Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 23
`Entered: June 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LEEDARSON LIGHTING CO., LTD. and
`LEEDARSON AMERICA, INC.,
`Petitioner,
`v.
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00270
`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
`
`Leedarson Lighting Co., Ltd., and Leedarson America, Inc.
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1, 3–8, and 10–14 of U.S. Patent No. 8,672,518
`B2 (Ex. 1001, “the ’518 Patent”). Petitioner also filed a Motion for Joinder
`requesting that we join Leedarson Lighting Co., Ltd., and Leedarson
`
`
`Tel: 571-272-7822
`
`Paper No. 23
`Entered: June 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LEEDARSON LIGHTING CO., LTD. and
`LEEDARSON AMERICA, INC.,
`Petitioner,
`v.
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00270
`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
`
`Leedarson Lighting Co., Ltd., and Leedarson America, Inc.
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`inter partes review of claims 1, 3–8, and 10–14 of U.S. Patent No. 8,672,518
`B2 (Ex. 1001, “the ’518 Patent”). Petitioner also filed a Motion for Joinder
`requesting that we join Leedarson Lighting Co., Ltd., and Leedarson
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`America, Inc. 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. Joinder Mot. 1–3. Petitioner acknowledges
`as a difference that the instant Petition “make[s] clear and express the
`incorporation of the art and argument in Grounds 1 and 4 (with respect to
`independent claim 1) into Grounds 3 and 6 (regarding dependent claims 10),
`respectively. Id. at 1. We address the raised distinctions below.
`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.
`
`
`1 In IPR2018-00262, Jiawei Technology (HK) Ltd. Jiawei Technology
`(USA) Ltd. and Shenzhen Jiawei Photovoltaic Lighting Co., Ltd. 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
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`Patent Owner, Lightning Science Group Corp. (“Patent Owner”), filed
`neither a preliminary response nor a response to Petitioner’s Motion for
`Joinder.
`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 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
`
`
`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”).
`
`3
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`unpatentable over Zhang5 and Wegner; and (4) claims 4 and 13 under
`35 U.S.C. § 103 as unpatentable over Zhang, Wegner, and Silescent; and
`(5) claim 10 as obvious under 35 U.S.C. § 103(a) over Soderman, Barnett6,
`and/or Van Elmpt;7 and (6) claim 10 as obvious under 35 U.S.C. § 103(a)
`over Soderman, 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, with respect to the originally instituted
`grounds, and Petitioner asserts to correct “an apparent clerical error” with
`respect to those later-added grounds in the ‘1285 IPR. Joinder Mot. 1–2, 3–
`4; compare Pet. 3–67, with ’1285 IPR, Paper 1, 3–62.
`The Petition is essentially the same as and mostly 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 are unpatentable under 35 U.S.C. § 103 over Soderman
`and Wegner; (2) claims 4, 5, and 13 are unpatentable under 35 U.S.C. § 103
`over Soderman, Wegner, and Silescent; (3) claims 1, 3, 5–8, 11, 12, and 14
`are unpatentable under 35 U.S.C. § 103 over Zhang and Wegner; and (4)
`claims 4 and 13 are unpatentable under 35 U.S.C. § 103 over Zhang,
`Wegner, and Silescent.
`
`
`5 U.S. Patent No. 7,722,227 B2 (filed Oct. 10, 2008) (issued May 25, 2010)
`(Ex. 1014, “Zhang”).
`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
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`Some of the grounds of the instant Petition seek to “simply add[] a
`single statement that makes clear that the Petitioner[ is] relying on the
`already provided art and argument for the independent claim elements of
`claim 1 by from two already instituted grounds.” Joinder Mot. 8–9. We
`agree that these grounds are not substantively distinguishable from similar
`grounds presented against claim 10 in the ’1285 IPR. As such, even with the
`explicit inclusion of Wegner, we are not persuaded that these alternative
`grounds raise any different issues than the grounds applied against claim 10
`in the ’1285 IPR, which were instituted therein.
`Thus, we also utilize our discretion to institute in this proceeding
`grounds similar to the grounds later added to the ’1285 IPR, namely, (5)
`claim 10 as obvious under 35 U.S.C. § 103(a) over Soderman, Wegner,
`Barnett, and/or Van Elmpt; and (6) claim 10 as obvious under 35 U.S.C.
`§ 103(a) over Zhang, Wegner, Barnett, and/or Van Elmpt.
`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
`
`5
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`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.
`§ 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 December 1,
`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,
`
`6
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`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 “involves the same patent, the same
`claims, the same prior art, the same Exhibit numbering, and the same
`declaration evidence from the same expert,” and “[i]t asserts the same four
`instituted grounds as involved in the [’1285] IPR.” Joinder Mot. 7. In
`particular, with respect to the previously-instituted grounds, Petitioner
`“adopts the reasoning and rationale of the [’1285] IPR petition as accepted
`by the Board as to the four grounds.” Id. at 7.
`With respect to the alternative grounds not found in the ’1285 IPR
`petition, as discussed above, we are not persuaded that those alternative
`grounds are substantively different from the similar grounds presented in the
`’1285 IPR petition. As such, we are not persuaded that these alternative
`grounds are an impediment to joinder.
`Regarding the impact that joinder would have on the ’1285 IPR,
`Petitioner proposes “specific ways in which briefing and discovery are
`simplified” so that there will be no discernable impact on the trial schedule.
`Id. at 10. In particular, Petitioner proposes to consolidate its filings with
`Technical Consumer Products, Inc., Nicor Inc., and Amax Lighting with the
`proviso that Petitioner would be allowed to file seven additional pages and
`that Patent Owner would be given seven additional responsive pages. Id. at
`10–11. Regarding depositions, Petitioner proposes that Technical Consumer
`Products, Inc., Nicor Inc., and Amax Lighting would ask questions first, and
`then Petitioner would be “afforded an opportunity to ask questions only if
`
`7
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`any time remains within the allotted timeframe.” Id. at 11. Petitioner also
`seeks an allotment of time at oral argument. Id.
`On this record, we determine that the Motion for Joinder demonstrates
`that joinder of Leedarson Lighting Co., Ltd., and Leedarson America, Inc.,
`as parties to the ’1285 IPR is appropriate, and will lead to the more efficient
`resolution of the proceedings. The instant Petition does not assert any new
`ground of unpatentability, other than those discussed above, that is not
`already being considered in the ’1285 IPR, relies on the same arguments,
`evidence, and expert declaration, and does not require any modification to
`the existing schedule. We, therefore, determine that joinder will not unduly
`complicate or delay the ’1285 IPR.
`Nevertheless, we do not agree to Petitioner’s proposed procedures for
`briefing, depositions, and oral argument. Concurrent with the instant
`Decision, we are granting another motion for joinder to the ’1285 IPR in
`IPR2018-00262. See ’1285 IPR, Paper 22. In that case, Jiawei Technology
`(HK) Ltd., Jiawei Technology (USA) Ltd., and Shenzhen Jiawei
`Photovoltaic Lighting Co., Ltd. have agreed to assume a passive or
`“understudy” role in the ’1285 IPR subject to the following conditions:
`(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
`
`8
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`(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.
`IPR2018-00262, Paper 3, 6–7; ’1285 IPR, Paper 22, 6–7.
`We determine that the same conditions and understudy role are
`appropriate for the joinder of Leedarson Lighting Co., Ltd., and Leedarson
`America, Inc. as parties with Technical Consumer Products, Inc., Nicor Inc.,
`and Amax Lighting in the ’1285 IPR. Given that Petitioner agrees to
`consolidated filings, we conclude Petitioner has demonstrated that joinder
`will result in efficiency and will not unduly complicate or delay the
`’1285 IPR. We do not consider it necessary at this time to permit Leedarson
`Lighting Co., Ltd., and Leedarson America, Inc. additional briefing beyond
`that already permitted to Technical Consumer Products, Inc., Nicor Inc., and
`Amax Lighting. Accordingly, all parties should work together to present
`consolidated briefing in the ’1285 IPR, with Technical Consumer Products,
`Inc., Nicor Inc., and Amax Lighting as lead Petitioner.
`In a similar fashion, we do not agree to provide Petitioner a separate
`opportunity to conduct discovery. Rather, Technical Consumer Products,
`Inc., Nicor Inc., and Amax Lighting will conduct cross-examination and
`other discovery on behalf of all joined parties. Leedarson Lighting Co., Ltd.,
`and Leedarson America, Inc. may only conduct discovery at the
`acquiescence of and within the time limits or allotment that would normally
`be given to Technical Consumer Products, Inc., Nicor Inc., and Amax
`Lighting. Put differently, Patent Owner will not be required to provide
`separate discovery responses or additional deposition time as a result of the
`joinder. For oral argument, Technical Consumer Products, Inc., Nicor Inc.,
`
`9
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`and Amax Lighting will likewise argue on behalf of all joined parties.
`Leedarson Lighting Co., Ltd., and Leedarson America, Inc. will be provided
`argument time only at the acquiescence of and within the time limits that
`would normally be given to Technical Consumer Products, Inc., Nicor Inc.,
`and Amax Lighting.
`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.
`
`
`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);
`
`10
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`Claim 10 of the ’518 Patent as obvious over Soderman, Wegner,
`Barnett, and/or Van Elmpt pursuant to 35 U.S.C. § 103(a); and
`Claim 10 of the ’518 Patent as obvious over Zhang, Wegner, 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;
`FURTHER ORDERED that Case IPR2018-00270 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 IPR2018-00270 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
`
`11
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`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 (Paper 3) from IPR2017-00270 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.
`
`
`12
`
`
`
`
`IPR2018-00270
`Patent 8,672,518 B2
`PETITIONER:
`Jeffery Johnson
`Don Daybell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`3J6PTABDocket@orrick.com
`D2DPTABDocket@orrick.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
`
`
`
`
`13
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
