`Tel: 571-272-7822
`
`Paper No. 22
`Entered: June 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JIAWEI TECHNOLOGY (HK) LTD.,
`JIAWEI TECHNOLOGY (USA) LTD., and
`SHENZHEN JIAWEI PV LIGHTING CO., LTD.,
`Petitioner,
`v.
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00262
`Patent 8,672,518 B2
`____________
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.122
`
`Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
`Shenzhen Jiawei Photovoltaic Lighting Co, Ltd. (collectively, “Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of
`claims 1, 3–8, and 11–14 of U.S. Patent No. 8,672,518 B2 (Ex. 1001, “the
`
`
`
`IPR2018-00262
`Patent 8,672,518 B2
`’518 Patent”). Petitioner also filed a Motion for Joinder requesting that we
`join Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and
`Shenzhen Jiawei Photovoltaic Lighting Co, Ltd. as parties with Technical
`Consumer Products, Inc., Nicor Inc., and Amax Lighting in Tech. Consumer
`Prods., Inc. v. Lighting Science Group Corp., Case IPR2017-01285 (“the
`’1285 IPR”).1 Paper 3 (“Joinder Mot.”).
`In the ’1285 IPR, we instituted an inter partes review as to claims 1,
`3–8, and 11–14 of the ’518 Patent on four grounds of unpatentability. ’1285
`IPR, Paper 10. Subsequently, in response to SAS Inst., Inc. v. Iancu, 138 S.
`Ct. 1351 (2018), we instituted review of claim 10 on two additional grounds.
`’1285 IPR, Paper 19. According to Petitioner, the Petition filed in this
`proceeding is “substantively identical” to the petition from the ’1285 IPR
`and asserts identical arguments and grounds of unpatentability against the
`same patent claims, “except for claim 10.” Joinder Mot. 1–3. Petitioner also
`represents that, if it is allowed to join the ’1285 IPR, it would agree to
`consolidated filing with Technical Consumer Products, Inc., Nicor Inc., and
`Amax Lighting “to minimize burden and schedule impact.” Id. at 2.
`Petitioner does not indicate whether Technical Consumer Products, Inc.
`Nicor Inc. and Amax Lighting oppose Petitioner’s Motion for Joinder.
`Patent Owner, Lightning Science Group Corp. (“Patent Owner”), filed
`neither a preliminary response nor a response to Petitioner’s Motion for
`Joinder.
`
`
`1 In IPR2018-00270, Leedarson Lighting Co., Ltd. and Leedarson America,
`Inc. also filed a motion for joinder related to the ’1285 IPR. We grant that
`motion concurrent with this Decision, as discussed below. See infra § II.
`
`2
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`IPR2018-00262
`Patent 8,672,518 B2
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and any preliminary response “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`we institute an inter partes review as to claims 1, 3–8, and 10–14 of the
`’518 Patent on all grounds instituted in the ’1285 IPR. We also grant
`Petitioner’s Motion for Joinder.
`
`
`I. INSTITUTION OF INTER PARTES REVIEW
`In the ’1285 IPR, we ultimately instituted an inter partes review as to
`claims 1, 3–8, and 10–14 of the ’518 Patent on the following grounds of
`unpatentability: (1) claims 1, 3, 6–8, 11, 12, and 14 under 35 U.S.C. § 103
`as being unpatentable over Soderman2 and Wegner;3 (2) claims 4, 5, and 13
`under 35 U.S.C. § 103 as unpatentable over Soderman, Wegner, and
`Silescent;4 (3) claims 1, 3, 5–8, 11, 12, and 14 under 35 U.S.C. § 103 as
`unpatentable over Zhang5 and Wegner; and (4) 4 and 13 under 35 U.S.C.
`§ 103 as unpatentable over Zhang, Wegner, and Silescent; and (5) claim 10
`
`
`2 U.S. Patent No. 7,980,736 B2 (filed Nov. 13, 2007) (issued Jul. 19, 2011)
`(Ex. 1013, “Soderman”).
`3 U.S. Patent No. 7,993,034 B2 (filed Sep. 22, 2008) (issued Aug. 9, 2011)
`(Ex. 1015, “Wegner”).
`4Silescent Lighting Corp., Silescent S100 LP2 Product Sheet and Installation
`Guide (Jun. 2009) (Ex. 1016, “Silescent”).
`5 U.S. Patent No. 7,722,227 B2 (filed Oct. 10, 2008) (issued May 25, 2010)
`(Ex. 1014, “Zhang”).
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`3
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`IPR2018-00262
`Patent 8,672,518 B2
`as obvious under 35 U.S.C. § 103(a) over Soderman, Barnett,6 and/or Van
`Elmpt;7 and (6) claim 10 as obvious under 35 U.S.C. § 103(a) over Zhang,
`Barnett, and/or Van Elmpt. ’1285 IPR, Papers 10, 19. As mentioned above,
`the Petition filed in this proceeding is essentially the same as the Petition
`filed in the ’1285 IPR, “except for claim 10,” and Petitioner limited the
`asserted grounds in this proceeding to only those grounds originally
`instituted in the ‘1285 IPR. Joinder Mot. 1–3, 6–7; compare Pet. 3–54, with
`’1285 IPR, Paper 1, 3–62.
`The Petition is essentially the same as and only pertains to the
`originally instituted grounds in the ’1285 IPR. We conclude that the
`information presented in the Petition establishes that there is a reasonable
`likelihood that Petitioner would prevail on its assertion that (1) claims 1, 3,
`6–8, 11, 12, and 14 under 35 U.S.C. § 103 as being unpatentable over
`Soderman and Wegner; (2) 4, 5, and 13 under 35 U.S.C. § 103 as
`unpatentable over Soderman, Wegner, and Silescent; (3) claims 1, 3, 5–8,
`11, 12, and 14 under 35 U.S.C. § 103 as unpatentable over Zhang and
`Wegner; and (4) claims 4 and 13 under 35 U.S.C. § 103 as unpatentable over
`Zhang, Wegner, and Silescent. We also utilize our discretion to institute in
`this proceeding the grounds later added to the ’1285 IPR, namely, (5) claim
`10 as obvious under 35 U.S.C. § 103(a) over Soderman, Barnett, and/or Van
`Elmpt; and (6) claim 10 as obvious under 35 U.S.C. § 103(a) over Zhang,
`Barnett, and/or Van Elmpt.
`
`
`6 U.S. Patent Publication No.2002/0113244 A1 (filed Feb. 11, 2002)
`(published Aug. 22, 2002) (Ex. 1019, “Barnett”).
`7 PCT Int’l Pub. No. WO 2010/004503 A1 (filed July 6, 2009) (published
`Jan. 14, 2010) (Ex. 1020, “Van Elmpt”).
`
`4
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`IPR2018-00262
`Patent 8,672,518 B2
`Pursuant to § 314, we institute an inter partes review as to these
`claims of the ’518 Patent on all grounds instituted in the ’1285 IPR for the
`reasons stated in our Institution Decision from the ’1285 IPR and in our
`subsequent Order. See ’1285 IPR, Papers 10, 19.
`
`
`II. GRANTING PETITIONER’S MOTION FOR JOINDER
`The AIA created administrative trial proceedings, including inter
`partes review, as an efficient, streamlined, and cost-effective alternative to
`district court litigation. 35 U.S.C. § 315(c) provides (emphasis added):
`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.
`“Any request for joinder must be filed, as a motion under § 42.22, no later
`than one month after the institution date of any inter partes review for which
`joinder is requested.” 37 C.F.R. § 42.122(b). 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 Sony Corp. of Am. v. Network-1 Security Solutions, Inc., Case
`IPR2013-00495, slip op. at 3 (PTAB Sept. 16, 2013) (Paper 13) (“Sony”).
`When exercising its discretion, the Board is mindful that patent trial
`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.
`
`5
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`IPR2018-00262
`Patent 8,672,518 B2
`§ 316(b); 37 C.F.R. § 42.1(b).
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`A motion for joinder should (1) set forth the reasons why joinder is
`appropriate; (2) identify any new ground(s) of unpatentability asserted in the
`petition; and (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review. See Sony at 3. Petitioner should address
`specifically how briefing and/or discovery may be simplified to minimize
`schedule impact. See Kyocera Corp. v. SoftView LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15) (representative).
`Petitioner’s Motion is timely because it was filed on November 30,
`2017, which is within one month of our November 1, 2017, institution of the
`’1285 IPR. See 37 C.F.R. § 42.122 (“Any request for joinder must be filed,
`as a motion under § 42.22, no later than one month after the institution date
`of any inter partes review for which joinder is requested.”); Joinder Mot. 1.
`In its Motion for Joinder, Petitioner contends that joinder is
`appropriate because the instant Petition “is substantively identical to the
`Original Petition as to the subset of claims and grounds at issue and does not
`present any new prior art, grounds of unpatentability, exhibits, or
`arguments.” Joinder Mot. 3. In particular, Petitioner “relies on the same
`expert declaration and other supporting exhibits, and asserts the same
`combinations of prior art upon which the Board has instituted inter partes
`review.” Id. at 3–4. Petitioner further argues that joinder will not impact the
`schedule of the ’1285 IPR, particularly because the instant Petition “presents
`no new issues or arguments for Patent Owner[] or the Board to consider.”
`Id. at 5.
`
`6
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`IPR2018-00262
`Patent 8,672,518 B2
`Petitioner (“Joinder Petitioners” below) also agrees to be bound by the
`following conditions in its “understudy” role if it is joined to the ’1285 IPR:
`(a) all filings by Joinder Petitioners in the joined proceeding
`[shall] be consolidated with the filings of the Original
`Petitioner, unless a filing solely concerns issues that do not
`involve the Original Petitioner;
`(b) Joinder Petitioners shall not be permitted to raise any new
`grounds not already instituted by the Board, or introduce any
`argument or discovery not already introduced by the
`Original Petitioner;
`(c) Joinder Petitioners shall be bound by any agreement
`between Patent Owner and the Original Petitioner
`concerning discovery and/or depositions; and
`(d) Joinder Petitioners at deposition shall not receive any direct,
`cross examination or redirect time beyond that permitted for
`the petitioner in this proceeding alone under either 37 C.F.R.
`§ 42.53 or any agreement between Patent Owner[] and the
`Original Petitioner.
`Id. at 6–7.
`Given that Petitioner agrees to consolidated filings and discovery, we
`conclude Petitioner has demonstrated that joinder will result in efficiency
`and will not unduly complicate or delay the ’1285 IPR.
`Based on all of the considerations above, we are persuaded that
`Petitioner has met its burden of demonstrating that joinder is warranted
`under the circumstances, so we grant Petitioner’s Motion for Joinder.
`Petitioner will have a limited role in the ’1285 IPR subject to the conditions
`set forth above. If at some point the ’1285 IPR is terminated with respect to
`Technical Consumer Products, Inc., Nicor Inc., or Amax Lighting, the roles
`of the remaining parties in the proceeding may be reevaluated.
`
`
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`7
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`IPR2018-00262
`Patent 8,672,518 B2
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`instituted as to claims 1, 3–8, and 10–14 of the ’518 Patent on the following
`grounds of unpatentability:
`Claims 1, 3, 6–8, 11, 12, and 14 of the ’518 Patent as obvious over
`Soderman and Wegner pursuant to 35 U.S.C. § 103(a);
`Claims 4, 5, and 13 of the ’518 Patent as obvious over Soderman,
`Wegner, and Silescent pursuant to 35 U.S.C. § 103(a);
`Claims 1, 3, 5–8, 11, 12, and 14 of the ’518 Patent as obvious over
`Zhang and Wegner pursuant to 35 U.S.C. § 103(a);
`Claims 4 and 13 of the ’518 Patent as obvious over Zhang, Wegner,
`and Silescent pursuant to 35 U.S.C. § 103(a);
`Claim 10 of the ’518 Patent as obvious over Soderman, Barnett,
`and/or Van Elmpt pursuant to 35 U.S.C. § 103(a); and
`Claim 10 of the ’518 Patent as obvious over Zhang, Barnett, and/or
`Van Elmpt pursuant to 35 U.S.C. § 103(a);
`FURTHER ORDERED that inter partes review is commenced on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial;
`FURTHER ORDERED that the trial is limited to the grounds of
`unpatentability listed above, and no other grounds of unpatentability are
`authorized for inter partes review;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`Case IPR2017-01285 is granted, and Petitioner is joined as a party to Case
`IPR2017-01285;
`
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`IPR2018-00262
`Patent 8,672,518 B2
`FURTHER ORDERED that Case IPR2018-00262 is instituted, joined,
`and subsequently terminated under 37 C.F.R. § 42.72, and all further filings
`in the joined proceeding shall be made in Case IPR2017-01285;
`FURTHER ORDERED that the case caption in Case IPR2017-01285
`shall henceforth list Petitioner as a Petitioner entity and include a footnote
`reflecting the joinder of IPR2018-00262 with Case IPR2017-01285;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2017-01285 shall remain in effect and govern the proceeding, subject to
`any schedule changes agreed to by the parties in IPR2017-01285 pursuant to
`the Scheduling Order;
`FURTHER ORDERED that Petitioner’s participation in the briefing,
`depositions, and oral argument of the joined proceedings shall be subject to
`the acquiescence of Technical Consumer Products, Inc., Nicor Inc., and
`Amax Lighting to Petitioner’s participation and, absent our express
`authorization, Petitioner shall not file papers or exhibits apart from
`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting;
`FURTHER ORDERED that, absent our express authorization to the
`contrary, Petitioner shall be bound by the conditions set forth on pages 6–7
`of the Motion for Joinder and reproduced above, so long as Technical
`Consumer Products, Inc., Nicor Inc., or Amax Lighting remains a party to
`IPR2017-01285; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the file of Case IPR2017-01285.
`
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`IPR2018-00262
`Patent 8,672,518 B2
`PETITIONER:
`Mark C. Nelson
`Daniel A. Valenzuela
`Kevin R. Greenleaf
`DENTONS US LLP
`Mark.Nelson@Dentons.com
`Daniel.Valenzuela@Dentons.com
`Kevin.Greenleaf@Dentons.com
`
`PATENT OWNER:
`Garret A. Leach
`Eric D. Hayes
`Eugene Goryunov
`Kyle M. Kantarek
`KIRKLAND & ELLIS LLP
`garret.leach@kirkland.com
`eric.hayes@kirkland.com
`eugene.goryunov@kirkland.com
`kyle.kantarek@kirkland.com
`
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`10
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