IPR2016-01368, No. 3 Motion - SL Corporations Motion for Joinder (P.T.A.B. Jul. 6, 2016)

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`SL CORPORATION,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner.
`
`________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,241,034
`INTER PARTES REVIEW No.: 2016-01368
`________________
`
`MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ..........................1
`
`STATEMENT OF MATERIAL FACTS ........................................................2
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................3
`
`A.
`
`B.
`
`C.
`
`D.
`
`Joinder 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 AHT or Koito ..............................................6
`
`Timeliness of Joinder ............................................................................7
`
`IV. CONCLUSION................................................................................................8
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`

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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`TABLE OF AUTHORITIES
`
`Cases
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`Case IPR2013-00385, Paper No. 17 (PTAB Jul. 29, 2013) .................................4
`
`Page(s)
`
`Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper No. 15, (PTAB Apr. 24, 2013) .......................................1
`
`Sony Corporation of America and Hewlett-Packard Co. v. Network-1
`Security Solutions, Inc.,
`IPR 2013-00495, Paper 13 (PTAB Sep. 16, 2013)...............................................8
`
`Statutes
`
`35 U.S.C. § 103..........................................................................................................2
`
`35 U.S.C. § 315(c) .............................................................................................1, 3, 9
`
`35 U.S.C. § 316(a)(1).................................................................................................6
`
`35 U.S.C. § 316(a)(11)...............................................................................................4
`
`Other Authorities
`
`37 C.F.R. § 42.6(e).....................................................................................................9
`
`37 C.F.R. §§ 42.22 and 42.122(b)......................................................................1, 2, 9
`
`37 C.F.R. § 42.100(c).............................................................................................4, 6
`
`37 C.F.R. § 42.122(a).................................................................................................3
`
`2
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`

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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`SL Corporation (“Petitioner” or “SL Corp.”) respectfully submits this
`
`Motion for Joinder, together with a Petition for Inter Partes Review of U.S. Patent
`
`No. 7,241,034 (“the ‘034 Patent”) (“Petition”). Pursuant to 35 U.S.C. § 315(c), 37
`
`C.F.R. §§ 42.22 and 42.122(b), SL Corp. requests institution of an inter partes
`
`review and joinder with the inter partes review concerning the same patent in
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`Koito Manufacturing Co., Ltd. v. Adaptive Headlamp Technologies, Inc., Case No.
`
`IPR2016-00079 (the “Koito IPR”), which was instituted on May 5, 2016.
`
`In accordance with the Board’s Representative Order identifying matters to
`
`be addressed in a motion for joinder (Kyocera Corp. v. SoftView LLC, IPR2013-
`
`00004, Paper No. 15, (PTAB Apr. 24, 2013)), SL Corp. submits that: (1) joinder is
`
`appropriate because it will promote efficient determination of the validity of the
`
`‘034 Patent without prejudice to the Patent Owner, Adaptive Headlamp
`
`Technologies (“AHT”); (2) SL Corp.’s Petition includes grounds that are identical
`
`to the ground instituted in the Koito IPR; (3) joinder would not affect the pending
`
`schedule in the Koito IPR nor increase the complexity of that proceeding,
`
`minimizing costs; and (4) SL Corp. is willing to agree to consolidated filings with
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`Koito, that is, to accept an understudy role, to minimize burden and schedule
`
`impact.
`
`Accordingly, joinder should be granted.
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`1
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`

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`II.
`
`STATEMENT OF MATERIAL FACTS
`
`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
`
`1.
`
`2.
`
`AHT is the owner of the ‘034 Patent.
`
`On July 6, 2015, AHT served a complaint against real party-in-
`
`interest Hyundai Motor America, Inc. (“Hyundai”) for infringement of the
`
`‘034 Patent (the “Underlying Litigation”).
`
`3.
`
`Hyundai
`
`is indemnified by SL Corp.
`
`in the Underlying
`
`Litigation.
`
`4.
`
`On October 23, 2015, Koito filed its petition for inter partes
`
`review of claims 3-26 and 28-35 of the ‘034 Patent (IPR2016-00079).
`
`5.
`
`On November 13, 2015, SL Corp. filed a petition for inter
`
`partes review of claims 3-39 of the ‘034 Patent (IPR2016- 00193).
`
`6.
`
`5.
`
`On May 5, 2016, a decision instituting inter partes
`
`review of claims 3-26, 28-32, and 35 of the ‘034 Patent was entered in the
`
`Koito IPR (Paper No. 11, IPR2016-00079).
`
`7.
`
`On June 7, 2016, a decision instituting inter partes review of
`
`claims 7-10, 12-21, 23, 24, and 28-39 of the ‘034 Patent was entered in the
`
`SL Corp. IPR (Paper No. 10, IPR 2016-00193).
`
`8.
`
`The only event that has occurred in the Koito IPR schedule is
`
`the Initial Conference Call; every other date on the scheduling order is in the
`
`future. (Paper No. 12, IPR2016-00079),
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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`9.
`
`Oral argument is currently set for January 11, 2017 in the Koito
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`IPR. (Paper No. 12, IPR2016-00079),
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`10. Concurrently with this Motion for Joinder, SL Corp. is filing a
`
`petition for inter partes review of claims 3-26 and 28-35 of the ‘034 Patent.
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`11.
`
`The Petition includes grounds that are identical to the ground
`
`instituted in the Koito IPR. (“The Petition”).
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of like
`
`review proceedings, e.g., an inter partes review (“IPR”) may be joined with
`
`another inter partes review. 37 C.F.R. § 42.122(a). The statutory provision
`
`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c), which
`
`reads as follows:
`
`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.
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`of substantive and procedural
`
`issues on the proceedings, as well as other
`
`considerations, while being “mindful that patent trial regulations, including the
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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” See Dell, Inc. v. Network-1 Security Solutions,
`
`Inc., Case IPR2013-00385, Paper No. 17 at 3 (PTAB Jul. 29, 2013). The Board
`
`should consider “the policy preference for joining a party that does not present new
`
`issues that might complicate or delay an existing proceeding.” Id. at 10. Under
`
`this framework, joinder of the present Petition with the Koito IPR is appropriate.
`
`“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
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`may be simplified.” Id. at 4. Each of these is addressed fully below.
`
`A.
`
`Joinder will not impact the Board’s ability to complete the review
`in a timely manner
`
`Joinder in this case will not impact the Board’s ability to complete its review
`
`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
`
`42.100(c) provide that inter partes review proceedings should be completed and
`
`the Board’s final decision issued within one year of institution of the review. In
`
`this case, joinder will not affect the Board’s ability to issue the decision because
`
`SL Corp. will be joining the grounds on which the Koito IPR has been instituted.
`
`Thus, (1) no new arguments are presented, (2) no schedule adjustments are
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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`necessary, (3) Petitioner agrees to assume a limited “understudy” role, (4) AHT
`
`will suffer no additional cost or burden, (5) Koito does not object to joinder.
`
`Here, the Board has instituted the Koito IPR for claims 3-26, 28-32, and 35
`
`with respect
`
`to Koito’s 10 asserted Grounds of unpatentability. The Petition
`
`asserts, word-for-word, only the arguments that the Board has already instituted in
`
`the joined IPRs. Thus, there are no new arguments to consider and joinder would
`
`not result in any additional work for the Board. Further, as AHT has not yet filed a
`
`Patent Owner’s response to the petition, no changes to any deadlines would be
`
`necessary.
`
`As long as Koito remains in the joined IPRs, SL Corp. agrees to remain in a
`
`circumscribed role without a separate opportunity to actively participate. Thus, SL
`
`Corp. will not file additional written submissions, nor will it pose questions at
`
`depositions or argue at oral hearing without the prior permission of Koito. Only in
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`the event that Koito settles will the SL Corp. seek to become active in the joined
`
`IPRs.
`
`There will be no additional burden on AHT. AHT is already defending its
`
`patent against the same arguments. As SL Corp. will assume a passive role, AHT
`
`will not have to address additional pages of argument if SL Corp. is joined.
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`5
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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`B.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies
`
`SL Corp. would not be time barred from filing the present Petition without a
`
`corresponding motion for joinder. However, determining the same validity
`
`questions concerning the ‘034 patent in separate concurrent proceedings would
`
`duplicate efforts, and create a risk of inconsistent results and piecemeal review.
`
`Proceeding with a consolidated inter partes review would avoid inefficiency and
`
`potential inconsistency and would result in a final written decision without any
`
`delay.
`
`C.
`
`Joinder will not prejudice AHT or Koito
`
`Permitting joinder will not prejudice AHT or Koito. If joinder is granted, SL
`
`Corp. will be joining the grounds instituted in the Koito IPR, thus the primarily
`
`issues will already be before the Board, such that joinder would not affect the
`
`timing of the Koito IPR or the content of AHT’s Patent Owner response due on
`
`July 22, 2016. Moreover, joinder will not affect the timing of the Koito IPR, and
`
`any extension to the schedule that may be required is permitted by law and the
`
`applicable rules. 35 U.S.C. § 316(a)(1); 37 C.F.R. § 42.100(c). In fact, joinder is
`
`likely more convenient and efficient for AHT by providing a single trial on the
`
`‘034 patent. By allowing all grounds of invalidity to be addressed in a single
`
`proceeding, the interests of all parties and the Board will be well served.
`
`6
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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`D.
`
`Timeliness of Joinder
`
`This Motion for Joinder is not
`
`timely under 37 C.F.R. §§ 42.22 and
`
`42.122(b), as it is not being submitted within one month of the date on which the
`
`Koito IPR was instituted (May 5, 2016). SL Corp. requests a waiver of Rule
`
`42.122 under Rule 42.5 (Conduct of
`
`the proceeding), given the unique
`
`circumstances of the instant Motion, summarized below:
`
` Granting this request will not result in a proliferation of future joinder
`
`motions;
`
` No new arguments are presented, and no schedule adjustments are
`
`necessary;
`
` SL Corp. agrees to assume a limited role;
`
` Koito does not oppose this motion; and
`
` Neither Koito nor AHT will suffer additional cost or burden.
`
`The Board has previously granted joinder under similar circumstances:
`
`Given the unique circumstances presented here – namely, that
`Petitioners’ asserted grounds and arguments are identical to
`those already at issue in the existing proceeding, joinder would
`require no change to the trial schedule, joinder would impose
`no added burden on the existing parties because Petitioners are
`willing to have only a limited ‘understudy’ role, and Petitioners
`attempted previously within the one-month time period to be
`
`7
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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`joined - we exercise our discretion to waive the one-month
`requirement under 37 C.F.R. § 42.122(b).
`
`See Sony Corporation of America and Hewlett-Packard Co. v. Network-1 Security
`
`Solutions, Inc., IPR 2013-00495, Paper 13 at 9 (PTAB Sep. 16, 2013).
`
`IV. CONCLUSION
`
`For the foregoing reasons, SL Corp. respectfully requests that its Petition for
`
`Inter Partes Review of U.S. Patent No. 7,241,034 be granted and that
`
`the
`
`proceedings be joined with Koito Manufacturing Co., Ltd, Case IPR2016-00079.
`
`Joinder will ensure a just, speedy and inexpensive resolution in both proceedings.
`
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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`Respectfully submitted,
`/Peter J. Cuomo/
`By:
`Peter J. Cuomo, Reg. No. 58,481
`
`Back-up Counsel
`Kongsik Kim, Reg. No. 63,867
`Serge Subach, Reg. No. 74,652
`Adam P. Samansky (pro hac vice to be
`filed)
`Mintz, Levin, Cohn, Ferris, Glovsky and
`Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`617-542-6000
`617-542-2241 fax
`
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`SL Corporation’s Motion for Joinder
`Case IPR2016-01368
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing MOTION
`
`FOR JOINDER PURSUANT TO 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 AND
`
`42.122(b) was served on July 6, 2016 by sending a copy by overnight courier, and
`
`electronic service by email where indicated, to:
`
`Patrick Caldwell, Esq.
`THE CALDWELL FIRM, LLC
`PO Box 59655
`Dept. SVIPGP
`Dallas TX 75229
`
`AND
`
`Brett M. Pinkus
`FRIEDMAN, SUDER & COOKE
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`pinkus@fsclaw.com
`
`AND
`
`hermesch@fsclaw.com
`klein@fsclaw.com
`putnam@fsclaw.com
`dunn@fsclaw.com
`
`/Peter J. Cuomo /
`By:
`Peter J. Cuomo, Reg. No. 54,481
`Lead Counsel for Petitioner
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`SL CORPORATION,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`Patent Owner.
`
`________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,241,034
`INTER PARTES REVIEW No.: 2016-01368
`________________
`
`MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`