Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________________________________
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`NISSAN NORTH AMERICA, INC.
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`Petitioner
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`V.
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`SIGNAL IP, INC.
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`Patent Owner
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`Case No.: IPR2016-00113
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`Patent No.: 6,012,007
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`REPLY TO PATENT OWNER’S OPPOSITION TO MOTION FOR
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`JOINDER TO RELATED INTER PARTES REVIEW
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`IPR2015-01004
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`7308691 v1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________________________________
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`NISSAN NORTH AMERICA, INC.
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`Petitioner
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`V.
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`SIGNAL IP, INC.
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`Patent Owner
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`Case No.: IPR2016-00113
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`Patent No.: 6,012,007
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`REPLY TO PATENT OWNER’S OPPOSITION TO MOTION FOR
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`JOINDER TO RELATED INTER PARTES REVIEW
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`IPR2015-01004
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`7308691 v1
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`Reply to Patent Owner’s Opposition to Motion for Joinder to IPR2015-01004
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`I.
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`INTRODUCTION
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`The Board routinely grants motions for joinder where the party seeking
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`joinder presents identical arguments to those raised in the existing proceeding and
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`agrees to reasonable limits on its role in the joined proceeding. See, e.g., Perfect
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`World Entertainment, Inc., v. Uniloc USA, Inc. and Uniloc Luxembourg S.A.,
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`IPR2015-01026, Paper 10, (PTAB Aug. 3, 2015); ION Geophysical Corporation
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`and Ion International S.A.R.L. v. WesternGeco LLC, IPR2015-00567, Paper 14,
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`(PTAB Apr. 23, 2015); Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-
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`00845, Paper 14 (PTAB Oct. 2, 2014); Enzymotec Ltd. V. Neptune Technologies &
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`Bioresources, Inc., IPR2014-00556, Paper 19 (PTAB Jul. 9, 2014). This is the
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`exact situation here and joinder should be granted consistent with the Board’s
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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.” Enzymotec, Paper 19, p. 6 citing 157
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`Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the basis of a petition, for example, a party that files an identical
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`petition will be joined to that proceeding, . . .”) (emphasis added).
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`Joinder has been routinely granted where the petitioner files a petition and
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`joinder motion within 30 days of the institution of trial in the existing proceeding.
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`See Nintendo Co. et al. v. Babbage Holdings, LLC, IPR2014-00568, Paper 12
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`7308691 v1
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`Page 1
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`Reply to Patent Owner’s Opposition to Motion for Joinder to IPR2015-01004
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`(PTAB Mar. 18, 2015); Apotex Corp. et al. v. Mitsubishi Pharmaceutical Corp. &
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`Novartis AG, IPR2015-00518, Paper 8 (PTAB Feb. 17, 2015). In fact joinder has
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`been routinely granted in over 210 PTAB proceedings to date and there is nothing
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`unusual about this case.
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`During a conference with the Board on December 4, 2015, counsel for the
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`Patent Owner indicated that new arguments will be filed in its Preliminary
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`Response given the Institution Decision in IPR2015-01004 (“Honda IPR”).
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`However, counsel failed to identify, even in general terms, any new argument that
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`allegedly may be raised. Nor did counsel explain why any such new arguments
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`could not be raised in the pending Honda IPR proceeding. Since the Petition in
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`IPR2016-00113 (“Nissan IPR”) is substantively identical to the Petition in the
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`Honda IPR, any new arguments can be addressed in the Patent Owner’s Response
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`in the Honda IPR and will be applied with respect to Petitioner in the joined
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`proceeding.
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`II. ARGUMENTS
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`A.
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`PETITIONER’S REQUEST FOR JOINDER RAISES NO NEW
`ISSUES AND JOINDER WOULD NOT COMPLICATE
`EXISTING PROCEEDING
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`The Board has frequently granted joinder in cases where, as here, the
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`Petition of the party seeking joinder “asserts identical grounds of unpatentability,
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`challenging the same claims of the” challenged patent. Fujitsu, Paper 14, p. 4.
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`7308691 v1
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`Page 2
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`Reply to Patent Owner’s Opposition to Motion for Joinder to IPR2015-01004
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`The proposed grounds in the Nissan IPR Petition are substantively identical to the
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`grounds on which the Board instituted the Honda IPR, and it even asserts “the
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`same prior art, same arguments, and same evidence, including the same expert and
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`a substantively identical declaration” (save only minor differences related to
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`formalities of a different party filing the Petition). Sony Corp., et al. v. Memory
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`Integrity, LLC, IPR2015-01353, Paper 11 (PTAB Oct. 15, 2015), pp. 5-6. Thus,
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`Petitioner asks the Board to simply “institute the instant trial based on the same
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`grounds for which [it] instituted trial in” the Honda IPR, as the Board has done in
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`similar cases. Fujitsu, Paper 14, p. 4.
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`Furthermore, in its Motion for Joinder, Petitioner unequivocally indicates
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`that it does not seek to delay the existing schedule of the Honda IPR, and, to that
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`end, states that it will accept an “understudy” role. See Nissan North America, Inc.
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`v. Signal IP, Inc., IPR2016-00113, Paper 1 (Nissan Oct. 30, 2015), p. 6. Petitioner
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`reiterated this position and stated its willingness to file consolidated papers during
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`the aforementioned December 4, 2015 conference with the Board. Petitioner has
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`no intention to revisit the already conducted discovery. Rather, Petitioner simply
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`seeks to join the ongoing Honda IPR, adopting its status upon the grant of joinder.
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`7308691 v1
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`Page 3
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`Reply to Patent Owner’s Opposition to Motion for Joinder to IPR2015-01004
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`B.
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`PATENT OWNER CAN RAISE ANY NEW ARGUMENTS AS
`TO THE MERITS IN ITS PATENT OWNER RESPONSE IN
`THE HONDA IPR.
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`The Patent Owner’s “new arguments” contention is illusory. Patent Owner
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`has had over a full month to review Petitioner’s petition, and over eight months to
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`review the substantively identical petition in the Honda IPR proceeding. Since the
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`Nissan IPR Petition is substantively identical to the Honda IPR Petition, the Patent
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`Owner can raise any new arguments as to the merits of the Nissan IPR Petition in
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`its Patent Owner Response in the Honda IPR proceeding and the same will be
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`applied with respect to Petitioner in the joined proceeding.
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`C.
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`PATENT OWNER’S PRELIMINARY RESPONSE IN THE
`NISSAN IPR COINCIDES WITH THE PATENT OWNER’S
`RESPONSE IN THE HONDA IPR
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`The Patent Owner contends that “joinder at this late stage would require
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`delaying the schedule in ‘1004 IPR [the Honda IPR] proceeding if trial were
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`instituted on the present petition” as the Patent Owner’s response in the Honda IPR
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`proceeding will be “filed fully one month before Patent Owner’s Preliminary
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`Response is due in the present proceeding.” Nissan, Paper 6, pp. 2-3. Without
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`admitting any delay would have been caused, Petitioner points out that by Order
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`dated December 7, 2015, the Board has changed the due date of Patent Owner’s
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`Preliminary Response in the Nissan IPR such that it coincides with the due date for
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`the Patent Owner’s Response in the Honda IPR. See id., Paper 7, p. 2.
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`7308691 v1
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`Page 4
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`Reply to Patent Owner’s Opposition to Motion for Joinder to IPR2015-01004
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`D. A REQUEST FOR TERMINATION OF THE HONDA IPR
`PROCEEDING HAS NOT BEEN FILED
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`The Patent Owner contends that “[b]y injecting a third party into that [the
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`Honda IPR] proceeding, Patent Owner would be deprived of the opportunity to
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`reach a speedy resolution thereof through settlement with the ‘1004 IPR [Honda
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`IPR] petitioner.” Nissan, Paper 6, pp. 2-3. In a similar proceeding, and arguably
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`on facts that could have been more persuasive than those of the instant case, the
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`Board was not persuaded by Patent Owner’s arguments regarding settlement with
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`the real-party-in-interest of an existing proceeding “because, at the time the
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`Petition and Motion for Joinder were filed in [that] proceeding, no Motion to
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`Terminate had been filed in the” existing proceeding. Nintendo, Paper 12
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`(rejecting the argument that joinder should not be granted as settlement had already
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`been reached with the Petitioner of the existing proceeding because no Motion to
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`Terminate the existing proceeding had yet been filed). Similarly, no Motion to
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`Terminate has been filed in the Honda IPR proceeding and, accordingly, Petitioner
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`urges the Board likewise to not be persuaded by this contention.
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`III. CONCLUSION
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`For the foregoing reasons, Nissan respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 6,012,007 be instituted and that the
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`proceeding be joined with American Honda Motor Co., Inc. v. Signal IP, Inc.,
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`Case No. IPR2015-01004.
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`7308691 v1
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`Page 5
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`Reply to Patent Owner’s Opposition to Motion for Joinder to IPR2015-01004
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`Respectfully submitted,
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`Dated: December 11, 2015
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`/s/ Tawni L. Wilhelm
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`Tawni L. Wilhelm, Reg. No. 47,456
`Shook, Hardy & Bacon L.L.P.
`2555 Grand Blvd.
`Kansas City, Missouri 64108
`T: (816) 474-6550
`F: (816) 421-5547
`Lead Counsel for Petitioner
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`7308691 v1
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`Page 6
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`Reply to Patent Owner’s Opposition to Motion for Joinder to IPR2015-01004
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`Certificate of Service
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on December 11, 2015 a complete and entire copy of this REPLY TO
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER TO
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`RELATED INTER PARTES REVIEW IPR2015-01004 was provided by email to
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`the Patent Owner by serving the correspondence address of record as follows:
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`Ascenda Law Group, PC
`333 W San Carlos St.
`Suite 200
`San Jose CA 95110
`Email: tarek.fahmi@ascendalaw.com
`holy.atkison@ascendalaw.com
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`Tarek Fahmi of the Ascenda firm consented to electronic service.
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`/s/ Tawni L. Wilhelm
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`Tawni L. Wilhelm (Reg. No. 47,456)
`Shook, Hardy & Bacon L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108
`Telephone: (816) 474-6550
`Fax: (816) 421-5547
`Email: twilhelm@shb.com
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`Attorney for Petitioner NISSAN NORTH
`AMERICA, INC.
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`7308691 v1
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`Page 7
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