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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NAVICO, INC.,
`Petitioner,
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`v.
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` GARMIN SWITZERLAND GmbH,
` Patent Owner.
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`Patent No. 7,268,703 B1
`Issued: September 11, 2007
`Filed: September 18, 2003
` Inventors: Darrin W. Kabel, Steven J. Myers
` Title: METHODS, SYSTEMS, AND DEVICES FOR CARTOGRAPHIC
`ALERTS
`
`Inter Partes Review No. IPR2017-02051
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`
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`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2017-00946
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`TABLE OF CONTENTS
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`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED ........................... 1
`II.
`STATEMENT OF MATERIAL FACTS ........................................................ 1
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`Petitioner’s Motion for Joinder is Timely ............................................. 3
`C.
`Each Factor Weighs in Favor of Joinder ............................................... 4
`1.
`Joinder is Appropriate with the FLIR IPR .................................. 4
`2.
`Petitioner Proposes No New Grounds of Unpatentability .......... 5
`3.
`Joinder Will Not Unduly Burden or Negatively Impact the FLIR
`IPR Trial Schedule ...................................................................... 5
`4.
`Procedures to Simplify Briefing and Discovery ......................... 7
`IV. CONCLUSION ................................................................................................ 8
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`ii
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`I.
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`
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Navico, Inc. (“Petitioner”) respectfully submits this Motion for Joinder,
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`together with a Petition for Inter Partes Review of U.S. Patent No. 7,268,703 (“the
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`Navico Petition”) filed contemporaneously herewith. Pursuant to 35 U.S.C. § 315(c)
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`and 37 C.F.R. § 42.122(b), Petitioner requests institution of an inter partes review
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`and joinder with the inter partes review in FLIR Systems, Inc. and FLIR Maritime
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`US, Inc. (f/k/a Raymarine, Inc.) v. Garmin Switzerland GmbH, IPR2017-00946
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`(“the FLIR IPR”), which the Patent Trial and Appeal Board (the “Board”) instituted on
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`August 10, 2017. Petitioner’s request for joinder is timely under 37 C.F.R. §§ 42.22
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`and 42.122(b) as it submitted no later than one month after the August 10, 2017
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`institution date of the FLIR IPR. The Navico Petition is also narrowly tailored to the
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`same claims, prior art, and grounds for unpatentability that are the subject of the
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`FLIR IPR. In addition, Petitioner is willing to streamline discovery and briefing.
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`Petitioner submits that joinder is appropriate because it will not unduly burden or
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`prejudice the parties to the FLIR IPR while efficiently resolving the question of the
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`ʼ703 Patent’s validity in a single proceeding.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1. Garmin Switzerland GmbH and Garmin Corp. (collectively “Garmin” or
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`“Patent Owner”) filed civil actions against Navico, Inc., Case No. 2:16-cv-02706, in the
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`U.S. District Court for the District of Kansas, on October 17, 2016, FLIR Maritime
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`1
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`U.S., Inc. (f/k/a Raymarine, Inc.), Case No. 2:16-cv-02806, in the U.S. District Court for the
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`District of Kansas, on December 12, 2016, and FLIR Systems, Inc. and FLIR Maritime US,
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`Inc. (f/k/a Raymarine, Inc.) (collectively “FLIR”), Case No. 3:17-cv-01147, in the U.S.
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`District Court for the District of Oregon, on July 24, 2017.
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`2.
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`On February 17, 2017, FLIR filed a petition for inter partes review
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`(IPR2017-00946) requesting cancellation of claims 1-7, 12-23, 25-29, and 41-45 of
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`the ʼ703 Patent.
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`3.
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`On August 10, 2017, the Board instituted FLIR’s petition for inter
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`partes review on all proposed grounds, finding that a reasonable likelihood existed
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`that FLIR’s petition for inter partes review would prevail in showing unpatentability
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`of claims 1-7, 12-23, 25-29, and 41-45 of the ʼ703 Patent. See IPR2017-00946,
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`Decision Instituting IPR Review, Paper No. 7 at 33-34.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Legal Standard
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`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
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`inter partes review petition to an instituted inter partes review proceeding. See 35
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`U.S.C. § 315(c). A motion for joinder must be filed within one month of the Board
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`instituting an original inter partes review. 37 C.F.R. § 42.122(b). In deciding whether
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`to exercise its discretion and permit joinder, the Board considers factors, including:
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`(1) the reasons why joinder is appropriate; (2) whether the new petition presents any
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`new grounds of unpatentability; (3) what impact, if any, joinder would have on the
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`trial schedule for the existing review; and (4) how briefing and discovery may be
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`simplified. See Kyocera Corporation v. Softview LLC, IPR2013- 00004, Paper 15 at 4
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`(April 24, 2013).
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`B.
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`Petitioner’s Motion for Joinder is Timely
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`This Motion for Joinder is timely because it is filed within one month of the
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`August 10, 2017 institution decision of the FLIR IPR. See 37 C.F.R. § 42.122(b).
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`Further, the one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply to the
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`Navico Petition because this Motion for Joinder is filed concurrently with the
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`Navico Petition. 37 C.F.R. § 42.122(b).
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`C. Each Factor Weighs in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder
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`here. Specifically, the Navico Petition does not present any new grounds of
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`unpatentability; rather it is substantively identical to the FLIR Petition. Further,
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`joinder will have minimal, if any, impact on the trial schedule, as all issues are
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`substantively identical and Petitioner will accept an “understudy” role. See IPR2015-
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`01353, Decision Instituting IPR Review, Motion for Joinder, paper 11 at 6; (granting
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`IPR where petitioners requested an “understudy” role); see also IPR2015-01353,
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`Motion for Joinder, paper 4 at 5-7. Lastly, the briefing and discovery will be
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`simplified by resolving all issues in a single proceeding.
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`3
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`Accordingly, joinder is appropriate here. See IPR2015-01353, Decision
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`Instituting IPR Review, Motion for Joinder, paper 11 at 5-6 (granting institution of
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`IPR and motion for joinder where petitioners relied “on the same prior art, same
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`arguments, and same evidence, including the same expert and a substantively identical
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`declaration.”); see also IPR2015-01353, Motion for Joinder, paper 4 at 4- 5.
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`Joinder is Appropriate with the FLIR IPR
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`1.
`Joinder with the FLIR IPR is appropriate because the Navico Petition involves
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`the same patent, challenges the same claims, relies on the same expert declaration, and
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`is based on the same grounds and combinations of prior art submitted in the FLIR
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`Petition. Id. The Navico Petition is substantively identical to the FLIR Petition,
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`containing only minor differences related to formalities of a different party filing the
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`petition, and noting Petitioner Navico’s current agreement with the Board on claim
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`construction.
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`Other than these mere differences related to formalities, there are no changes to
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`the facts, citations, evidence, or arguments presented in the FLIR Petition.
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`Because these proceedings are substantively identical, good cause exists for joining
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`this proceeding with the FLIR IPR so that the Board can efficiently resolve all
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`grounds in both the Navico and FLIR Petitions in a single proceeding. Id.
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`Petitioner Proposes No New Grounds of Unpatentability
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`2.
`The Navico Petition does not present any new grounds of unpatentability. The
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`4
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`
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`Navico Petition is substantively identical to the FLIR Petition. The Navico Petition
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`presents the unpatentability of the same claims of the same patent in the same way as
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`the FLIR Petition.
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`3.
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`Joinder Will Not Unduly Burden or Negatively Impact the
`FLIR IPR Trial Schedule
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`Because the Navico Petition is substantively identical to the FLIR Petition,
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`with the same grounds rejecting the same claims as instituted by the Board, there are
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`no new issues for Patent Owner to address. Due to the same issues being presented in
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`the FLIR Petition, Patent Owner will not be required to present any additional
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`responses or arguments. See IPR2015-01353, Decision Instituting IPR, Motion for
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`Joinder, paper 11 at 6 (granting IPR and motion for joinder where “joinder should not
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`necessitate any additional briefing or discovery from Patent Owner beyond that
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`already required in [the original IPR].”); see also IPR2015- 01353, Motion for
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`Joinder, paper 4 at 5-7. Without any new issues present, there is no reason to delay or
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`alter the trial schedule already present in the FLIR IPR, and Petitioner explicitly
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`consents to the existing trial schedule. Further, the Patent Owner Preliminary
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`Response already filed in the FLIR IPR addresses any and all issues in the Navico
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`Petition, since the issues are substantively identical to the issues of the FLIR Petition.
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`See IPR2017-00946, Patent Owner’s Preliminary Response, paper 6.
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`The Patent Owner Response will also not be negatively impacted because the
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`issues presented in the FLIR Petition are identical to the issues presented in the
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`5
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`Navico Petition. Patent Owner will not be required to provide any additional analysis
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`or arguments beyond what it will already provide in responding to the FLIR Petition.
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`Id. Also, because the Navico Petition relies on the same expert and a substantively
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`identical declaration, only a single deposition is needed for the proposed joined
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`proceeding.
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`Joinder of this proceeding with the FLIR IPR does not unduly burden or
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`negatively impact the trial schedule in any meaningful way. Further, even if a
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`small adjustment of the trial schedule was necessary, this is already provided for in
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`the rules and is a routine undertaking by parties in IPR proceedings. See 37 C.F.R.
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`§ 42.100(c). Thus, a slight adjustment in the trial schedule, should one be needed, is
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`not enough of a reason to deny joining the present Navico Petition with the FLIR
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`IPR.
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`Procedures to Simplify Briefing and Discovery
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`4.
`The FLIR Petition and Navico Petition present substantively identical
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`grounds of rejection, including the same art combinations against the same claims.
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`Additionally, Petitioner explicitly agrees to take an “understudy” role, as described
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`by the Board:
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`“(a) all filings by [Petitioner]
`joined proceeding be
`the
`in
`consolidated with [the filings of the petitioner in the FLIR IPR],
`unless a filing solely concerns issues that do not involve [the
`petitioner in the FLIR IPR]; (b) [Petitioner] shall not be permitted to
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`6
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`raise any new grounds not already instituted by the Board in the
`[FLIR IPR], or introduce any argument or discovery not already
`introduced by [the petitioner in the FLIR IPR]; (c) [Petitioner]
`shall be bound by any agreement between [Patent Owner] and [the
`petitioner
`in
`the FLIR
`IPR] concerning discovery and/or
`depositions; and (d) [Petitioner] at deposition shall not receive any
`direct, cross examination or redirect time beyond that permitted for
`[the petitioner in the FLIR IPR] alone under either37 C.F.R. § 42.53
`or any agreement between [Patent Owner] and [the petitioner in the
`FLIR IPR].”
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`
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`See IPR2014-00550, paper 38 at 5 (Apr. 10, 2015) (emphasis in original).
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`Petitioner Navico will assume the primary role only if FLIR ceases to participate in
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`the FLIR IPR. Petitioner Navico has conferred with counsel for Petitioner FLIR, and
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`Petitioner FLIR takes no position as to Petitioner Navico joining in IPR2017-00946
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`in an “understudy” role.
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`By Petitioner accepting an “understudy” role, Patent Owner and Petitioner
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`Navico can comply with the current trial schedule and avoid any duplicative efforts
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`by the Board or the Patent Owner. These steps will minimize any potential
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`complications or delay that potentially may result by joinder. See IPR2015-01353,
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`Decision Instituting IPR, paper 11 at 6-7 (granting IPR and motion for joinder
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`because “joinder would increase efficiency by eliminating duplicative filings and
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`discovery, and would reduce costs and burdens on the parties as well as the Board”
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`7
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`where petitioners agreed to an “understudy” role.); see also IPR2015-01353, Motion
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`for Joinder, paper 4 at 6-7.
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`IV. CONCLUSION
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`Based on the factors discussed above, Petitioner Navico respectfully requests
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`that the Board grant the Navico Petition for Inter Partes Review of U.S. Patent No.
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`7,268,703 and then grant joinder with the FLIR Systems, Inc. and FLIR Maritime
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`US, Inc. (f/k/a Raymarine, Inc.) v. Garmin Switzerland GmbH, IPR2017-00946
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`proceeding.
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`Dated:
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`September 7, 2017
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`Respectfully submitted,
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`GREENBERG TRAURIG, LLP
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`/s/ Heath J. Briggs
`Heath J. Briggs (Reg. No. 54,919)
`William Fischer (Reg. No. 63,255)
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Telephone: (303) 572-6500
`Fax: (303) 572-6540
`Navico-IPRs@gtlaw.com
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`Joshua L. Raskin (Reg. No. 40,135)
`MetLife Building
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 801-6930
`Navico-IPRs@gtlaw.com
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`Counsel for Petitioner Navico, Inc.
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`8
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a true and correct copy of the Motion for
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`Joinder has been served on the Patent Owner via Priority Mail Express or by
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`means at least as fast and reliable as Priority Mail Express on the below date, at the
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`following address:
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`Garmin International, Inc.
`Attn: Legal-IP
`1200 East 151st Street
`Olathe, KS 66062
`(913) 397-8200
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`Date: September 7, 2017
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`Respectfully submitted,
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`GREENBERG TRAURIG, LLP
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`
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`/s/ Heath J. Briggs
`Heath J. Briggs
`Registration No. 54,919
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Phone: (303) 572-6500
`Fax: (303) 572-6540
`Navico-IPRs@gtlaw.com
`
`Counsel for Petitioner
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`9
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