`
`
`
`Paper No. 7
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`NAVICO, INC.,
`Petitioner
`
`v.
`
`GARMIN SWITZERLAND GMBH,
`Patent Owner
`
`____________
`
`Case IPR: 2017-02051
`U.S. Patent No. 7,268,703
`
`____________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`
`
`
`
`
`
`
`
`Paper No. 7
`
`In its Motion for Joinder, Petitioner represents that it will accept an
`
`“understudy” role with respect to pending IPR2017-00946. (Paper 3 at 3, 6-8)
`
`(Petitioner in IPR2017-00946 is FLIR Systems, Inc. and FLIR Maritime US,
`
`Inc., collectively “FLIR”). Petitioner identifies several exemplary events or
`
`actions for which it will serve as an understudy, such as being bound by any
`
`agreement between Patent Owner and FLIR concerning discovery and/or
`
`depositions. See id. at 6-7, citing IPR2014-00550, Paper 38 at 5 (Apr. 10, 2015).
`
`The list of events/actions identified by Petitioner does not necessarily represent
`
`a comprehensive list of events/actions adopted by the Board as part of an
`
`“understudy” role. As such, Patent Owner opposes Petitioner’s Motion for
`
`Joinder, but only to the extent that Petitioner attempts any equivocation in
`
`serving as a silent understudy.
`
`In particular, Patent Owner does not oppose Petitioner’s Motion for
`
`Joinder to the extent that Patent Owner agrees, subject to FLIR remaining a
`
`participating party to IPR2017-00946, to the following:
`
`(1)
`
`Petitioner will not file any papers or exhibits in any joined
`
`proceeding, except pro hac vice motions and administrative filings (see
`
`IPR2016-01393, Paper 9 at 2-3 (Nov. 21, 2016));
`
`(2)
`
`Petitioner may attend but will not otherwise participate in any
`
`deposition in any joined proceeding (see IPR2015-01881, Paper 11 at 5, Bullet
`
`Point 3 (Jan. 19, 2016));
`
`
`
`Page 2 of 5
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`
`
`
`
`
`
`
`
`Paper No. 7
`
`(3)
`
`Petitioner may attend but will not otherwise participate in any oral
`
`hearing or conference call with the Board in any joined proceeding;
`
`(4)
`
`Petitioner will be copied on correspondence between Patent Owner
`
`and FLIR, but neither Patent Owner nor FLIR will be required to obtain
`
`Petitioner’s consent or opposition to any request by Patent Owner or FLIR in
`
`any joined proceeding (e.g., Patent Owner will not be required to confer with
`
`FLIR for a requested motion or action in the IPR);
`
`(5)
`
`Petitioner will comply with the role otherwise set forth by
`
`Petitioner in its Motion for Joinder, Paper 3 at 6-7; and
`
`(6)
`
`Petitioner will not otherwise “actively participate” in the joined
`
`proceeding and will assume a “passive role” (see IPR2017-01636, Paper 10 at
`
`12 (Oct. 3, 2017); IPR017-0012, Paper 27 at 2 (Jun. 1, 2017)).
`
`In sum, to the extent that Petitioner’s understudy role is as a silent
`
`understudy with no active participation in any joined proceeding (to the extent
`
`that FLIR remains an active, participating party in the joined proceeding), and
`
`further to the extent that such silent understudy role includes complying with
`
`the above limitations on Petitioner’s participation in the joined proceeding,
`
`Patent Owner does not oppose the Motion for Joinder. Should Petitioner refuse
`
`to comply with the above limitations on its role in any joined proceeding, Patent
`
`Owner opposes the Motion for Joinder, as Petitioner’s involvement would
`
`introduce additional argument, briefing, and/or discovery. See IPR2015-00268,
`
`
`
`Page 3 of 5
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`
`
`
`
`
`
`
`
`Paper No. 7
`
`Paper 17 at 6 (Apr. 10, 2015) (noting petitioner’s assurance that its understudy
`
`role would not introduce additional arguments, briefing, or discovery).
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Jennifer C. Bailey/
`Jennifer C. Bailey, Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`ERISE IP, P.A.
`6201 College Boulevard, Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`
`ATTORNEYS FOR PATENT OWNER
`
`
`
`Page 4 of 5
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`
`
`
`
`
`
`
`
`Paper No. 7
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that a true copy of the
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`AMEND was served via Electronic Mail this 9th day of October 2017, in their
`entireties on the following lead and back-up counsel for Petitioner, Navico, Inc.:
`
`Heath J. Briggs
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`briggsh@gtlaw.com
`NAVICO-IPRs@gtlaw.com
`
`
`Joshua L. Raskin
`Greenberg Traurig, LLP
`Metlife Building
`200 Park Avenue
`raskinj@gtlaw.com
`
`William M. Fischer
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`fischerbi@gtlaw.com
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`/Jennifer C. Bailey/
`Jennifer C. Bailey, Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`ERISE IP, P.A.
`6201 College Boulevard, Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`
`ATTORNEYS FOR PATENT OWNER
`
`Page 5 of 5
`
`
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
