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.
`Petitioners,
`v.
`LIGHTING SCIENCE GROUP CORP.
`Patent Owner.
`______________
`
`Case No. TBD
`Patent 8,672,518
`
`
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 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
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JIAWEI TECHNOLOGY (HK) LTD.
`JIAWEI TECHNOLOGY (USA) LTD.
`AND
`SHENZHEN JIAWEI PV LIGHTING CO., LTD.
`Petitioners,
`v.
`LIGHTING SCIENCE GROUP CORP.
`Patent Owner.
`______________
`
`Case No. TBD
`Patent 8,672,518
`
`
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 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
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., and Shenzhen
`
`Jiawei Photovoltaic Lighting Co, Ltd.
`
`(“Joinder Petitioners”), submits,
`
`concurrently with this motion, a petition for inter partes review (“Joinder
`
`Petition”) of claims 1, 3–8, and 11–14 of U.S. Patent No. 8,672,518 (“the ’518
`
`patent”) (Ex. 1001). Petitioner respectfully requests joinder pursuant to 35 U.S.C.
`
`§ 315(c) and 37 C.F.R. § 42.122(b) of the Joinder Petition with a pending inter
`
`partes review filed by Technical Consumer Products, Inc., Nicor Inc., and Amax
`
`Lighting (“Original Petitioners”), IPR2017-01285 (the “’1285 IPR”). Joinder is
`
`appropriate because it will promote efficient and consistent resolution of the
`
`validity of a single patent and will not prejudice any of the parties to the ’1285
`
`IPR. Petitioner’s request for joinder is timely because it was filed “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).
`
`II. BACKGROUND
`
`On April 17, 2017, Original Petitioners requested review of claims 1, 3–8,
`
`and 10–14 in the ’1285 IPR. On November 1, 2017, the Board instituted review of
`
`claims 1, 3–8, and 11–14, but denied review of claim 10. The instituted grounds
`
`consisted of the following:
`
`
`
`
`
`1
`
`
`
`References
`Soderman and Wegner
`Soderman, Wegner, and Silescent
`Zhang and Wegner1
`Zhang, Wegner, and Silescent
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claims Challenged
`1, 3, 6–8, 11, 12, and 14
`4, 5, and 13
`1, 3, 5–8, 11, 12, and 14
`4 and 13
`
`Today, concurrent with the instant motion for joinder, Petitioner filed the
`
`Joinder Petition asserting identical arguments and grounds of unpatentability
`
`against the same patent claims as in the ’1285 IPR, except for claim 10.
`
`III. ARGUMENT
`
`A. Legal Standard
`
`The Board has authority to join as a party any person who properly files a
`
`petition for inter partes review to an instituted inter partes review. 35 U.S.C.
`
`§ 315(c). A motion for joinder must be filed within one month of institution of any
`
`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
`
`deciding whether to grant a motion for joinder, the Board considers several factors
`
`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
`
`joined has presented any new grounds of unpatentability; (3) what impact, if any,
`
`joinder would have on the trial schedule for the existing review; and (4) how
`
`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am.
`
`
`1 Note that page 28 of the decision on institution mistakenly states this ground uses
`
`the combination of Soderman and Silescent, but the remainder of the decision
`
`makes clear the ground is as the petition proposed.
`
`2
`
`
`
`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
`
`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
`
`(quoting Kyocera Corporation v. Softview LLC, IPR2013- 00004, Paper 15 at 4
`
`(April 24, 2013)).
`
`B.
`
`Petitioners’ Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
`
`November, 1 2017, decision on institution in the ’1285 IPR. See 37 C.F.R.
`
`§ 42.122(b). The one-year bar under 37 C.F.R. § 42.101(b) does not apply because
`
`the Petition is filed concurrently with this Motion for Joinder. 37 C.F.R.
`
`§ 42.122(b). See Teva Pharmaceuticals USA, Inc. v. Allergan, Inc., IPR2017-
`
`00579, paper 9, at 4–5.
`
`C. Each Factor Weighs in Favor of Joinder
`
`Each of the four factors considered by the Board weighs in favor of joinder
`
`here. The Joinder 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 is also appropriate so
`
`that Joinder Petitioners can maintain the proceeding, in which the Original
`
`Petitioners presented a reasonable likelihood of prevailing, in the event that
`
`Original Petitioners cease to participate. Joinder will have minimal, if any, impact
`
`on the trial schedule, as the Joinder Petition presents no new prior art analysis or
`
`3
`
`
`
`expert testimony. Discovery and briefing will be simplified because Joinder
`
`Petitioners are willing to accept a limited “understudy” role so long as Original
`
`Petitioner remains a participating party. Accordingly, joinder is appropriate and
`
`warranted here.
`
`
`1.
`
`Joinder is Appropriate because No New Grounds
`or Issues Are Raised
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung v. Raytheon, IPR2016-00962, Paper 12, at 9 (internal
`
`quotations and citations omitted) (emphases in original).2 Here, joinder with the
`
`pending ’1285 IPR is appropriate because the Joinder Petition relies on identical
`
`arguments and the same instituted grounds at issue in the instituted proceeding.
`
`The Joinder Petition relies on the same expert declaration and other supporting
`
`
`2 See also Sony Corp. et al. v. Memory Integrity, LLC, IPR2015-01353, Paper 11,
`
`at 5–6 (granting institution of IPR and motion for joinder where petitions relied
`
`“on the same prior art, same arguments, and same evidence, including the same
`
`expert and a substantively identical declaration” (citations omitted)); Perfect World
`
`Entm’t, Inc. v. Uniloc USA, Inc., IPR2015-01026, Paper 10; Fujitsu Semiconductor
`
`Ltd. v. Zond, LLC, IPR2014-00845, Paper 14; Enzymotec Ltd. v. Neptune Techs. &
`
`Bioresources, Inc., IPR2014-00556, Paper 19.
`
`4
`
`
`
`exhibits, and asserts the same combinations of prior art upon which the Board has
`
`instituted inter partes review. The Joinder Petition is substantively identical to the
`
`Original Petition as to the subset of instituted claims and grounds, with only non-
`
`substantive differences such as different mandatory notices.
`
`Because the Joinder Petition and the Original Petition are substantively
`
`identical as to the instituted claims and grounds, good cause exists to join the
`
`proceedings so that the Board can efficiently resolve the common grounds in both
`
`Petitions in a single proceeding. Furthermore, the grounds at issue as to the ’518
`
`Patent raised in the ’1285 IPR are issues that affect the Joinder Petitioners, who
`
`stand accused of infringing certain claims of the ’518 Patent, as well as the broader
`
`public interest in the likely unpatentability of the issued claims. Joinder is therefore
`
`appropriate for the additional reason that the grounds of unpatentability upon
`
`which the Board instituted review can be resolved through the participation of
`
`Joinder Petitioners, even if Original Petitioners were to reach a settlement with
`
`Patent Owner or otherwise cease to participate in the proceeding.
`
`
`2.
`
`Joinder Will Not Negatively Impact the Trial
`Schedule
`
`Joinder will have minimal impact, if any, on the existing IPR trial schedule
`
`because the Joinder Petition presents no new issues or arguments for Patent
`
`Owners or the Board to consider. See Sony Corp. et al. v. Memory Integrity, Case
`
`IPR2015-01353, slip op. at 6 (PTAB Oct. 15, 2015) (Paper 11) (granting IPR and
`
`5
`
`
`
`motion for joinder where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR].”).
`
`Further, because the Joinder Petition relies on the same expert declaration as the
`
`Original Petition, only a single deposition is needed for the proposed joined
`
`proceeding. Absent any new issues, there is no reason to materially delay or
`
`modify the existing trial schedule.
`
`Accordingly, joinder with the pending ’1285 IPR will not unduly impact the
`
`trial schedule. However, even if a minor adjustment of the trial schedule was
`
`appropriate, the rules provide for such an adjustment, which is a routine
`
`undertaking by parties in IPR proceedings. See 37 C.F.R. § 42.100(c). A
`
`reasonable adjustment in the trial schedule, if needed, should not preclude joinder
`
`here.
`
`
`3.
`
`Joinder Petitioners Agree to an “Understudy” Role
`
`Additionally, Joinder Petitioners agree to take an “understudy” role in the
`
`joined proceeding, absent termination of the Original Petitioner as a party. In
`
`particular, Joinder Petitioners agree that, in the joined proceeding, the following
`
`conditions shall apply so long as the Original Petitioners remain an active party to
`
`these proceedings, as previously approved by the Board in similar circumstances:
`
`6
`
`
`
`(a)
`
`all filings by Joinder Petitioners in the joined proceeding 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
`
`Owners and the Original Petitioner. See Mylan Pharms. Inc. v. Novartis AG, Case
`
`IPR2014-00550, slip op. at 5 (PTAB Apr. 10, 2015) (Paper 38).
`
`The Original Petitioners will not oppose Joinder Petitioners’ motion for
`
`joinder and does not object to Joinder Petitioners’ proposed understudy role in the
`
`joined proceeding.
`
`The Board has consistently held that that the acceptance of an “understudy”
`
`role removes any undue complications or delay that might allegedly result from
`
`joinder. See, e.g., Sony Corp. et al. v. Memory Integrity, Case IPR2015-01353, slip
`
`op. at 7 (PTAB Oct. 15, 2015) (Paper 11); Mylan Pharmaceuticals Inc. et al. v. Dr.
`
`7
`
`
`
`Falk Pharma GmbH, Case IPR2016-01386, slip op. at 6 (PTAB Nov. 30, 2016)
`
`(Paper 9).
`
`IV. CONCLUSION
`
`Based on the factors discussed above, Joinder Petitioners respectfully
`
`request that this motion be granted and an inter partes review of the challenged
`
`claims 1, 3–8, and 11–14 of the ’518 patent be instituted based on the same
`
`grounds authorized and for the same reasons discussed in the decision on
`
`institution in the ’1285 IPR, and that this proceeding be joined with the ’1285 IPR.
`
`Dated: November 30, 2017
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /Mark Nelson/
`
`Mark C. Nelson, Reg. No. 43,830
`Daniel A. Valenzuela, Reg. No. 69,027
`DENTONS US LLP
`2000 McKinney Ave., Ste. 1900
`Dallas, TX 75201
`Phone: (214) 259-0901
`Email: Mark.Nelson@Dentons.com
`Email: Daniel.Valenzuela@Dentons.com
`
`Kevin R. Greenleaf, Reg. No. 64,062
`DENTONS US LLP
`1530 Page Mill Rd
`Palo Alto, CA 94304
`Phone: (650) 798-0381
`Email: Kevin.Greenleaf@Dentons.com
`
`
`Counsel for Petitioner
`Jiawei Technology (HK) LTD., Jiawei
`Technology (USA) LTD. and Shenzhen
`Jiawei PV Lighting Co., LTD.
`
`8
`
`
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.105(b), I hereby certify that on
`
`November 30, 2017, I caused a true and accurate copy of the foregoing Motion
`
`for Joinder to be served upon the following attorneys of record via overnight
`
`mail and email:
`
`Mark F. Warzecha,
`Esq. Widerman
`Malek, PL
`1990 W. New Haven Avenue
`Suite 201
`Melbourne FL 32904
`
`
`/Mark Nelson/
`
`
`
`9
`
`
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