.S.C. § 315(c) .......................................................................................... 2
`
`35 U.S.C. § 316(b) .......................................................................................... 2
`
`
`
`
`
`
`
`
`
`
`
`REGULATIONS
`37 C.F.R. § 42.1(b) ......................................................................................... 2
`
`37 C.F.R. § 42.122 .......................................................................................... 2
`
`37 C.F.R. § 42.74(a)........................................................................................ 3
`
`
`
`
`OTHER AUTHORITIES
`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) ......................................... 2
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48768 (Aug. 14, 2012) ............................................... 3
`
`
`
`iii
`
`
`
`Patent Owner SIGNAL IP, INC. submits the following opposition to
`
`Petitioners’ motion for joinder.
`
`
`
`BACKGROUND
`
`
`
`Petitioner seeks joinder with IPR2015-01004. Mot. at 2. Trial in that
`
`case was instituted Oct. 1, 2015, and Patent Owner’s response is due Jan. 4,
`
`2016. American Honda Motor Co., Inc. v. Signal IP, Inc., IPR2015-01004,
`
`Scheduling Order, Paper 12, slip op. at 6 (PTAB Oct. 1 2015). Cross-
`
`examination of the ‘1004 IPR Petitioner’s expert is set for Dec. 1, 2015.
`
`IPR2015-01004, Notice of Deposition of Dr. Carr, Paper 13, at 2. Yet,
`
`Petitioner waited until the last possible moment on Oct. 30, 2015, to file its
`
`petition and motion for joinder. Mot. at 2, 12. As a result, Patent Owner’s
`
`preliminary response in this proceeding is not due until Feb. 5, 2016. Notice
`
`of Filing Date, Paper 4, slip op. at 1 (setting a three-month period for patent
`
`owner to file its preliminary response from Nov. 5, 2015).
`
`
`
`ARGUMENT
`
`The Board, acting on behalf of the Director, has the discretion to join
`
`one inter partes review with another inter partes review. 35 U.S.C. § 315.
`
`Section 315(c) provides:
`
`
`
`1
`
`
`
`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.
`
`Thus, joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The
`
`Board determines whether to grant joinder on a case-by-case basis, taking
`
`into account the particular facts of each case, substantive and procedural
`
`issues, and other considerations. See 157 CONG. REC. S1376 (daily ed.
`
`Mar. 8, 2011) (statement of Sen. Kyl). In exercising its discretion in such
`
`matters, the Board has remained mindful that the regulations, including the
`
`rules for joinder, must be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b); 37
`
`C.F.R. § 42.1(b).
`
`In this case, joinder is inappropriate and should be denied. The ‘1004
`
`IPR proceeding to which Petitioner proposes to join the instant petition is
`
`already in the period for Patent Owner’s response. Discovery in the ‘1004
`
`IPR proceeding will be concluded and Patent Owner’s response filed fully
`
`
`
`2
`
`
`
`one month before Patent Owner’s Preliminary Response is due in the present
`
`proceeding. Consequently, joinder at this late stage would require delaying
`
`the schedule in ‘1004 IPR proceeding if trial were instituted on the present
`
`petition.
`
`Further, joinder would introduce complications that would interfere
`
`with the just, speedy, and inexpensive resolution of the ‘1004 proceeding.
`
`By injecting a third party into that proceeding, Patent Owner would be
`
`deprived of the opportunity to reach a speedy resolution thereof through
`
`settlement with the ‘1004 IPR petitioner. While the Board is not a party to a
`
`settlement between participants in an IPR, 37 C.F.R. § 42.74(a), generally,
`
`the Board expects that a proceeding will terminate after the filing of a
`
`settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012). Such a termination would not be
`
`possible, however, if the present petitioner were joined to the ‘1004
`
`proceeding because at least one petitioner would remain.
`
`Hence, rather than offering simplification of the proceedings, the
`
`proposed joinder in fact complicates them. It was Petitioner’s delay in filing
`
`the present petition that led to this circumstance and the Board should not
`
`reward that delay by granting Petitioner’s motion. Thus, the present motion
`
`should be denied.
`
`
`
`3
`
`
`
`
`
`
`Dated: November 29, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Ste. 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`Respectfully submitted,
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
`was served on November 29, 2015, by filing this document though the Patent
`Review Processing System as well as delivering a copy via email directed to the
`attorneys of record for the Petitioner at the following address:
`Tawni L. Wilhelm
`Patrick A. Lujin
`Shook, Hardy & Bacon L.L.P.
`2555 Grand Blvd.
`Kansas City, Missouri 64108
`
`twilhelm@shb.com
`plujin@shb.com
`
`The parties have agreed to electronic service in this proceeding.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: November 29, 2015
`
`
`
`
`
`
`
`
`
`
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Ste. 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
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